JUDGMENT

Wong Kian Kheong JC:

A. Introduction

[1] The plaintiff company (plaintiff) is an international fashion house renowned for its high-end fashion goods under the brand "Louis Vuitton".

[2] The defendant company (defendant) is incorporated in Japan and has no business or office in Malaysia.

[3] The defendant had applied to the Registrar of Trade Marks (Registrar) to register a combination mark "ZEPHYR" (ZEPHYR Mark) for goods in class no 25 (defendant's Application). In the defendant's Application, the defendant had given to the Registrar the following addresses:-

(1) the defendant's address in Japan, 8 August 20, Nishi-Gotanda, Shinagawa-ku, Tokyo, Japan (Japanese Address); and

(2) an address of service at Drewmarks Patents & Designs (Malaysia) Sdn Bhd, 9th floor, Bangunan Getah Asli, 148, Jalan Ampang, 50450 Kuala Lumpur (defendant's Address With Registrar).

[4] The Registrar had allowed the defendant's Application and consequently, ZEPHYR Mark with trade mark registration no 95010243 had been registered in the defendant's favour in the Register of Trade Marks (Register) with effect from 28 September 1995 (defendant's Registered Trade Mark).

[5] In this OS, the plaintiff applies to court to expunge the defendant's Registered Trade Mark from the Register under s 46(1)(b) TMA on the ground that the defendant has not used the defendant's Registered Trade Mark in good faith. Initially, the OS was only served on the defendant's Address With Registrar

B. Sole Issue

[6] The only question raised in this case is whether by reason of s 79 of the Trade Marks Act 1976 (TMA) read with reg 10 of the Trade Marks Regulations 1997 (TMR), the OS may be lawfully served by the plaintiff only on the defendant's Address With Registrar If the answer to this issue is "yes", the plaintiff need not apply for leave of this court to serve the OS on the defendant out of jurisdiction of Malaysian courts as required by .

C. Relevant Provisions

[7] Section 79 TMA, regs 4, 9, 10 TMR, O 1 r 2(2), O 11 r 9 and O 62 r 4 ROC are reproduced below:-

"Section 79 TMA Address for service

(1) Where an applicant for the registration of a trade mark does not reside or carry on business in Malaysia, he shall give to the Registrar an address for service in Malaysia which shall be the address of his agent, and if he fails to do so, the Registrar may refuse to proceed with the application.

(2) An address for service stated in the application or a notice of opposition shall, for the purposes of the application or notice of opposition, be deemed to be the address of the applicant or opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at, or sending them by post to, the address for service of the applicant or opponent, as the case may be.

(3) An address for service may be changed by notice in writing to the Registrar

(4) Subject to subsection (1), the registered proprietor of a trade mark shall from time to time notify the Registrar in writing of any change in the Register and the Registrar shall alter the Register accordingly.

(5) The address of the registered proprietor of a trade mark as appearing for the time being in the Register shall for all purposes under this Act be deemed to be the address of the registered proprietor

reg 4 Forms

(1) The forms referred to in these Regulations are those contained in the Second Schedule.

(2) The forms shall be used in all cases in which they are applicable.

reg 9 Address

Where any person is, by the Act or these Regulations, bound to furnish the Registrar with an address, the address given shall in all cases be as full as possible for the purpose of enabling the place of trade or business of such person to be found easily.

reg 10 TMR Address for service

(1) An applicant, opponent, registered proprietor or registered user of a trade mark who does not reside or carry on business in Malaysia shall file Form TM1 giving an address for service in Malaysia and such address may be tre