JUDGMENT

Adlin Abdul Majid J:

Introduction

[1] The plaintiff filed an originating summons to set aside the decision of the learned Registrar of Trademarks ("Registrar"‌), dismissing the plaintiff's opposition against the defendant's trademark application.

[2] The court dismissed the originating summons and upheld the decision of the learned Registrar.

B. Background Facts

[3] The plaintiff is the owner and proprietor of the well-known trademark consisting of the rearing horse device ("Plaintiff's Mark"‌). The plaintiff has obtained numerous trademark registrations in Malaysia for the Plaintiff's Mark.

[4] The defendant is involved in various businesses, including the trading of consumable products. The defendant filed application no.

[5] On 11 April 2016, the plaintiff filed a notice of opposition against the Defendant's Application ("Plaintiff's Opposition"‌). On 29 April 2024,the learned Registrar dismissed the Plaintiff's Opposition ("Registrar's Decision"‌) and allowed the Defendant's Mark to proceed to registration.

[6] The plaintiff filed this action to set aside the Registrar's Decision.

[7] The assessment of the learned Registrar in the Registrar's Decision is based on the provisions of the Trade Marks Act 1976 ("TMA 1976"‌), as the Plaintiff's Opposition was filed before the Trademarks Act 2019 was enforced.

C. Considerations And Findings

The Registrar'S Decision

[8] In the Registrar's Decision, the learned Registrar dismissed the Plaintiff's Opposition after finding that:

a. The features of the Defendant's Mark and the Plaintiff's Mark are not confusingly similar; and

b. The defendant's goods and the plaintiff's goods are not identical or similar.

[9] The court examined the findings of the learned Registrar to determine whether any error was committed.

The Tests For The Likelihood Of Confusion

[10] The prohibition against the registration of a trademark that is confusingly similar to another trademark is set out in s 14(1)(a) of the TMA 1976, which provides that:

"(1) A mark or part of a mark shall not be registered as a trade mark:

(a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to

law..."‌

[Emphasis Added]

[11] Based on this provision, if the use of a mark or part of a mark is likely to deceive or cause confusion to the public, the mark shall not be registered.

[12] The question of what constitutes the likelihood of confusion was examined in Tohtonku Sdn Bhd v. Superace (M) Sdn Bhd; [1992] 2 MLJ 63; [1992] 1 CLJ (Rep) 344, where the Supreme court adopted the following test in The Pianotist Co Ltd (1906) 23 RPC 774:

"You must take the two words. You must judge them, both by their look and their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those marks are used in a normal way as a trade mark of the goods of the respective owners of the marks. "‌

[Emphasis Added]

[13] Further, in Ortus Expert White Sdn Bhd v. Nor Yanni Adom & Anor; [2022] 2 MLJ 67; [2022] 2 CLJ 661; [2022] 2 AMR 413, the Federal court set out the test of the likelihood of deception and/or confusion, after considering The Pianotist (supra) and Tohtonku (supra):

"[104] Upon a full consideration of the principles and authorities aforementioned, the test for likelihood of confusion and/or deception would be as follows:

(a) both side-by-side comparison and the Imperfect Recollection Test must be satisfied;

(b) the comparison is made in terms of phonetic, visual, trade channel, and idea aspects of the marks;

(c) the purpose of such comparison is to determine whether the defendant's mark contains essential features of the Diaintiff's registered trademark, which strike the eye and fix themselves in the recollection of the users of the plaintiff's goods;

(d) the court shall then take into account all surrou