JUDGMENT

Azahar Mohamed J:

(1) The Agricultural and Processed Food Products Export Development Authority of India (APEDA) (the 1st applicant) is a statutory authority under the Government of India which is engaged in the development and promotions of exports of certain agricultural and processed food products from India, including, a variety of rice known as Ponni rice.

(2) Tamil Nadu Agricultural University (the 2nd applicant) is an agricultural university in India based in Coimbatore in the State of Tamil Nadu, India.

(3) Balasubramaniam and Palanysamy (the 3rd applicant) are farmers and cultivators of Ponni rice in Tamil Nadu in India.

(4) Visnukumar Traders Pvt Ltd and KK Imports and Exports (Indian Exporters) are rice exporters based in Chennai in the State of Tamil Nadu in India (the 4th and 5th applicants).

(5) Syarikat Faiza Sdn Bhd (the respondent) is a Malaysian company which trades in, distributes and supply rice in Malaysia.

(6) On 6 June 2000, the respondent filed an application for the registration of the name "PONNI" as a trade mark (the "PONNI" trade mark) in relation to rice under class 30 of the NICE International Classification of Goods at the Trade Registry. The respondents application was allotted trade mark No: 00007172 and was subsequently entered in the trade marks register on 20 January 2006. The respondent has been using the PONNI trade mark in its brand of rice under the name and style of "BERAS TAJ MAHAL BERAS FAIZA HERBA PONNI".

The Applicants Notice Of Motion

(7) By this notice of motion, the applicants are seeking, inter alia, the following prayers against the respondent:

1. An order that the trademark registration No: 00007172 for the mark "PONNI" in the name of the respondent be expunged and removed from the register of trademarks, Malaysia;

2. In the event prayer 1 is granted, an order directing the Registrar of Trade Marks, Malaysia to rectify the Malaysian register of trade marks by removing there from the whole entry relating to trade mark registration No: 00007172 and cause such fact of rectification and removal to be published in the government gazette forthwith after the order is served on the Registrar of Trade Marks, Malaysia.

(8) The applicants application is premised on the ground the PONNI trade mark is an entry made on the register without sufficient cause and/or an entry wrongfully remaining in the register. In this regard, s. 45(1) of the Trade Marks Act 1976 (the Act) provides:

Subject to the provisions of this Act, the court may on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from the register of any entry or by any entry made in the register without sufficient cause or by any entry wrongfully remaining in the register, or by any error or defect in any entry in the register, make such order for making, expunging or varying such entry as if thinks fit.

(9) Another relevant provision is s. 10(1) of the Act, which provides the basis for registration of a trade mark as follows:

In order for a trade mark (other than a certification trade mark) to be registrable, it shall contain or consist of at least one of the following particulars:

(a) The name of an individual, company or firm represented in a special or particular manner;

(b) The signature of the applicant for registration or of some predecessor in his business;

(c) An invented word or words;

(d) A word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or

(e) Any other distinctive mark.

The Background Facts

(10) Based on the numerous affidavits filed by the parties, in my view, the following facts have been established. Ponni literally means "Golden" in Tamil and is another name given to the Kaveri River (also known as Cauvery River) in the Southern Indian Peninsula. Ponni rice was named after and in tribute to the Kaveri Delta region in India w