A defendant can rely on prior consent in trademark claims, but estoppel may limit claims in passing off cases.

A. Background

[1] The plaintiff and defendant are co-operative societies registered under the Co-Operative Societies Act 1993 (CSA).

[2] The plaintiff is the proprietor of the following four trade marks (Four RTMs) registered under the Trade Marks Act 1976 ( TMA ):

(1) trade mark with the Registration No 09012165 (RTM No 165) for goods in Class 16 (goods which include, among others, paper, cardboard, goods made from these materials, printed matters, bookbinding materials, photographs and stationery) (Class 16 Goods). A copy of RTM No 165 is attached to this judgment as "Appendix A";

(2) trade mark with the Registration No 09012166 (RTM No 166) for goods in Class 25 (clothing, footwear and headgear) (Class 25 Goods). A copy of RTM No 166 is attached to this judgment as "Appendix B";

(3) trade mark with the Registration No 09012167 (RTM No 167) for services in Class 35 (advertising, business management, business administration and office functions) (Class 35 Services). A copy of RTM No 167 is attached to this judgment as "Appendix C"; and

(4) trade mark with the Registration No 09012168 (RTM No 168) for services in Class 36 (insurance, financial affairs, monetary affairs and real estate affairs) (Class 36 Services). A copy of RTM No 168 is attached to this judgment as "Appendix D".

The Registrar of Trade Marks has imposed a disclaimer that the registration of the Four RTMs shall give no right to the exclusive use of the words "BANK PILIHAN ANDA" and "YOUR CHOICE BANK".

[3] In this suit (This Action), the plaintiff claims that the defendant's website, brochures and promotional materials have:

(1) infringed the Four RTMs under s 38(1)(a) TMA ; and

(2) passed off the defendant's services, products and business as those of the plaintiff's.

B. Issues

[4] The following questions arise in this case:

(1) whether it was appropriate for the defendant to object to the court's jurisdiction to hear This Action under s 82(1)(d), (3)(c), (5) and (7) CSA only after the completion of the trial of this case;

(2) in view of s 82(1)(d), (3)(c), (5) and (7) CSA, does this court only have jurisdiction to decide this case when:

(a) the dispute between the plaintiff and defendant is referred by the plaintiff or defendant to Malaysia Co-Operative Societies Commission (MCSC) under s 82(1)(d) CSA; and

(b) when MCSC requires the plaintiff and defendant to refer the dispute to court pursuant to s 82(3)(c) CSA ?;

(3) if s 82(1)(d), (3)(c), (5) and (7) CSA ousts the court's jurisdiction to hear This Action when MCSC does not refer this case to court, whether s 82(1)(d), (3)(c), (5) and (7) CSA has altered the basic structure of the Federal Constitution (Constitution) regarding the court's judicial power to decide disputes under art 121(1) of the Constitution;

(4) if s 82(1)(d), (3)(c), (5) and (7) CSA has altered the Constitution's basic structure regarding the court's judicial power to adjudicate disputes pursuant to art 121(1) of the Constitution, is s 82(1)(d), (3) (c), (5) and (7) CSA invalid under art 4(1) of the Constitution to the extent of such an alteration?; and

(5) if the court has jurisdiction to hear This Action without any reference by MCSC:

(a) whether the defendant has infringed the Four RTMs under s 38(1)(a) TMA . In this regard, can the defendant rely on a defence under s 40(1)(dd) that the plaintiff has consented, expressly or impliedly, to the defendant's use of the Four RTMs?; and

(b) has the defendant committed a tort of passing off the defendant's services, products and business as those of the plaintiff's? If the defendant has passed off its services, products and business as those of the plaintiff's, whether the plaintiff is estopped from claiming from the defendant based on the tort of passing off because of the plainti