JUDGMENT

Zulkefli Ahmad Makinudin CJM:

Introduction

[1] This is an appeal by the appellant against the decision of the Court of Appeal in dismissing the appellant's appeal against the decision of the High Court. There were two applications before the High Court filed by the respective parties. The appellant's application was to expunge the respondent's registered trade mark "Squiggles" pursuant to s 46(1)(b) of the Trade Marks Act 1976 ["TMA"] ["Application to Expunge"]. The respondent's application was for a trade descriptions order pursuant to s 16(1) of the Trade Descriptions Act 1972 ["Application for TDO"] in respect of the respondent's use of the mark "Squiggles". Both applications were heard together in the High Court and on appeal at the Court of Appeal. Both applications were decided in favour of the respondent at the High Court and Court of Appeal. The application to expunge was dismissed against the appellant with costs. The application for TDO was allowed.

Leave To Appeal

[2] Leave to appeal to this Court was granted on the following questions:

Question 1

Whether for the purpose of s 46(1)(b) of the Trade Marks Act 1976, the Court must first decide the competing rights of the parties involved before it decides whether an applicant is a "person aggrieved" under s 46 of the same Act.

Question 2

Whether for the purpose of s 46(1)(b) of the Trade Marks Act 1976, the "registered user" referred to in the said s 46(1)(b) includes a person who has obtained a license to use the registered trade mark but not registered as a registered user pursuant to s 48(1) of the Trade Marks Act 1976.

Question 3

Whether for the purpose of s 46(1)(b) of the Trade Marks Act 1976 the effective period of the permitted use of a registered trade mark by a user under s 48(1) of the Trade Marks Act 1976 read together with the reg 81(2) of the Trade Marks Regulations 1997 may predate the application as "registered user" under s 48(1) of the Trade Marks Act 1976.

[3] The appeal to this Court relates only to the appellant's Application to Expunge. The appellant did not seek leave to appeal against the order of the Court of Appeal dismissing its appeal in relation to the Application for TDO.

The Case for the Appellant

[4] The appellant is a private limited company incorporated in Malaysia on 8 February 1990. It is engaged in the business of manufacturing, producing, dealing in all kind of cakes, biscuits, bread, sweets, buns and other food-stuff in Malaysia. The appellant contended that it had produced cream filled buns and sold these products using the trade mark "Squiggle" ("Infringing Mark") since November 2007 and has extensively advertised and promoted it in Malaysia. It is also the appellant's contention that it is the common law owner of the mark "Squiggle" in Malaysia.

[6] The appellant further claimed that the effective date of the period of use of the respondent's registered trade mark by Gardenia Bakeries (KL) Sdn Bhd as the registered user under the TMA cannot be back-dated to a date prior to the date of its registration as registered user by the respondent.

The Case For The Respondent

[7] The respondent is a company listed on the Stock Exchange of Singapore. It is primarily in the food manufacturing and bakery industry. It owns 79% of one Gardenia Bakeries (K