1. Trademark opposition — Application to set aside Registrar's decision — Deceptive similarity and distinctiveness — Trade Marks Act 1976. (Para 1 , 3 , 4 , 6 , 7 )
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2026 MarsdenLR 541
HIGH COURT MALAYA KUALA LUMPUR
ADLIN ABDUL MAJID , J
THE POLO/LAUREN COMPANY LPP – Appellant
Versus
RENEW IMAGE SDN BHD – Respondent
[Originating Summons No: WA-24IP-43-12/2024]
Important Points
A trademark is not registrable if its dominant features are confusingly similar to earlier marks, regardless of secondary laudatory additions or market differences. Furthermore, distinctiveness cannot be acquired by trading upon the reputation of an earlier mark.
Subject
Intellectual Property - Trademarks
Act Referred
Headnote
(A) Trade Marks Act 1976 - Sections 10, 14(1)(a) - Registration of trademark - Likelihood of confusion and deception - Test for confusion is a question of fact and degree - It is sufficient if the registration causes persons to wonder whether products come from the same source (Paras 11, 12) - Separately registered marks cannot be combined into a single composite mark for comparison with an opposing mark (Paras 17, 18) - Inclusion of laudatory or meaningless words does not materially alter the overall impression if dominant features remain similar (Paras 21, 22) - Differences in market positioning or price points do not negate the likelihood of confusion (Para 27).
(B) Trade Marks Act 1976 - Section 10 - Distinctiveness - A mark is not distinctive if its essential features call to mind an earlier registered mark (Para 32) - Distinctiveness cannot be established by mere addition of secondary elements if dominant components are substantially similar to an earlier mark (Para 34) - Acquired distinctiveness cannot be based on trading upon the reputation of another (Paras 35, 36).
Facts of the case:
The plaintiff sought to set aside a decision of the Registrar of Trademarks which had dismissed the plaintiff's opposition to the defendant's trademark application in Class 25. The plaintiff contended that the defendant's mark was deceptively and confusingly similar to its own registered word and device marks.
Findings of Court:
The court found that the defendant's mark was identical or similar to the plaintiff's marks, likely to deceive or confuse the public, and lacked the necessary distinctiveness for registration.
Issues: Whether the defendant's mark is identical or similar to the plaintiff's marks so as to be likely to deceive or cause confusion to the public, and whether the defendant's mark is distinctive.
Ratio Decidendi: The court held that the Registrar erred by treating multiple registered marks as a single composite mark. It ruled that the dominant features outweighed the secondary, laudatory, or meaningless additions. Furthermore, a mark cannot be considered distinctive if it mirrors the essential features of an earlier mark, as such association with another's goodwill does not constitute independent distinctiveness.
Result: Originating summons allowed.
(B) Trade Marks Act 1976 - Section 10 - Distinctiveness - A mark is not distinctive if its essential features call to mind an earlier registered mark (Para 32) - Distinctiveness cannot be established by mere addition of secondary elements if dominant components are substantially similar to an earlier mark (Para 34) - Acquired distinctiveness cannot be based on trading upon the reputation of another (Paras 35, 36).
Facts of the case:
The plaintiff sought to set aside a decision of the Registrar of Trademarks which had dismissed the plaintiff's opposition to the defendant's trademark application in Class 25. The plaintiff contended that the defendant's mark was deceptively and confusingly similar to its own registered word and device marks.
Findings of Court:
The court found that the defendant's mark was identical or similar to the plaintiff's marks, likely to deceive or confuse the public, and lacked the necessary distinctiveness for registration.
Issues: Whether the defendant's mark is identical or similar to the plaintiff's marks so as to be likely to deceive or cause confusion to the public, and whether the defendant's mark is distinctive.
Ratio Decidendi: The court held that the Registrar erred by treating multiple registered marks as a single composite mark. It ruled that the dominant features outweighed the secondary, laudatory, or meaningless additions. Furthermore, a mark cannot be considered distinctive if it mirrors the essential features of an earlier mark, as such association with another's goodwill does not constitute independent distinctiveness.
Result: Originating summons allowed.
