YONG TENG HING B/S HONG KONG TRADING CO & ANOR vs WALTON INTERNATIONAL LIMITED

Headnote Court Copy Facts Arguments Court observation Judicial Analysis Case Map Category Hierarchy Table of Content

2012 MarsdenLR 1081

FEDERAL COURT PUTRAJAYA
YONG TENG HING B/S HONG KONG TRADING CO & ANOR – Appellant
Versus
WALTON INTERNATIONAL LIMITED – Respondent
[Civil Appeal No: 02(f)-68-10-2011 (W)]

Important Points

Prior use and established goodwill in trade mark law significantly influence registration rights, protecting consumers from confusion in markets with overlapping goods.

Subject

Intellectual Property - Trade Marks

Act Referred

Trade Marks Act 1976: S.14, S.25, S.10, S.36

Headnote

(A) Trade Marks Act 1976 - Sections 14(1)(a) and 25 - Appeal against the Court of Appeal's decision allowing registration for 'Giordano' trade mark in Class 9 - Respondent established prior use and goodwill in mark connection with articles in other classes; appellant failed to prove prior use in Class 9 - Registration denied to prevent public confusion regarding source of goods. (Paras 6, 16, 28, 30, 34)

(B) Trade Mark Law - Importance of good faith - Territoriality of trade mark law considered - Unjust for a party to claim rights over another's established mark. (Paras 8, 12, 27)

Facts of the case:
The appellant applied for 'Giordano' mark for optical goods but was opposed by the respondent, who had prior goodwill and established use in other goods. The High Court favored the appellant, but the Court of Appeal reversed this.

Findings of Court:
Respondent proved prior goodwill and reputation for 'Giordano,' preventing the appellant from registering in Class 9 due to potential confusion.

Issues: Is the appellant the true proprietor of the trade mark without prior use evidence, and does the registration threaten public interest through confusion?

Ratio Decidendi: Court upheld that prior use in different classes can affect registration, emphasizing public protection from confusion, particularly with well-known marks.

Result: Appeal dismissed with costs awarded to the respondent.

Table of Content
1. grounds for the appeal and questions raised. (Para 1 , 1 , 2)
2. background facts of trademark usage. (Para 3 , 5 , 6 , 7)
3. background of trade mark registrations. (Para 4)
4. onus of proof regarding trademark registration. (Para 8 , 11 , 12)
5. criteria for determining trade mark ownership. (Para 9 , 10)
6. first user and established goodwill considerations. (Para 13 , 21)
7. concept of well-known trade marks. (Para 14 , 15 , 16 , 17 , 18)
8. understanding the likelihood of consumer confusion. (Para 22 , 23)
9. likelihood of confusion under s 14(1)(a) of the act. (Para 24 , 25 , 30)
10. analysis of deceptive similarity under trade mark law. (Para 26 , 27 , 28)
11. business implications of trade mark registration. (Para 29 , 31 , 32)

[1] This is an appeal by the appellant against the decision of the Court of Appeal in allowing the respondent's appeal against the decision of the High Court dismissing the respondent's appeal against the decision of the Registrar of Trade Marks, Malaysia ("the registrar"). The registrar had earlier in his decision dismissed the respondent's notice of opposition filed against the appellant's trade mark application No 92/0511 to register the trade mark "Giordano" for optical and sunglasses in Class 9.

Leave To Appeal

[2] Leave to appeal to this Court was granted on the following questions:

Question 1

Whether the 1st user and applicant for registration of a trade mark for goods included in a particular class in the Third Schedule for the Trade Mark Regulations 1983 or the Trade Marks Regulations 1997, is deemed to be the true proprietor of the said trade mark over another who has not shown prior use of an identical or similar trade mark in relation to goods in the same class as per the principles decided by the Court of Appeal in Lim Yew Sing v. Hummel International Sports & Leisure A/S, [1996] 3 MLJ 7 .

Question 2

Whether the applicant's/appellant's use of the GIORDANO mark in relation to goods in Class 9, can lead to deception or confusion to the public under s 14(1)(a) of the Trade Marks Act 1976 , by reason only of the respondent's alleged goodwill and reputation in respect of the GIORDANO mark in relation to goods in Class 25.

Background Facts

[3] The relevant background facts of this case as reproduced from judgment of the Court of Appeal are as follows:

(1) The respondent, Walton International Limited is an associated company of Giordano Limited. Both were part of a group of companies owned by Giordano Holdings of Hong Kong, a public listed company on the Hong Kong Stock Exchange since 1991. Following a restructuring, the respondent and Giordano Limited became wholly owned subsidiaries of Giordano International Limited of Bermuda, also a public listed company on the Hong Kong Stock Exchange.

(2) In Malaysia the respondent is the registered proprietor, applicant and assignee of "GIORDANO" trade mark and other related trade marks in Class 25 (for garments and wearing apparels; jeans, T-shirts, pouch, accessories, trousers, clothing, footwear and headgear and articles of clothing), Class 18 (for leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery) and Class 13 (for GIORDANO ladies).

(3) Apart from the above applications and registrations in Malaysia, the respondent is also the registered proprietor and applicant for registration, whether by itself or through assignments, of "GIORDANO" trade mark for goods in, inter alia, Classes 9, 14, 18 and 25 in many other countries around the world.

(4) The respondent's predecessor in title, Giordano Limited has sold and exported substantial quantities of goods bearing "GIORDANO" trade mark, such as articles of clothing, watches with leather straps, leather belts, eyewear including sunglasses, bags, wallets, umbrellas and fashions accessories, to many countries including Malaysia. By an assignm