A party may qualify as an aggrieved person under the Trade Marks Act if they can prove the non-use of a rival's trade mark and demonstrate bona fide intentions to use their own mark.

Introduction

[1] This was an appeal from the decision of the High Court in Kuala Lumpur allowing the plaintiff s application to have the trade mark "" which was registered in the defendants name under various registrations numbers ("the defendants trade marks") in various classes in the Malaysian Register of Trade Marks ("Register") expunged and removed from the Register.

[2] In this judgment, the parties are referred to as they were in the High Court.

Brief Background Facts

[3] The plaintiff was a company incorporated in Thailand. The defendant was a company incorporated in the Philippines.

[4] The defendants trade marks were registered with the following numbers in the following classes and for the following goods and services:

(1) 00010944, in class 30, for a range of snack food products;

(2) 04009312 in class 29 for "potato chips, crisps, flakes, meat, fish, poultry, meat extracts, preserved, dried and cooked fruits and vegetables, jellied, jam, eggs, milk, edible oils and fats, cheese and pickles";

(3) 05004420 in class 43 for "services for providing food and drink included in class 43";

(4) 05021787 in class 30 for "coffee, tea, cocoa, sugar, tapioca, sago, artificial coffee, flour, and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments) spices and ice".

[5] The plaintiff claimed to be in the business of manufacturing, producing and dealing in, inter alia, aerated water, fruit juices, ready-to-drink green tea and carbonated drinks using the plaintiff s trade mark. The plaintiff s trade mark also had the word "Oishi" below an oval shape within which was a character.

[6] The plaintiff, who had been exporting its products to Malaysia using its trade mark, filed an application under class 32 for registration of its trade mark. However, it was objected to by the Registrar of Trade Marks on the grounds that the plaintiff s trade mark was similar to the defendants trade marks and would lead to confusion to the public as well as being contrary to law.

[7] The plaintiff, concerned that the exports of its products bearing its trade mark to Malaysia would be adversely affected and exposed to litigation in view of the defendants trade marks, applied to the High Court by way of originating summons to have the defendants trade marks expunged and removed under ss 45 and 46 of the Trade Marks Act 1976 ("Act 175").

In The High Court

[8] In support of its application before the High Court at Kuala Lumpur, the plaintiff filed the affidavit of its legal counsel, one Somboon Earterasarun ("the plaintiff s legal counsel"). The affidavit in support stated that:

(a) "Oishi" was a name or surname and therefore, did not fulfil the criteria for registration under para 10(1)(d) of Act 175;

(b) "Oishi" was a word having a common dictionary meaning and that meaning had a direct reference to the character or quality of the goods and services of the defendant and therefore, did not meet the criteria for registration under para 10(1)(d) of Act 175;

(c) "Oishi", being a word having a well-known dictionary meaning, was not an invented word and therefore, did not fulfill the criteria for registration under para 10(1)(c) of Act 175;

and therefore, the Court had the jurisdiction to order that the defendants trade marks be expunged and removed from the Register.

[9] The plaintiff s legal counsel further stated, in the affidavit in support, that:

(a) the plaintiff was the common law owner of the plaintiff s trade mark;

(b) the plaintiff and the defendant were dealing in goods and services i