Abdul Aziz Mohamad J:

[1] The applicants, a German company, are well-known manufacturers of vehicle parts, including spare parts, under the LUK trade mark. The letters forming the trade mark are the first letters of the word "Lamellen Und Kupplungsbau" in the applicants' name. The trade mark was first registered in Germany in 1954 and later in other countries where the applicants' goods were sold. The vehicle parts that feature in this case are clutch discs or clutch plates, and clutch-related items The applicants supply clutch items and other products of theirs to the makers of a wide range of motor vehicles of reputable names.

[2] The respondents were incorporated in Malaysia in 1975 and have since been manufacturing, distributing and selling clutch discs in Malaysia.

[3] On 25 January 1977, on the respondents' application, the respondents were registered in the Register of Trade Marks, West Malaysia, as the proprietors of the LUK trade mark in respect of clutch discs for motor vehicles. The registration number is M/74107.

[4] This is an application by the applicants, made on 4 July 1991, for an order under s 45(1)(a) of the Trade Marks Act 1976 expunging the entry in the Register of Trade Marks relating to the entry in the Register of Trade Marks relating to that registration. Counsel for both sides have agreed that the issues to be considered in this application are the following:

(a) Whether the applicants are an aggrieved person under s 45(1)(a).

(b) Whether the applicants are the lawful proprietors of the trade mark in Malaysia by virtue of their use of it before the respondents registered it.

(c) Whether the registration was obtained by fraud. (d) Whether the trade mark offends against s 14(a) in that its use is likely to deceive or cause confusion to the public.

(e) Whether, even though issues (a), (b), (c) and (d) are answered in the affirmative in favour of the applicants, the Court ought to exercise its discretion under s 45(l)(a).

[5] Issues (c) and (d) arise because the registration of the trade mark has been on for more than seven years and s 37 provides that in such a case the registration shall be taken to be valid in all respects unless one of several things is shown. Issues (c) and (d) concern two of those things that the applicants seek to show, although they need not show both; either will do.

Aggrieved Person And Lawful Proprietor

[6] Learned Counsel for the applicants took the two issues together. The position in law taken by her is simply this, that the first user of a trade mark in a country becomes the lawful proprietor of the trade mark in that country and if another person subsequently registers the trade mark as his, then the lawful proprietor becomes an aggrieved person. Even a very small amount of prior use in the country is sufficient to make the prior user the lawful proprietor.

[7] The applicants claim that they had been using the trade mark in Malaysia prior to 25 January 1977, the date it was registered by the respondents, and therefore they are the lawful proprietors.

[8] Learned Counsel for the respondents did not appear to dispute those propositions of law. The aim of his submission on those two issues was merely to show that the evidence available, by which the applicants sought to prove prior use in Malaysia, did not prove that the applicants' goods bearing the trade mark ever arrived, or were ever received, in Malaysia before 25 January 1977. That means that he took the narrow view that, in law, the applicants cannot be said to have been using the trade mark in Malaysia before 25 January 1977 unless goods bearing that trade mark that the applicants sold from Germany had arrived, or were received, in Malaysia before 25 January 1977.

[9] In view of the cases referred to in the Australian case of Moorgate Tobacco Co Ltd v. Philip Morris Ltd [1984-1985] CLR Vol 156, pp 414-446, at p 433, I do not think he was right in adopting such a narrow view of the law. But even on that narrow view I cannot