The High Court exercises original jurisdiction when reviewing decisions of the Registrar of Trade Marks, which is not classified as a subordinate court, thereby allowing for appeals under Section 96 of the Courts of Judicature Act.

Richard Malanjum CJ (Sabah & Sarawak):

Introduction

(1) This is an application (encl. 2(a)) by the applicant for leave to appeal against the judgment of the Court of Appeal given on 11 May 2010.

(2) In making its application the applicant has submitted several proposed questions in its attempt to meet the requirements of s. 96(a) of the Courts of Judicature Act 1964 ("CJA").

(3) The proposed questions read thus:

(a) Whether the first user and applicant for registration of a trade mark for goods included in a particular class in the Third Schedule of the Trade Mark Regulations 1983 or the Trade Marks Regulations 1997, is deemed to be the true proprietor of the said trade mark over the another who has not shown prior use of an identical or similar trade mark in relation to goods in the same class;

(b) Whether the Court of Appeal acted correctly in law in omitting to follow the established tests to determine priorities, namely that first user in Malaysia of a trade mark on goods in a particular class, will defeat first application and if neither party has used the trade mark, the first to file the trade mark application will prevail, as decided by the Court of Appeal in Lim Yew Sing v. Hummel International Sports & Leisure A/S 1996 MarsdenLR 497 ; (1996) 3 MLJ 7 ;

(c) Whether it is prejudicial to and against public interest to disallow the registration of a trade mark belonging to a person in relation to a particular class of goods which has co-existed in Malaysia for a substantial period of time with a similar mark belonging to another person in relation to a different class of goods;

(d) Whether the Applicants use of the GIORDANO mark in relation to goods in Class 9, can lead to deception or confusion to the public under Section 14(a) of the Trade Marks Act 1976 , by reason only of the Respondents alleged reputation in respect of the GIORDANO mark in relation to goods in Class 25;

(e) Where it is alleged in opposition proceedings under Section 28 of the Trade Marks Act 1976 that the applicants trade mark is deceptively or confusingly identical or similar to the opponents trade mark, must the opponent show that both parties compete in the same trade?

(4) However, at the commencement of the hearing of encl. 2(a) learned counsel for the respondent raised a preliminary objection (PO) in relation to jurisdiction of this court to consider the application.

(5) We heard the preliminary objection and indicated to the parties that we would deal with it first and that we would hear the merit of the application later on if the said preliminary objection is dismissed.

Background Facts

(6) A Giordano Limited, the predecessor-in-title of the applicant, had sold and exported substantial quantities of goods bearing "GIORDANO" trade mark, such as articles of clothing, watches with leather straps, leather belts, eyewear including sunglasses, bags, wallets umbrellas and fashions accessories, to many other countries including Malaysia.

(7) The respondent and Giordano Limited are wholly owned subsidiaries of Giordano International Limited of Bermuda, a public listed company on the Hong Kong Stock Exchange.

(8) By an assignment dated 5 March 1991, the "GIORDANO" trade mark and its other related trademarks worldwide including the goodwill and reputation thereof were assigned to the respondent.

(9) The respondent is thus the registered proprietor of the trade mark GIORDANO