Mahadev Shankar JCA:

[1] The appellant Lim Yew Sing ('Lim') is the registered proprietor of the Trade Mark No M/91626 "HUMMEL and Device" ('the Trade Mark'). It was registered on 13 August 1981 in the name of Gurdip Kaur trading as Sykt Hardial Singh. The Trade Mark and all goodwill attaching thereto was assigned to Lim for valuable consideration by Gurdip Kaur on 15 August 1990. It consists of the word 'HUMMEL' accompanied with a half-moon device.

[2] Pursuant to a motion filed by the respondent on 5 November 1993, the Kuala Lumpur High Court made an order on 1 March 1995 that the Trade Mark "HUMMEL" is and was at all material times the property of the respondent; that the Trade Mark "HUMMEL" under Registration No M/91627 was an entry made in the Register without sufficient cause and/or is an entry wrongfully remaining in the Register, and it was further ordered that the Register be rectified by expunging therefrom part of the entry relating to the Trade Mark and that upon service of the order upon the Registrar he do rectify the Register accordingly.

[3] In the first instance it was alleged that Gurdip Kaur was fraudulent in registering the Trade Mark. Subsequently it was contended in the alternative the Trade Mark was an entry made in the Register without sufficient cause or an entry wrongfully remaining in the Register. The only evidence before the Court consisted of affidavit evidence. The application was for a final order. Order O 41 r 5(2) of the Rules of the High provides that hearsay evidence may only be admitted in interlocutory proceedings. Although the attention of the Court below was not directed to this rule, it did not change the evidentiary burden on the party upon whom the onus of proof rested. This fell upon the respondent, who was therefore obliged to show that there was uncontested material establishing the facts required to support the reliefs claimed.

[4] There is no direct evidence from Gurdip Kaur to show how she was inspired to originate the Trade Mark. That does not mean that there was evidence to show that she could only have copied the word 'HUMMEL' from the respondent's predecessors in title. It is a common German word meaning 'bee' and can be found in any German dictionary.

[5] In the present case there is no evidence whatsoever that the respondent had used or publicised the Trade Mark in Malaysia prior to 13 August 1981. In short, the mark 'HUMMEL' was unknown in Malaysia when Gurdip Kaur applied for and obtained registration thereof.

[7] We must therefore start on the premise that in Malaysia Gurdip Kaur is the author or originator of the Trade Mark. She claims that since 1981 she commenced to use the Trade Mark for clothing and sportswear and has widely distributed goods bearing the Trade Mark. Documentary evidence prior to 1994 was not available by the time this case was filed. But ample documentary evidence was produced to show sales going from RM240,000 in 1983 to RM620,000 in 1989. There is also no evidence whatsoever of any use or publicity by the respondent of its mark in Malaysia from 1981 to 1989. In other words so far as the Malaysian market was concerned the Trade Mark had become distinctive of Hardial Singh's goods. The registration was renewed for 14 years from 13 August 1988.

[8] In October 1989, the respondent's solicitors in Singapore challenged Gurdip Kaur's right to use the Trade Mark and threatened to commence proceedings to rectify the Register. Negotiations for a settlement followed in