JUDGMENT

Badariah Sahamid JCA:

Introduction

[1] This is an appeal against the decision of the learned Judicial Commissioner (JC) dated 4 May 2016, who ordered the defendants SRAM Marks under Registration Nos 05016151, 07017014, 09012790 and 09003528 in Class 12 (defendants SRAM Marks) to be expunged and removed from the Register.

[2] For ease of reference, parties will be referred to as they were in proceedings before the High Court.

Salient Facts

[3] The plaintiff, Huan Schen Sdn Bhd is a local company which was incorporated in 1995. The plaintiff has been in the business of distribution and selling of bicycles, bicycle parts and accessories.

[4] The defendant, SRAM LLC a company incorporated in the United States of America (USA) in 1987, manufactures bicycles and bicycle parts and accessories under the trade marks, "SRAM", "SRAM RIVAL" and their variations.

[5] It was not disputed that the trade mark "SRAM" was created by the defendant in the United States in 1987. The trade mark "SRAM" was created from the acronym of the three founders of the company: Scott, Ray and Sam.

[6] It was averred in the defendants affidavit that the defendants Goods and the defendants five Trade Marks had been featured in international events, including the Seoul Summer Olympic Games in 1988, the Atlanta Summer Olympic Games in 1996 and the Sydney Summer Olympic Games in 2000. The abovementioned Olympic Games were telecasted globally and broadcasted in Malaysia via local television channels like Radio Television Malaysia, Sistem Televisyen Malaysia Bhd and Astro.

[7] On 26 December 2003, the plaintiff had applied for registration of the plaintiffs Trade Mark for goods in Class 12 (bicycles, bicycle parts and accessories). The defendant had opposed the plaintiffs application on the grounds that the plaintiffs Trade Mark was deceptively similar to the defendants "SRAM" Marks and was likely to confuse the public.

[8] The Registrar had dismissed the defendants opposition inter alia on the grounds that:

(i) the defendant had failed to establish the use of its trade marks in Malaysia before 26 December 2003 (the date of the plaintiffs application);

(ii) the plaintiff was the first user of the plaintiffs Trade Mark in Malaysia; and

(iii) the plaintiffs Trade Mark is distinctive of the plaintiffs goods under s 10 of the Trade Marks Act 1976 (TMA).

[9] Consequent to the Registrars dismissal of the defendants opposition, the plaintiffs Trade Mark was registered with effect from 26 December 2003. On 6 January 2016, the registration of the plaintiffs Trade Mark was renewed for 10 years up to 26 December 2023.

[10] The defendant filed an appeal against the decision of the Registrar on 22 October 2015, but made an application to discontinue the appeal. The defendants appeal was struck out with costs of RM10,000.00 to the plaintiff.

[11] By December 2015, the Registrar had registered all five Trade Marks carrying the trade name "SRAM" for Class 12 goods. Four of them were in the name of the defendant and one in the name of the plaintiff. The defendant had unsuccessfully opposed the registration of the plaintiffs mark. However, the plaintiff did not oppose the registration of the defendants marks.

[12] On 30 December 2015, the plaintiff filed an originating summons (OS) under s 45(1)(a) of TMA to expunge five Trade Marks (defendants 5 Trade Marks) registered in the Register of Trade Marks in the name of the defendant. The plaintiffs OS, among others, sought the following prayers:

(1) a declaration that the following the defendants 5 Trade Marks are entries made without sufficient cause, wrongfully made and/ or wrongfully remaining in the Register:

(a) stylish verbal mark "SRAM RIVAL" registered on 27 September 2005 with the registration no. 05016151 for goods in Class 12;

(b) stylish verbal mark "SRAM VIA registered on 5 March 2009 with the registration no. 09003528 for goods in Class 12;

(c) stylish verbal mark "SRAM APEX" registered on 30 July 2009 with the registration no. 09012790