JUDGMENT

Adlin Abdul Majid J:

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] 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 o