Legal Category Hierarchy
- intellectual property
- practice and procedure
Petitioner Advocates:Sukumar Karuppiah,Sarita Menon,George Mark Amirtharaj ,Respondent Advocate: Indran Shanmuganathan,Jyeshta Mahendran,Elisia Engku Kangon
Table of Contents
2. Whether the contested mark is deceptively similar to registered marks and whether it possesses sufficient distinctiveness to be registrable. (Para 5 , 8 , 25 , 31 )
3. The Registrar erred by treating separate marks as a composite, ignoring conceptual similarity, and overvaluing non-distinctive laudatory elements in the mark. (Para 14 , 15 , 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23 , 26 , 27 , 32 , 34 , 35 , 36 )
4. A mark is confusingly similar if its dominant features create an association with an earlier mark, regardless of laudatory additions or market segment differences. (Para 22 , 24 , 27 , 28 , 32 , 34 )
5. Originating summons allowed and Registrar's decision set aside with costs. (Para 38 )
6. How should multiple separately registered marks be compared against a contested mark?
Separately registered marks cannot be combined into a single composite mark for comparison; each mark must be analyzed individually to determine if the contested mark is similar to any of them. (Para 15 , 16 , 17 , 18 )
7. Does the addition of laudatory or meaningless words create a distinct trademark?
The inclusion of laudatory words or meaningless letters does not materially alter the overall impression if the dominant and distinctive features remain substantially similar to an earlier registered mark. (Para 21 , 22 , 23 , 32 , 34 )
8. Do differences in market positioning or price points negate the likelihood of trademark confusion?
Differences in market positioning, price points, or target consumers do not inherently negate the likelihood of confusion, especially where brand diffusion across different segments is common. (Para 26 , 27 )
9. Can a trademark acquire distinctiveness through use if it mirrors an earlier mark?
Evidence of use cannot cure a lack of inherent distinctiveness if such use merely operates in the shadow of an earlier mark, effectively piggybacking on the earlier mark's goodwill. (Para 35 , 36 )
JUDGMENT
A. Introduction
[1] The plaintiff filed an originating summons, seeking to set aside a decision dated 14 October 2024 by the learned Registrar of Trademarks ("Registrar's Decision"). In the Registrar's Decision, the learned Registrar dismissed the plaintiff's notice of opposition ("plaintiff's Opposition") against the defendant's trademark application ("defendant's Application").
[2] After considering the evidence before the court and the submissions of learned counsel, the court allowed the originating summons. The reasons for this decision are set out below.
B. Background Facts
[3] On 20 October 2004, the defendant filed the defendant's Application, being trademark application no 04016140, to register the 
mark ("defendant's Mark") in Class 25. On 6 March 2015, the plaintiff filed the plaintiff's Opposition, to oppose the defendant's Application.
[4] In the Registrar's Decision, the learned Registrar dismissed the plaintiff's Opposition, and allowed the defendant's Mark to proceed to registration.
[5] The plaintiff contended that the defendant's Mark is deceptively and confusingly similar to the plaintiff's marks registered in Class 25, and in particular, the following marks:
a. Trademark no 95009319, comprising the word "POLO" ("plaintiff's POLO Word Mark"); or
b. Trademark No M/097382, depicted as "
"; and
c. Trademark no 95009325, depicted as "
The marks in paragraphs (b) and (c) above shall collectively be referred to as the "plaintiff's Polo Player Device Marks", while plaintiff's POLO Word Mark and the plaintiff's Polo Player Device Marks shall collectively be referred to as the "plaintiff's Marks".
[6] The plaintiff filed this action to set aside the Registrar's Decision.
[7] The findings of the learned Registrar in the Registrar's Decision are based on the provisions of the Trade Marks Act 1976 ("TMA 1976"), as the plaintiff's Opposition was filed before the Trademarks Act 2019 came into force.
C. The Registrar's Decision
[8] The learned Registrar dismissed the plaintiff's Opposition on, inter alia, the following grounds:
a. The defendant's Mark is not confusingly similar to the plaintiff's Marks;
b. There is no real tangible risk that the purchasing public exercising reasonable attention would be confused between the defendant's Mark and the plaintiff's Marks; and
c. The defendant's Mark is distinctive.
D. Issues
[9] The Registrar's Decision gives rise to two main issues, which were considered by the court in the final determination of this matter:
a. Whether the defendant's Mark is identical or similar to the plaintiff's Marks, so as to be likely to deceive or cause confusion to the public; and
b. Whether the defendant's Mark is distinctive.
E. Considerations
Issue 1: Is The Defendant's Mark Identical Or Similar To The Plaintiff's Marks?
[10] The first issue considered by the court is whether the defendant's Mark is identical or similar to the plaintiff's Marks, so as to be likely to deceive or cause confusion to the public.
[11] 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. Section 14(1)(a) states 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]
[12] To support its contention that the defendant's Mark is likely to deceive or cause confusion to the public, the plaintiff relied on Yong Teng Hing B/S Hong Kong Trading Co & Anor v. Walton International Limited 2012 MarsdenLR 1081; [2012] 6 MLJ 609; [2012] 6 CLJ 337, where the Federal court considered s 14(1)(a) of the TMA 1976, and held that:
"[26] As regards the test of confusion and deception it is now well settled. The decision of the House of Lords in the case of Bali Trade Mark [1969] RPC 472 in interpreting s 11 on the UK Trade Marks Act which is equivalent to our s 14(1)(a) of the Act is highly instructiv
