James Foong J:

Introduction

[1] The appellant had filed a notice of motion in the High Court seeking the following reliefs:

(1) That respondents' trade mark, bearing registration No. 88/03298, registered on 5 July 1988 under class 25 for "socks and underwear" ('the respondents' trade mark), be expunged and removed from the Register of Trade Marks in Malaysia (Register).

(2) That the Registrar of Trade Marks, Malaysia (Registrar), be directed to rectify the Register by removing therefrom the respondents' trade mark and publish this in the Government Gazette.

(3) That costs of and incidental to this application, including those at the Registry, be paid by the respondents.

The Appellant's Reasons

[2] To support its application, the appellant advanced these reasons: First, the appellant declared that it is the registered proprietor of a trade mark under class 25 for shoes, boots and parts thereof, slippers and sandals bearing registration number M/57693 (the appellant's trade mark) which was registered on 23 August 1971. The appellant's trade mark has the word 'POWER' and a sharp two pronged arrow-like device pointing to the right. The illustration takes this form:

[image omitted]

[3] According to the appellant, it has used this trade mark since 1971 for its goods as registered. Though socks is not one of the goods listed, the appellant claimed that it has merchandised this product under its trade mark and over time this has gained a reputation and goodwill with substantial income generated from it. To support this, the appellant adduced various documents showing trade channels where its goods under its trade mark were sold.

[4] The appellant then claimed that the respondents also has a registered trade mark. It is registered on 5 July 1988. It is also under class 25 but the goods listed are: socks and underwear. This mark consists of a three feather-like curve devise with the word 'SPORTS' below it. Then just beneath this is another word: 'POWER'. The illustration of the respondents' trade mark is as follows:

[image omitted]

[5] According to the appellant, the respondents did not invent or create their trade mark. Respondents merely played on the appellant's trade mark and coined up something similar to that of the appellant's. Not only this, the respondents also failed to use their trade mark subsequent to their submission for registration. Trading activity on the defendants' trade mark only began in 1991, and even this is suspected. The invoices adduced by the respondents to prove their trading channels are in Chinese characters which, if not translated into Bahasa Malaysia or English, cannot be admitted as evidence in a court of law in this country. The appellant then further stressed that even if the respondents had used their trade mark there is an overlapping of trade channels between the parties and this has caused confusion and deception to the public where, purchasers intending to buy the appellant's goods would mistakenly purchase the respondents' goods bearing the respondents' trade mark.

[6] Finally, though admitting that the appellant did not raise any objection when the respondents' trade mark was advertised in the gazette under s. 27 of the Trade Marks Act 1976 ("the Act"), the appellant maintained it can still seek relief from the court to rectify the register with the orders requested in the motion.

The Respondents' Retaliation

[7] The respondents first denied all the allegations of the appellant. They explained that they have never copied from the appellant's trade mark. Their trade mark was designed by them from their own original idea. Though admitting that there may be some minor similarities to the appellant's trade mark, but this would not cause confusion and deception to the public. In fact, this apprehension has been settled by the registrar who allowed the respondents' trade mark to be advertised in the gazette after having considered the explanation of the respondents over the fear of confusion