Trademark ownership disputes hinge on actual use and goodwill; non-use by the Saudi Company invalidates its claims against the Egyptian Company's registrations.

[1] The appellant/defendant in Appeal No: W-02(IPVC)(A)-401-03-2015 ("401") is an Egyptian Company and the respondent is a Saudi Company. The appellant/defendant in Appeal No: W-02(IPVC)(A)-1653-10-2015 ("1653") is the Saudi Company and the respondent is the Egyptian Company. In Appeal No: '401', the application was made under s 45 of Trade Marks Act 1976 (" TMA 1976"). In Appeal No: '1653', the application was made under s 46 of 1976.

[2] In Appeal No: 401, Saudi Company managed to expunge the Egyptian Company's trade mark. In Appeal No: 1653, the Egyptian Company managed to remove the Saudi Company's trade marks from the register. In essence, both trade marks are expunged. The learned trial judge had meticulously explained the trade marks of the Saudi Company as well as the Egyptian Company in two separate judgments. We will not repeat it save where it is necessary. This judgment must be read together with the two judgments of the learned trial judge one reported in Al Baik Fast Food Distribution Co Sae v. El Baik Food Systems Co , Sa, for the Appeal No: '1653' and the other one is not reported yet. We will deal with both the appeals in this judgment to save repetition of the facts. The judgment will consist of two parts. One is for Appeal No: '401' and the other is for Appeal No: '1653'.

Appeal No: '401'

[3] The Egyptian Company appeals in respect of the judgment of the learned trial judge who allowed the Saudi Company's application pursuant to s 45 of the TMA 1976 to expunge the registered trade marks on the grounds:

(a) The Egyptian Company is not the rightful owner or has registered it in bad faith, contrary to s 25(1) of TMA 1976;

(b) The Egyptian Company trade marks are confusingly similar to that of the Saudi Company and this will cause confusion to the trade and public in Malaysia, contrary to s 14(a) to (g) and/or s 19(1)(a) and/or (b) of TMA 1976.

[4] It was the contention of the Saudi Company that (i) its trade marks are well-known in Malaysia or around the world; (ii) the Egyptian Company is not entitled to register the trade marks in Malaysia.

[5] The Saudi Company's prayers in brief read as follows:

"(a) Declaration that the plaintiff (Saudi Company) is the lawful owner of Trade Mark which consist the word "AL BAIK" and the device of a chicken, when it is used in the food products and restaurant services;

(b) The 1st defendant's (Egyptian Company) Trade Mark Registration No: 05013291 filed in Class 29 and 05013292 filed in Class 16 was wrongly registered without sufficient cause and/or wrongly remains on the register. Those trade mark registrations to be cancelled, expunged and removed from Trade Mark register,

(c) The 2nd defendant, Pendaftar Cap Dagangan Malaysia to rectify the register by cancelling and expunging the 1st defendant's trade mark and to gazette this action in the Government gazette. (d) Costs to be paid by the 1st defendant to plaintiff."

[6] The Memorandum of Appeal of the Egyptian Company reads as follows:

"1. The learned judge erred in law in placing reliance on all affidavits affirmed by one Lim Eng Leong, the deponent for all of the plaintiff's affidavits in relation to Suit No: 24IP-17-04-2014, when he in fact is not an employee, franchisee or licensee of the plaintiff, and does not possess personal knowledge or facts deposed in his affidavits, thus is not in the position to affirm any affidavits on behalf of the plaintiff on contentious facts.

2. The learned judge erred in fact and in law in holding that the 1st defendant's trade mark is wrongly registered, without sufficient cause and/or wrongly remaining on the Register.

3. The learned judge