A party with a bona fide intention to use a trade mark may qualify as 'aggrieved', and a registered trade mark can be expunged for non-use if the owner fails to demonstrate adequate use over three years.

[1] The plaintiff's originating summon dated 19 February 2013 is to expunge the defendant's Registered Trade Marks which are as follows:

(i) Registered Trade Mark Number 00010944 in Class 30 (for snack food products such as prawn crackers, potato flakes, potato fries etc) registered since 10 August 2000;

(ii) Registered Trade Mark Number 04009312 (for potato chips, meat, fish, poultry etc) registered since 8 July 2004;

(iii) Registered Trade Mark Number 05004420 in Class 43 (for services for providing food and drink) registered since 25 March 2005; and

(iv) Registered Trade Mark Number 05021787 in Class 30 (for coffee, tea. Cocoa, sugar, rice etc) registered since 23 December 2005.

[2] The grounds of the application are premised on non-use of the defendant's trade marks and that the defendant's trade marks are entries made in the Register without sufficient cause and are therefore wrongfully remaining in the Register. The application is pursuant to ss 45(1)(a) and 46(1) read with s 10 of the Trade Marks Act 1976 ('Act 175')

The Salient Facts

[3] The plaintiff is a public company incorporated in Thailand with its registered address in Bangkok, Thailand and is in the business of manufacturing and producing non alcoholic beverage, aerated water, fruit juices, ready-to-drink green tea and carbonated drinks under its trade mark "OISHI".

[4] The defendant is a company limited by shares incorporated in the Philippines with its business address in Manila, Philippines and is the registered owner of the trade marks "Oishi" in Class 30 and Class 43 on the Register of Trade Marks.

[5] On 24 October 2011, the plaintiff applied to the Registrar of Trade Marks for the registration of the plaintiff's trade mark "OISHI" in Class 32, but the same were rejected due to the defendant's trade mark "Oishi" in Class 30 and Class 43 on the Register of Trade Marks.

The Findings Of The Court

[6] It is the submission of the plaintiff that the plaintiff is an aggrieved person within the meaning of ss 45(1)(a) and 46(1) of Act 175 to bring this action against the defendant. The plaintiff also submits that the defendant did not use the defendant's trade marks in good faith for a continuous period of more than three years prior to the filing of this action. Added to that the plaintiff submits that the defendant's trade marks are entries made in the Register without sufficient cause and are wrongfully remaining in the Register on the basis that "OISHI" are surnames of prominent Japanese figures, with a dictionary meaning and is not an inventive word and is therefore in contravention of s 10 of Act 175.

[7] It is the submission of the defendant that the plaintiff is not an aggrieved party premised on the decision of the Federal Court in McLaren International Ltd v. Lim Yat Meen , [2009] 5 MLJ 741 ; that as the plaintiff is merely making an application for registration, it cannot qualify as a person aggrieved within ss 45 and 46 of Act 175. The defendant relies on the conclusiveness of the registration under s 37, that the survey report tendered by the plaintiff did not comply with the minimum standards required and that there is sufficient evidence before this Court that there was use of the "OISHI" mark as can be seen from the cash invoices issued by Proplus Resources within the relevant period.

[8] The issues in this case are:

(i) whether the plaintiff is an aggrieved party within the meaning of ss 45 and 46(1) of Act 175;

(ii) whether the defendant's trade marks should be expunged for non-use; and

(iii) whether the defendant's trade marks are entries made in the Register without sufficient cause and are therefore wrongfully rema