Prior use of a trademark establishes proprietor rights and locus standi for expungement applications under the Trade Marks Act.

This is an application by JOST CRANES GmbH & Co KG (the Applicant) for an order that the trademark "JOST & DEVICE Mark" under trademark No 03009020 (the JOST Mark) currently registered under the name of JOST CRANES SDN BHD (the Respondent) be expunged and removed from the Register of Trade Marks, Malaysia. The JOST Mark is made of the word JOST and two bands forming arrowhead devices. For ease of reference, I reproduce below the said JOST Mark:

The JOST Mark was filed by the Respondent on 22 July 2003 (ie, the priority filing date) for goods in Class 7 including cranes, material hoists, lifting and hoisting apparatus, together with parts and accessories thereof. The mark was subsequently registered and will expire on 22 July 2013.

The Applicant's present trademark expungement application is based on s 45(1) (a) of the Trade Marks Act 1976 (the Act).

The Applicant's case

Very briefly, the Applicant contends that the JOST Mark was wrongfully entered upon the register because the Respondent is not the proprietor as it claimed to be pursuant to Section 25 (1) of the Act, which provides that only person rightfully claiming to be the proprietor of a trade mark used or proposed to be used by him may make an application to have the said trade mark registered.

The Applicant contends that it is the first user of the JOST Mark in respect of construction cranes in Class 7. For this very reason, the Respondent could not have claimed to be the proprietor that entitled them to file for any form of trademark application for the JOST Mark. The Applicant further contends that because the Respondent is not the proprietor of the mark, its mark cannot be protected by any court of law and ought to be expunged by the court, following Section 45 of the Act.

The Respondent's case

The Respondent's case can be summarised as follows. The proprietorship of the JOST mark never resided in the Applicant. On 21 June 2000, the Respondent entered into an agreement with one Franc Jost (the 1^st Agreement) and on 28 November 2001, another agreement was entered between Franc and the Respondent (the 2^nd Agreement).

Franc Jost as the inventor of the JOST cranes, which bore the JOST Mark, had sold all rights in respect of the cranes to the Respondent, including the rights to the mark. The Applicant is not a person aggrieved provided under Sections 45 and 46 of the Act to take out the Application and therefore, the Application has no locus standi to bring the present action.

According to the Respondent, a reading of the 1^st and 2^nd Agreements will also suggest that the Respondent is not a mere licensee, but has in fact purchased all rights to the cranes, including the right to use the mark which bore on the cranes.

The Respondent contends that it is the first in time user in Malaysia of the JOST Mark. Hence, all use of the mark in Malaysia must be imputed on the Respondent alone as the rightful proprietor of the mark.

According to the Respondent the Applicant has not sufficiently used the JOST Mark in the course of trade in Malaysia and there is no likelihood of confusion or deceipt caused.

The Respondent has extensively promoted the JOST Mark in Malaysia in order to signify that cranes bearing the JOST Mark originate from the Respondent. The Respondent contends that the Registrar of Trade Marks had correctly exercised his discretion in allowing the registration of the JOST Mark.

Findings of the court

Section 45 (1) (a) of the Act, which this application is premised upon, requires the Applicant to be a person aggrieved by the registration of the JOST Mark. Hence, the first question to pose would be: whether the Applicant is a person aggrieved and has the locus standi under Section 45 (1) (a) of the Act to initiate the present action.

First of all, I will quote the relevant provision that is relevant to the current discussion. Section 45 (1) (a) of the Act, in particular, provides that the court may order the expunction of a registered trade mark if such an application was

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