The High Court's hearing of appeals under the TMA is characterized as appellate jurisdiction, affecting subsequent appeal rights to the Federal Court.

[1] The appellant challenged the registration of the respondent's trade mark in opposition proceedings before the Registrar of Trade Marks ("the Registrar"). The Registrar dismissed the appellant's opposition and allowed the registration of the respondent's trade mark. The appellant appealed against the decision of the Registrar to the High Court.

[2] On 22 January 2016, the High Court dismissed the appellant's appeal. Upon further appeal, the Court of Appeal on 7 November 2016 affirmed the decision of the High Court.

[3] Leave to appeal was granted to the appellant by this Court on 15 March 2017 for the following questions of law:

(i) Whether the High Court in exercising its powers under s 28(5), (6) and (7) of the Trade Marks Act 1976 (" TMA ") is acting in its original jurisdiction or appellate jurisdiction? (Question 1)

(ii) Whether as a matter of law a lower or reduced standard should be applied for determining similarity or likelihood of confusion in cases involving pharmaceutical and medicinal products under ss 14 and 19 of the TMA ? (Question 2)

(iii) Whether the Registrar of Trade Marks in exercising the powers under ss 14 and 19 of the TMA to determine similarity and likelihood of confusion for purposes of registration of a new mark is obliged to consider the public interest where the goods involved are pharmaceutical and medicinal products? (Question 3)

(iv) Where the existing registered trade mark (BION) is an invented name whether it is incumbent on the applicant for registration of the new mark (BIONEL) to justify the choice of name bearing aural and conceptual similarity to the existing mark? (Question 4)

[4] At the hearing of this appeal, the respondent raised the preliminary objection that the present appeal before this Court was not competent. As a result, we directed parties to confine their oral submissions to Question 1, being the threshold question of jurisdiction, before we hear further submissions on the remaining questions. This is our decision on the jurisdiction of this Court to hear the present appeal.

Material Facts

[5] The appellant (the plaintiff in the High Court) is an international pharmaceutical company based in Germany. In Malaysia, the appellant is the registered owner of the trade marks "BION" and "BION3" in Classes 5, 29 and 30.

[6] On 18 July 2008, the respondent (the defendant in the High Court) applied vide application No. 08014118 to register the trade mark "Bionel" in Class 5 for goods of 'pharmaceutical, veterinary and sanitary substance; infants' and fat and invalids' foods; plasters, materials for bandaging, materials for stopping teeth, dental wax; all included in Class 5'. The Registrar accepted the respondent's application.

[7] Upon the publication of the respondent's application in the Gazette, the appellant filed a notice of opposition before the Registrar under s 28 of the TMA . The main grounds of the appellant's opposition were that the respondent's mark was confusingly or deceptively similar to the appellant's mark, and that the registration would likely deceive or cause confusion amongst the public. On 13 April 2015, having heard the parties, the Registrar dismissed the appellant's opposition and accordingly registered the respondent's trade mark.

[8] The appellant appealed against the decision of the Registrar to the High Court pursuant to ss 28(5) and 28(6) of the TMA . On 22 January 2016, the High Court agreed with the findings of the Registrar and dismissed the appellant's appeal.

[9] Dissatisfied, the appellant appealed to the Court of Appeal. On 7 November 2016, the Court of Appeal dismissed the appeal, noting the concurrent findings of the High Court and the Registrar.

Submissions

[10] As stated earlier, counsel for the respondent raised a preliminary objectio