Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2020 MarsdenLR 1935

COURT OF APPEAL PUTRAJAYA
OOI SIEW BEE & ORS – Appellant
Versus
ZHU GE KONG MING SDN BHD – Respondent
[Civil Appeal No: W-02(IPCV)(W)-1598-08-2016]

Petitioner Advocates:M M Athimulan,Krishna Kumari,V Amareson,A Tinoshiny ,Respondent Advocate: Chew Kherk Ying,Mohd Ariff Emran Arifin,Chong Tze Lin

Generic trade marks cannot be exclusively registered when they are recognized as common descriptive terms in trade, undermining the principles of distinctiveness under the Trade Marks Act.

Headnote:(A) Trade Marks Act, 1976 – Sections 10(1)(c), (d), (e), 14(1)(b), 37, and 45(1) – Trademark expungement – Plaintiffs applied to expunge the defendant's registered trade marks on grounds that they were generic and non-distinctive – Judicial Commissioner dismissed plaintiffs' application, stating 3rd plaintiff lacked locus standi – Court held that the words 'Huan Zhai Jin' are common descriptive terms and not inventive – Trial court's findings were inconsistent with previous proceedings which recognized the terms as common property. (Paras 1-56)

Facts of the case: The plaintiffs contended that the defendant's trade marks are generic terms and not distinctive, recalling their long usage in the Chinese tradition and customs. The plaintiffs sought to expunge the marks registered by the defendant that they claimed infringed upon their rights. (Paras 2-11)

Findings of Court: The High Court's decision to dismiss the plaintiffs' claims was flawed regarding the distinctiveness of the terms, which were held by this Court to be common descriptive words. (Paras 55)

Issues: Whether the 3rd plaintiff qualifies as an aggrieved person and whether the previous decision on the descriptive nature of the words is binding under the doctrine of res judicata. (Paras 21-35)

Ratio Decidendi: The court concluded that the 3rd plaintiff did not have the locus standi to sue. However, the appeal was upheld on grounds that previous findings regarding the words being common property were inconsistent with the trial court's conclusions. (Paras 55-56)

Result: The 1st and 2nd plaintiffs’ appeal is allowed; the 3rd plaintiff's appeal is dismissed. Each party to bear their own costs.

JUDGMENT

Hanipah Farikullah JCA:

Introduction

[1] This is an appeal against the judgment of the learned learned Judicial Commissioner dated 5 August 2016 which had dismissed the plaintiffs' application under s 45 of the Trade Marks Act 1976 ( TMA ) to expunge the defendant's trade marks. Particulars of registration of the subject marks are as follows:

[2] The plaintiffs contended that the defendant's Registered Trade Marks were registered in contravention of ss 14 and 10(1)(c), (d), (e) of the TMA and therefore should be revoked pursuant to s 45(1). In essence, the plaintiffs contended that the defendant's Registered Trade Marks are not invented or coined words but common generic words and common descriptive terms which are "common property" to all Chinese traders and not distinctive nor exclusive to the defendant alone, in the same course of trade or business.

[3] It is the defendant's case that the above said trade marks, which are the three Chinese characters "Huan Zhai Jin" [] were created by SD4, were newly coined words and not available in any Chinese dictionary and as such, were not common words.

[4] For convenience, we will refer to the appellants as the plaintiffs and the respondent as the defendant.

The Parties

[5] The plaintiffs are as follows:

(1) the first plaintiff (1st plaintiff) is a sole proprietor who sells, among others, Chinese prayer papers and prayer paper boxes (Chinese Prayer Materials);
(2) the second plaintiff company (2nd plaintiff) is in the business of importing and dealing with Chinese Prayer Materials; and
(3) the third plaintiff (3rd plaintiff) is the chairman of a society, "The Association of Manufacturers and Retailers of Chinese Prayer Goods in Penang" (Chinese Prayer Materials Society) registered under the Societies Act 1966 (SA). The members of the Chinese Prayer Materials Society are in the business of imports, sales and manufacture of Chinese Prayer Materials.

[6] The defendant is a Malaysian company with its business in manufacturing, wholesaling and retailing Chinese prayer materials, including praying papers bearing the defendant's Registered Trade Marks. The defendant is also the current registered proprietor of the defendant's Registered Trade Marks since 2005 and 2006 and the defendant's Registered Trade Marks are still valid and subsisting until to date.

Decision Of The High Court

[7] The primary question before the trial Court was whether the defendant's Registered Trade Marks were liable to be expunged as marks that are wrongfully remaining in the Registrar within s 45(1)(a) of the TMA because of the defendant's Registered Trade Marks are not registrable under ss 10(1)(c), (d), (e) and 14 of the .

[8] Before the learned Judicial Commissioner, the plaintiffs claimed that the features/symbols found in the Chinese prayer papers used for burning/prayer boxes and the Chinese characters/words "Huan Zhai Jin" [] which were translated to mean "repay debts/ gold or money" are not invented or coined words but common generic words and common descriptive terms which are "common property" to all Chinese traders and not distinctive nor exclusive to the defendant alone, in the same course of trade or business.

[9] The plaintiffs claimed that the custom or rituals of burning the Chinese prayer papers for repaying debts "Huan Zhai Jin" [] were long in existence since the Tang Dynasty and the burning of the Chinese prayer papers is a religious belief and part of the customs and rituals of the Chinese community.

[10] In this case, the three plaintiffs applied to expunge the defendant's Registered Trade Marks and seek for the following order:

(i) for an order pursuant to s 45 of the TMA that the Register be rectified by expunging the entry of the marks as an entry wrongly made in the Register;
(ii) an order pursuant to s 37 of the TMA that the Register be rectified by expunging the entry of the marks as an entry wrongfully remaining in the Register;
(iii) an order pursuant to s 10(1) of the TMA that the mar