Ramly Ali J:

[1] This is an appeal by the appellant, Illinois Tool Works, Inc. against the decision of the Registrar of Trade Marks, Malaysia (the registrar) in rejecting the registration of the appellant's trademark application No: 02005832 (in Class 17) notwithstanding the Registrar had earlier accepted the said application for registration.

[2] This case involved a situation which had taken place since 2002 where the registrar had formally examined, approved, advertised and gazetted the appellant's trademark for registration. It was also understood that the certificate of registration for the applicant's trademark was infact been issued but was not delivered to the appellant. The registrar later decided to withdraw the registration of the appellant's trademark and issued an objection Via Form CD 70 dated 30 March 1996.

[3] In the present case the appellant prays for the following orders:

(a) that the registrar's decision dated 28 July 2008 in rejecting the appellant's application for registration of trademark (no 02005832 in Class 17) be set aside;

(b) that the appellant's said application for registration of trademark (no 02005832 in class 17) be allowed and registered in the Register of Trade Mark; and

(c) that the registrar, upon being served with this order, to continue with the registration of the said trademark (in Class 17) pursuant to reg 75, of the Trade Marks Regulations 1997.

Brief Facts

[4] The appellant is a Fortune 200 company, founded in 1912 and had more than 90 years of history. It is listed on the New York Stock Exchange and has 750 business entities in 49 countries including Malaysia.

[5] The appellant had been using many brands and trademarks in its course of trade, one of which is "HIGH TEMP RED" (the subject matter of the present application). The appellant had used this trademark in Malaysia since 1999 until today. The appellant had sold its products "silicone to be used as a gasket replacement on engine parts and used to replace cork, felt, asbestos and rubber gasket" using the said trademark to its Malaysian distributor (Cathay Motors Sdn Bhd). Cathay Motors would then resell these products to various retailers and customers in Malaysia.

[6] As the appellants subject business was increasing with popular demand and recognition from Malaysian customers and members of the public the appellant decided to file for registration of their trademark "HIGH TEMP RED" the said goods. This trademark was filed on 21 May 2002 and was given the number 2002-05832.

[7] Having taken 1 1/2 years to formally examine the appellant's trademark application, the registrar finally found the appellant's trademark complied with all requirements of the Trade Mark Act 1976 including s 10(1) thereof, and thereafter, on 10 November 2003, the Registrar issued Form CD29 to officially notify the appellant that its trademark had been accepted for registration and will be advertised and gazetted.

[8] Indeed, the registrar proceeded to advertise and gazette the appellant's trademark for registration on 26 May 2005 in Warta Kerajaan Persekutuan, 26 May 2005, Jil 49,No: 11 Tambahan No: 4,12398.

[9] There was no opposition filed by anyone or any member of the public or any trader from the relevant trade and industry (silicone industry) opposing the registration of the appellant's trademark, during the two months opposition period. It was understood that a certificate of registration was issued but not delivered or sent to the appellant.

[10] Then, strangely, the registrar issued a letter (Form CD70) dated 30 March 2006 to the appellant retracting the registration of the appellant's trademark, purportedly pursuant to s 25(12) Trade Marks Act 1976 on the grounds that the registrar had made an "error". The registrar then cited new objections under s 10(1) Trade Marks Act 1976.

[11] The Kuala Lumpur High Court had in fact on 12 July 2005 via Suit No: D8-24-232-05 declared that the appellant's trademark "HIGH TEMP RED" as distinctive of the appellant