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2023 MarsdenLR 1728
HIGH COURT MALAYA KUALA LUMPUR
FUMAKILLA LIMITED – Appellant
Versus
THE REGISTRAR OF TRADEMARKS – Respondent
[Originating Summons No: WA-24IP-1-01-2023]
Important Points
Subject
Intellectual Property - Trademark Law
Headnote
(B) Error of Law - An inferior tribunal cannot commit an error of law, and any such error exceeds its jurisdiction. (Paras 5, 9)
(C) Discretion of Registrar - The Registrar must exercise discretion judicially and cannot refuse registration based on caprice. (Paras 6, 15.5)
Facts of the case:
Fumakilla Limited appealed against the Registrar's rejection of its trademark application for 'kaori', which means 'scent' in Japanese, claiming it had been registered in other countries. (Paras 1, 3, 4)
Findings of Court:
The Court held that the mark was registrable as it contained an invented word and was distinctive, overturning the Registrar's decision. (Paras 64, 65)
Issues: The main issues were whether the Registrar erred in law in rejecting the application based on the criteria of distinctiveness and invented words. (Paras 15)
Ratio Decidendi: The court concluded that the Registrar misapplied the law regarding the definition of an invented word and failed to consider relevant considerations, leading to an erroneous decision. (Paras 42, 64)
Result: The decision of the Registrar was set aside, and the trademark application was accepted for registration.
| Table of Content |
|---|
| 1. fumakilla's appeal to register trademark. (Para 1 , 2 , 3 , 4) |
| 2. error of law and registrar's discretion. (Para 5 , 6) |
| 3. appeal based on registrar's grounds. (Para 7 , 8 , 9 , 10) |
| 4. requirements for trademark registration. (Para 11 , 12 , 13 , 14) |
| 5. issues to be determined. (Para 15 , 16) |
| 6. registrar's grounds on invented words. (Para 17 , 18 , 19 , 20 , 21 , 22) |
| 7. analysis of invented words. (Para 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30) |
| 8. registrar's failure to consider local cases. (Para 31 , 32 , 33 , 34 , 35 , 36) |
| 9. mark as an invented word. (Para 37 , 38 , 39 , 40) |
| 10. conclusion on limb (c) of s 10(1). (Para 41 , 42) |
| 11. analysis of direct reference to goods. (Para 43 , 44 , 45 , 46 , 47 , 48) |
| 12. analysis of distinctiveness. (Para 50 , 51 , 52 , 53 , 54 , 55 , 56 , 57) |
| 13. territorial nature of trademark law. (Para 59 , 60 , 61 , 62) |
| 14. final conclusion on registrar's error. (Para 63) |
| 15. orders made by the court. (Para 64 , 65 , 66) |
Introduction
[1] This Originating Summons by Fumakilla Limited ("Fumakilla") is its appeal under s 25(5) of the Trade Marks Act, 1976 ("Act"), to set aside the decision of the Registrar of Trademarks given on 7 November 2022 ("Registrar's Decision") rejecting its Application No: 2017069627 ("Fumakilla's Application") to register its trademark ("Mark") for goods in Class 3 in respect of "Any fragrance preparations, all in Class 3". The Mark looks like this:
[2] The Registrar rejected Fumakilla's Application on the ground that the Mark is not registrable as it did not have any of the particulars required by s 10(1)(c), (d) or (e) of the Act.
[3] Fumakilla's appeal is principally on the ground that the Registrar erred in law in making the Registrar's Decision on that ground. So, apart from applying to set aside the Registrar's Decision, Fumakilla is further asking for an Order for the Registrar to accept Fumakilla's Application and register the Mark.
[4] Fumakilla further alleges that the Registrar erred in law in failing to consider sufficiently or at all that the Mark had been successfully registered in several other countries, including Mexico, Myanmar, Singapore, Brunei, Philippines, Laos, Vietnam and Cambodia, in the same Class 3, for some of them also in Class 5 for "deodorizers".
Error Of Law And The Registrar's Discretion
[5] In Syarikat Kenderaan Melayu Kelantan Bhd v. Transport Workers Union ; [1995] 2 CLJ 748; [1995] 2 AMR 1601, Gopal Sri Ram JCA (as he then was) said:
"In my judgment, the true principle may be stated as follows. An inferior tribunal or other decision-making authority, whether exercising a quasi-judicial function or purely an administrative function, has no jurisdiction to commit an error of law. Henceforth, it is no longer of concern whether the error of law is jurisdictional or not. If an inferior tribunal or other public decision-taker does make such an error, then he exceeds his jurisdiction.
So too is jurisdiction exceeded, where resort is had to an unfair procedure\ (see Raja Abdul Malek Muzaffar Shah bin Raja Shahruzzaman v. Setiausaha Suruhanjaya Pasukan Polis ; [1995] 1 MLJ 308; [1995] 1 CLJ 619; [1995] 1 AMR 855), or where the decision reached is unreasonable, in the sense that no reasonable tribunal similarly circumstanced would have arrived at the impugned decision.
It is neither feasible nor desirable to attempt an exhaustive definition of what amounts to an error of law, for the categories of such an error are not closed. But it may be safely said that an error of law would be disclosed if the decision-maker asks himself the wrong question or takes into account irrelevant considerations or omits to take into account relevant considerations (what may be conveniently termed an Anisminic error) or if he misconstrues the terms of any relevant statute, or misapplies or misstates a principle of the general law."
[Emphasis Added]
[6] In Raja Abdul Malek Muzaffar Shah bin Raja Shahruzzaman v. Setiausaha Suruhanjaya Pasukan Polis ; [1995] 1 M
