The court upheld the findings that 'Bionel' is not confusingly similar to 'BION', emphasizing distinctiveness and lack of deception under the Trade Marks Act.

[1] This is an appeal against the decision of the High COURT in which the learned Judge dismissed an Appellant's/Plaintiff's opposition to the Respondent's/Defendant's registration of a trade mark "Bionel" under the Trade Marks Act 1976 .

[2] We heard the appeal and after due consideration of the respective submissions of counsel, we dismissed the appeal and now give our reasons for our decision.

Factual Background

[3] The Respondent had made an application to the Registrar of Trade Marks on 18 July 2008 to register its trade mark "Bionel" under Class 5 products which caters for goods of pharmaceutical, veterinary and sanitary substance; infants' and fat and invalids' foods; plasters, materials for bandaging, materials for stopping teeth, and dental wax.

[4] The Respondent's application was accepted by the Registrar of Trade Marks and the same was published in the Malaysian Gazette on 29 September 2011.

[5] The Appellant filed its notice of opposition on 29 November 2011. After hearing the parties, the Registrar had rejected the Appellant's opposition and allowed the Respondent's trade mark "Bionel" to proceed to registration.

[6] The Appellant appealed to the High COURT against the decision of the Registrar and on 8 June 2016, the learned Judge dismissed the appeal, resulting in this appeal before us.

High COURT Decision

[7] Three issues were put forth to the learned Judge by the Appellant and they were these:-

(i) Whether the Respondent's/Defendant's mark is contrary to ss 14 and 19 Of The Trade Marks Act 1976 (" TMA 1976")?;

(ii) Whether the Respondent's/Defendant's mark is contrary to s 25 Of The TMA 1976?; and

(iii) Whether the Respondent's/Defendant's mark is contrary to s 10 Of The TMA 1976?

[8] The learned Judge answered the above issues in the negative premised substantially on her finding that the Respondent's trade mark is not "confusingly similar" to that of the Appellant's trade mark. Her manner of analysis can be seen in this following paragraph:-

[30] Applying the Pianotist case, this COURT must first make a comparison between the plaintiff's "BION" marks and the Defendant's "Bionel" mark. Having considered the Plaintiff's registered marks "BION" and "BION 3", and the Defendant's "Bionel" mark, I agree with the findings of the Registrar that the marks are not confusingly similar. Visually, conceptually or phonetically, the marks are clearly different:-

[31] I agree with the findings of the Registrar that the Defendant's mark consists of the word "Bionel" in a stylised manner and can be pronounced as "/BIO/NEL/", pronounced with two syllables. Whereas, the plaintiff's mark consists of the word mark, that is "Bion" and the other mark consists of a word "Bion" with a device and another mark consists of the word "Bion 3" in black block letters within a racetrack shape device in which can be pronounced as "/BION/ and "/BION/THREE/". Thus, "BION" is pronounced in a single syllable.

Our Grounds Of Decision

[9] From the oral and written submissions, learned counsel for the Appellant had raised three grounds, namely, likelihood of confusion and/or deception (ss 14 and 19 Of The TMA 1976, lack of distinctiveness (s 10 Of The 1976) and the bona fide of the Respondent's trade mark (s 25 Of The 1976).

Section 14 and 19 Of The Trade Marks Act 1976

[10] The relevant of s 14 provides:-

"(1) A mark