The court established that a trademark can be registrable if it contains an invented word, even if it has a meaning in a foreign language, and must be distinctive to avoid misapplication of the law.

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 MarsdenLR 10 ; ; [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 MarsdenLR 734; [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