JUDGMENT

Azizul Azmi Adnan JCA:

[1] The appellant defendant had filed an application to register "Galperti" as a trademark in Malaysia. The respondent plaintiff is the holder of the trademark in Italy, the home country of the parties^[1]. It filed an opposition to the appellant's trademark application in Malaysia.

[2] The Registrar of Trademarks dismissed the opposition, on the basis that the defendant had demonstrated use of the Galperti trademark in Malaysia from 1993.

[3] The Plaintiff appealed to the High Court , which appeal was allowed.

[4] The principal basis upon which the appellant sought registration of the trademark in Malaysia was that it had established first use of the trademark in Malaysia. Evidence of this use came in the form of invoices dating back to 1993 issued by a company known as Officine Nicola Galperti & Figlio S.p.A. According to the statutory declaration affirmed on behalf of the appellant, it is the holding company of Galperti Group, of which Officine Nicola Galperti & Figlio S.p.A. is a member. The statutory declaration also stated as follows:

6. The Applicant, through its subsidiary companies ie Galperti Malaysia Sdn Bhd and Galperti Manufacturing (Malaysia) Sdn Bhd, has been using the trademark "GALPERTI" in Malaysia since 1993 and the subsidiary companies have set up a factory at 2, Jalan Laman Setia 7/4 Taman Laman Setia, 81550 Johor Bahru, Johor Darul Takzim, Malaysia in 2011.

[5] The Registrar of Trademarks allowed the appellant's application for registration and dismissed the respondent's opposition on the basis of the averment quoted in para 4.

[6] It was however established that the averment was untrue, or at any rate inaccurate. This was because there was uncontroverted documentary evidence that showed that the two Malaysian subsidiaries, Galperti Malaysia Sdn Bhd and Galperti Manufacturing (Malaysia) Sdn Bhd, were only incorporated in 2008 and 2010 respectively.

[7] Be that as it may, the fact that the products could not possibly have been sold through Galperti Malaysia Sdn Bhd or Galperti Manufacturing (Malaysia) Sdn Bhd does not mean that the invoices dating back to 1993 were not genuine. We have examined the invoices closely, and are unable to conclude that they were somehow fabricated or were otherwise not genuine.

[8] We are thus satisfied that Officine Nicola Galperti & Figlio S.p.A. had in fact established first use of the Galperti trademark in Malaysia.

[9] The difficulty is of course that Officine Nicola Galperti & Figlio S.p.A. is not the appellant, which had sought for registration of the trademark in Malaysia. Had the applicant for trademark registration been Officine Nicola Galperti & Figlio S.p.A., we would have had no hesitation in allowing the registration and dismissing the opposition. Here, however, the applicant was the appellant, FIAL Finanziara Industrie Alto Lario, which was said to be the holding company of the Galperti Group.

[10] The mere fact that first use was established to have been made by a related or associated company of the appellant does not, in our considered view, entitle the appellant to itself register the trademark in Malaysia, for that right belongs to Officine Nicola Galperti & Figlio S.p.A.

[11] Learned counsel for the appellant submitted that the benefit of the use of a trademark by a licensee would accrue to the appellant as the licensor of the trademark. The written submissions of counsel for the appellant stated as follows:

The use of a trademark by a licensee would enure to the benefit of the licensor (namely, the Appellant). Where the dispute is not between the licensee and licensor but rather with a third party, the Court need not go into the relationship between the licensor and licensee which regulates the contractual arrangements between them.

[12] However, there was nothing in evidence that showed or even suggested that the Galperti trademark had been licensed by the appellant to Officine Nicola Galperti & Figlio S.p.A. Indeed, there was not even