Ramly Ali J:

This is an application by the applicant, by way of originating motion, under s. 45(1)(a) and s. 46(1)(a) of the Trade Marks Act 1976 for rectification of the register of trade marks.

In effect, the applicant seeks the court to grant it two main orders, namely:

(i) The 2nd respondent be expunged and removed as Registered User of the " TOYO " mark from the Register of Trade Marks as the entry in the register was made without sufficient cause or an entry wrongfully remaining in the register; and

(ii) that the registered trade mark TOYO' (Trade Mark Registration No: M 081817) in Class 16 'for various types of colour ink for pen, ball pen, and printing ink and stationery " in the name of the 1st respondent be expunged and removed for " non-use " from the Register of Trade Marks, Malaysia.

Brief Background Facts

Since 20 March 1979, the 1st respondent has been Registered Proprietor of the trade mark TOYO' in Class 16 for " various types of colour ink for pen, ball pen and printing ink and stationery', and the said trade mark has been renewed till 28 March 2010.

Since 25 July 2002, the 2nd respondent became a Registered User and has the licence or was authorised to 'use' the TOYO' mark on stationery goods by way of a Registered User Agreement which was duly registered on the Trade Marks Register on 11 October 2002.

Since 3 March 2004, a third party, Toyo Stationery Corporation (M) Sdn. Bhd. (not a party to this action) became a Registered User and has the licence or was authorised to 'use' the TOYO' mark on stationery goods by way of a Novation Cum Registered User Agreement, which was duly registered on the Trade Marks Register on 23 March 2004.

As early as 1993, till today the applicant purportedly claimed to have started purported 'use' under common law, the TOYO' mark on stationery (a sub-class of Class 16 goods). The applicant's purported claim of right to 'purported use' under common law seemed to be grounded on another entity's alleged right to 'use' the TOYO' mark and this entity was Great Door (M) Sdn. Bhd. wherein one Ho Ser Cheng, the deponent of the various affidavits and Managing Director of the applicant and one Quek How Liang were co-shareholders and co-directors.

The applicant also claimed that Great Door (M) Sdn. Bhd. had on 19 April 1994 filed an application for registration for the TOYO' mark in Class 16, under Application No: 94-03014, but this application was refused by the Registrar of Trade Marks on 28 July 1995 and the registrar cited the presence of two(2) similar trade marks on the register, one of which is - M-081817.

The applicant, under it's former name Toyopen Marketing (M) Sdn. Bhd. had on 8 April 2002 filed an application for registration for " e-TOYO " in Class 16 under Application No: 02-03691, but this application was also refused by the Registrar of Trade Marks on 24 April 2003 and the registrar cited the presence of a similar registered mark - ie, M-081817.

The applicant under its former name Toyopen Marketing (M) Sdn. Bhd. had claimed " purported use " of " e-TOYO " on stationery goods in Class 16 since 1 January 2003 based on a Memorandum of Understanding between Great Door (M) Sdn. Bhd. (signed by Quek How Liang as Director) and Toyopen Marketing (M) Sdn. Bhd. (signed by Ho Ser Cheng as Director).

The present originating motion was filed by the applicant after the respondents initiated a series of infringement proceedings such as warning letters to aiders and abettors of the applicant as well as 2 infringement suits, one of which is against the applicant itself.

The applicant is seeking to rely on ss. 45(1)(a) and 46(1) of the Trade Marks Act 1976 to rectify and/or expunge the 1st respondent's registered trade mark TOYO' and the 2nd respondent as registered user of the TOYO' mark from the Register of the Trade Marks and has raised many alleged facts and issues such as:

(i) the applicant's common law right to use the trade mark " TOYO " since as early as 1993;

(ii) the appli