Section 14 of the Trade Marks Act 1976 establishes criteria for determining well-known marks and criteria for expunging other registrations based on public confusion and aggrievement.

Introduction

[1] The originating summons in this case ("OS") had described parties as the applicants and the respondent. Order 7 r 2(2) of the Rules of 2012 ( ROC ) states that a party taking out the OS shall be described as the plaintiff and the other party shall be described as the defendant-please see Mohan Chatram MT Ramchandani v. Ketua Pengarah Insolvensi Wilayah Persekutuan Kuala Lumpur , [2015] 1 CLJ 354 .

[2] The 1st plaintiff company (the 1st plaintiff) is the proprietor of a trade mark (annexed as Annexure A to this judgment (the 1st plaintiff's trade mark)) which has been registered in the Register of Trade Marks ("Register") for goods in Class 4. The 2nd plaintiff company (the 2nd plaintiff) is the registered user of the 1st plaintiff's trade mark

[3] The defendant company (the defendant) is the proprietor of a trade mark (Annexure B to this judgment (the defendant's trade mark)) registered in the Register for goods in Classes 7, 9, 12 and 35. The defendant's application to register the defendant's trade mark in Class 25 is still pending.

[4] The OS applied for, among others, the following relief:

(1) a declaration that the entry of the defendant's trade mark in Class 7 of the Register is an entry made without sufficient cause and/or an entry which wrongfully remains in the Register (prayer 1);

(2) an order to expunge the defendant's trade mark in Class 7 from the Register (prayer 2);

(3) an order directing the Registrar of Trade Marks (Registrar) to rectify the Register by removing the entry relating to the defendant's trade mark in Class 7 and so soon thereafter as possible, cause such a rectification and removal be published in the Government Gazette (prayer 3);

(4) a declaration that the 1st plaintiff is the bona fide proprietor of the 1st plaintiff's trade mark for goods in Class 4 (prayer 4);

(5) an order directing the Registrar to rectify the Register by removing the entry relating to the defendant's trade mark in Classes 9, 12, 25 and 35 (prayer 5); and

(6) costs of the OS and all other incidental costs (Prayer 6).

Issues

[5] The questions that arise in the OS are:

(1) Whether the 1st plaintiff's trade mark is well-known mark under s 14(1)(e) of the Trade Marks Act 1976 ( TMA )?;

(2) Whether the plaintiffs are persons aggrieved by the defendant's trade mark within the meaning of s 45(1)(a) TMA when the 1st plaintiff's trade mark is for goods in Class 4 while the defendant's trade mark is in respect of goods in Classes 7, 9, 12, 25 and 35?;

(3) Whether the use of the defendant's trade mark for goods in Classes 7, 9, 12, 25 and 35 is likely to deceive and/or confuse the public under s 14(1)(a) TMA with respect to the 1st plaintiff's trade mark (for goods in Class 4) and the defendant's trade mark?; and

(4) If the 1st plaintiff's trade mark is a well-known mark under s 14(1)(e) TMA , whether the use of the defendant's trade mark for goods in Classes 7, 9, 12, 25 and 35?:

(a) will indicate a connection between the defendant's goods and the plaintiffs; and

(b) the plaintiffs' interests are likely to be damaged by the defendant's use of the defendant's trade mark - as understood in the proviso to s 14(1)(e) TMA .

The Plaintiff's Case

[6] The 1st plaintiff's TM:

(1) is used on the plaintiffs' lubricant oil (X-1R goods) for motorcycle and car parts;

(2) is widely used and well-known all over the world, including Malaysia;

(3) is registered for goods in Class 4;

(4) has been registered in the Register for a period of 10 years from 18 February 2005 until 18 February 2015. The registration of the 1st plaintiff's trade mark has been renewed for another 10 years from 18 February 2015 until 18 February 2025; and

(5) has been registered in various other countries. The 1st plaintiff's trade mark with variations has also been registered in othe