A trademark may be registrable if it is distinct, does not directly describe the goods, and can convey a covert meaning, supported by case law defining inventiveness.

Headnote:(A) Trade Marks Act 1976 - Sections 10(1)(c), 10(1)(d), 10(1)(e) - Appeal against Registrar's refusal to register "POULTRY FOCUS" trademark for non-medicated animal feeds - Court found the mark to be distinctive, an invented word, and did not directly reference quality of goods - Appeal allowed. (Paras 1, 14, 32)

(B) Distinctiveness - A mark can be distinctive if it does not directly describe goods, even if it has a covert allusion - Registration can be granted even if the mark has a meaning as long as it isn't obvious. (Paras 8, 18)

(C) Trade Marks - The combination of common words can be inventive if it does not directly convey meaning in relation to the goods - Court emphasized that the ordinary meaning of words alone does not negate the mark's registrability. (Paras 10, 21)

Facts of the case:
The plaintiff's trade mark application was refused by the defendant who cited that "POULTRY FOCUS" was not inventive and directly referred to the goods. The Registrar upheld the decision based on provisions of the Act regarding trademark registration.

Findings of Court:
The trademark "POULTRY FOCUS" is registrable as it satisfies the requirements under sections 10(1)(c), (d), and (e) of the Trade Marks Act.

Issues: Whether the mark is an invented word, if it has direct reference to the character or quality of goods, and its distinctiveness in the context of trademark registration.

Ratio Decidendi: The court held that the mark "POULTRY FOCUS" comprises an unusual juxtaposition that does not convey an obvious meaning relative to the goods, thereby qualifying for registration as an inventive and distinctive mark.

Result: Appeal allowed, and the plaintiff's mark is registrable.

Table of Content
1. plaintiff's appeal against trademark refusal. (Para 1 , 2)
2. background and objections to trademark application. (Para 3 , 4 , 5 , 6)
3. legal provisions for trademark registrability. (Para 7)
4. arguments supporting 'invented words' for trademark. (Para 8 , 9 , 10)
5. defendant's contention on obvious meanings of trademark. (Para 11 , 12)
6. counterarguments assessing direct reference to goods (Para 13 , 14 , 15)
7. further examination of indirect reference to quality (Para 16)
8. trademark's lack of direct reference to goods. (Para 17 , 18)
9. registration supported by lack of similar trademarks. (Para 19 , 20)
10. defendant argues trademark is common and descriptive. (Para 21 , 22)
11. defendant's claims on common usage and descriptiveness (Para 23)
12. discussion on distinctiveness and previous case law (Para 24)

[1] This is the plaintiff's appeal pursuant to s 25(5) of the Trade Marks Act 1976 ("the Act") and O 87 of the Rules of 2012 against the decision of the Registrar of Trademarks ("the Registrar") dated 11 December 2012 wherein the Registrar had refused the plaintiff's trademark application no 02008431 to register the trade mark "POULTRY FOCUS" in Class 31 in respect of "non-medicated animal feeds".

[2] The originating summons (encl 1) filed by the plaintiff prays for the following orders:

2.1 an Order that the decision of the Registrar dated 11 December 2012 pursuant to s 25(3) of the Act refusing the plaintiff's trade mark application no 02008431 for "POULTRY FOCUS" in Class 31 in respect of non-medicated animal feeds be set aside;

2.2 an Order that the trade mark application no 02008431 be accepted by the Registrar;

2.3 an Order that the trade mark application no 02008431 be advertised in the prescribed manner pursuant to s 27 of the Act;

2.4 in the event that the above prayers are granted, a copy of this Order beserved on the Registrar in accordance with reg 75(1) of the Trade Marks Regulations 1997;

2.5 costs.

B. Background

[3] On 17 July 2002 the plaintiff applied to the Registrar to register the trade mark "POULTRY FOCUS" in Class 31 in respect of "non-medicated animal feeds" ("the plaintiff's application").

[4] The defendant objected to the plaintiff's application vide letter dated 6 November 2003 on the grounds that the plaintiff's application did not comply with the Act, in particular the following reasons:

4.1 the proposed trade mark was not an invented word and therefore did not comply with s 10(1)(c) of the Act;

4.2 the proposed trade mark comprised of words having direct reference to the character or quality of the goods for which registration was sought namely non-medicated animal feeds and therefore did not comply with s 10(1)(d) of the Act;

4.3 the proposed trade mark was not distinctive as its meaning has a direct reference to the character or quality of the goods for which registration was sought namely "non-medicated animal feeds" and therefore did not comply with s 10(1)(e) of the Act.

[5] The plaintiff via letter dated 13 November 2003 responded to the defendant'sobjections stating that the objections were without merits. The defendant maintained their objections against the plaintiff's application based on s 10(1)(c), (d) and (e) of the Act vide letter dated 28 October 2005 but gave opportunity to the plaintiff to request for a hearing. On 25 January 2006 the plaintiff requested for a hearing to be held in respect of defendant's objections to the plaintiff's application. The hearing took place on 5 May 2010.

[6] Vide letter dated 31 May 2010, the defendant informed the plaintiff that the plaintiff's application was refused as it did not satisfy the requirements of s 10(1) of the Act ("the decision"). In para 48 at p 16 of the grounds of decision the learned Penolong Pendaftar Cap Dagangan stated his decision as:

"Cap dagangan pemohon bukanlah perkataan yang direkacipta tetapi merupakan perkataan kombinasi perkataan biasa iaitu POULTRY dan FOCUS yang terdapat didalam kamus. Cap dagangan pemohon juga m

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2013 MarsdenLR 2160

HIGH COURT MALAYA KUALA LUMPURCARGILL INCORPORATED – AppellantVersusPENDAFTAR CAP DAGANGAN – Respondent[Originating Summons No: 24IP-1-01-2013]

A trademark may be registrable if it is distinct, does not directly describe the goods, and can convey a covert meaning, supported by case law defining inventiveness.

Cases Referred (1)

HIGH COURT MALAYA KUALA LUMPUR
CARGILL INCORPORATED – Appellant
Versus
PENDAFTAR CAP DAGANGAN – Respondent
[Originating Summons No: 24IP-1-01-2013]