Ramly Ali J:

Introduction

[1] The motion dated 5 February 2007 before the court is filed by the applicant for, among others, the following reliefs:-

(i) an order that the Trade Mark Registration No 98/00228 be expunged and removed from the Register of Trade Marks, Malaysia;

(ii) in the event prayer (i) is granted, an order directing the Registrar of Trade Marks, Malaysia to rectify the Malaysian Register of Trade Marks by removing therefrom the whole entry relating to Trade Mark Registration No 98/00228 and cause such fact of rectification and removal to be published in the Government Gazette forthwith after the order is served on him;

(iii) costs incidental to this application be paid by the 1st respondent; and

(iv) such further and other reliefs as this court deems fit.

[2] The grounds in support of the motion can briefly be summarised as follows:-

(a) that up to one (1) month before the date of this application a continuous period of not less than three (3) years had elapsed during which Trade Mark No 98/00228 for "GOODKNIGHT" in Class 5 was a registered trade mark and during which there was no use in good faith of Trade Mark Registration No 98/00228 in relation to mosquito coils, insecticide and mosquito repellent by the 1st respondent or his registered user (if any); and

(ii) that the applicant is an aggrieved person as the 1st respondent's Trade Mark Registration No 98/00228 has been cited against the applicant's Trade Mark Application No 2001/09615 in Class 5.

Factual Background

[3] The facts of the matter are set out in the 2 affidavits filed by the applicant and the affidavits filed by the 1st respondent. In summary, the facts can be set down in the following manner. The applicant is in the business of manufacturing, distributing, supplying, selling and offering for supply various consumer goods. This would include mosquito repellant mats and coils, insecticides, pesticides and insect repellants.

[4] Among the trade marks of the applicant is the trade mark "GOODKNIGHT". To protect this mark in Malaysia, the applicant filed for registration the said trade mark in relation to the said goods. The trade mark application is evidenced in exh BSV1 in the affidavit of Virkar.

[5] This trade mark application by the applicant was objected to by the Registrar of Trade Marks on the basis of trade mark 98/00228 (the disputed trade mark). The objection letter by the Registrar of Trade Marks, Malaysia is set out in exh BSV2 of the affidavit of Virkar.

[6] As this trade mark was certainly an obstacle to the registration of the trade mark of the applicant, investigations were carried out by the applicant which revealed that the disputed trade mark was not used for a continuous period of three (3) years up to one (1) month before the application to remove the said trade mark was filed in court.

[7] This fact has not been denied or disputed by the 1st respondent in his affidavits in reply. In fact the only issue raised by the 1st respondent is that the trade mark was not used during the material period owing to a possible conflict of interest.

[8] The Registrar of Trade Marks Malaysia was initially joined as a party (as the 2nd respondent) to give full effect to the orders sought by the applicant. The applicant took the position that since the prayers sought for bound the Registrar of Trade Marks, the Registrar should be named as party. However as a result of an application filed on behalf of the Registrar of Trade Marks, the 2nd respondent, the court had on 9 July 2007 ordered that the 2nd respondent be removed as party to the suit. The court however commented that the striking out of the 2nd respondent would not affect the merits of this case on the interest of the applicant. The court further held that the 2nd respondent would comply with any order directed to him in the event that the court were to hold in favour of the applicant.

Applicable Law

[9] The applicant's application for removal is premised on the provisions of s 46 of the Trade Mar