A trademark may be revoked for non-use if an aggrieved person can establish prima facie non-use for three years, shifting the burden to the trademark owner to prove actual use.

[1] By Trademark Registration Nos 07024580 and 2012004033, the Defendant registered the following trademarks (collectively, "the Defendant's Marks"), both in Class 34 for "cigarettes, tobacco products, matches, smokers' articles, all included in Class 34". The details of the Defendant's Marks are in the Table below:

[2] On 29 October 2021, the Plaintiff filed this Originating Summons ("the Plaintiff's Application") under s 46(1) of the Trademarks Act, 2019 ("the Act"), for an order, inter alia, that the Defendant's Marks be declared invalid and be revoked from the Register of Trademarks.

[3] This is the Judgment in the Plaintiff's Application.

Section 46(1) Of The Act

[4] Section 46(1) (a) and (b) of the Act, under the heading "Revocation of registration by Court as to non-use of trademark", provide:

"(1) The registration of a trademark may be revoked by the Court on an application by an aggrieved person on any of the grounds as follows:

(a) where within a period of three years following the date of issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the registered proprietor or with his consent, in relation to the goods or services for which the trademark is registered, and there are no proper reasons for non-use;

(b) where the use of the goods or services under paragraph (a) has been suspended for an uninterrupted period of three years, and there are no proper reasons for non-use;"

[5] Under limb (a), the three-year period of non-use in good faith of a trademark is pegged to the "notification of registration". Under s 36(2) of the Act, the Registrar issues such notification of registration to the successful applicant / proprietor. Under s 36(3) of the Act, a certificate of registration is equivalent to the notification of registration issued under s 36(2). The certificate of registration for the Defendant's Marks are dated 12 December 2012 and 8 March 2013.

[6] Thus, for the purpose of limb (a), the Plaintiff would have to show non-use of the Defendant's Marks for the period of three years from those dates.

[7] For limb (b), the Plaintiff would have to show that the use of the goods or services for which the Marks were registered had been suspended from 29 October 2018 to 28 October 2021, being the three-year period leading up to the date the Plaintiff filed the Plaintiff's Application.

The Three Stages Of Inquiry For An Application Under Section 46

[8] An application to revoke a trademark under s 46(1) involves the following three stages of enquiry:

(i) whether the applicant is an aggrieved person, because only aggrieved persons can have recourse to s 46(1);

(ii) whether the applicant had established a prima facie case of non-use of the trademarks sought to be revoked in the goods or services for which the trademark was registered, for the three-year period in question; and

(iii) if stages (i) and (ii) have been successfully navigated by the applicant, whether the registered trademark owner has shown use of the trademarks sought to be revoked in the goods or services for which the trademark was registered.

Two Observations

[9] Before proceeding to the first stage, there are two observations I wish to make.

[10] Firstly, as stated in the heading under which it appears in the Act, s 46(1) of the Act is specifically for revocation of the registration of a trademark by Court for non-use. On a successful application under s 46, the Cou