JUDGMENT

Low Hop Bing J:

Appeal

[1] After hearing nine witnesses and submissions, the learned judge of the Kuala Lumpur High Court had on 10 September 2004 found for the plaintiff and ordered the defendant to pay damages in the sum of RM4,831,450 with interest and costs, and dismissed the defendant's counterclaim with costs.

[2] The defendant has appealed against the whole of the aforesaid decision.

[3] On 8 January 2007, after hearing submissions, we had unanimously dismissed the defendant's appeal. We now give our grounds of judgment.

[4] The parties are referred to in the same capacities as in the High Court.

Plaintiff's Claim

[5] The plaintiff instituted a claim against the defendant for infringement of the plaintiff's trade marks which were registered as "PINHOLE", "SAKURA" and 'FISSURED" (collectively, "the registered trade marks") and also a claim in common law for the tort of passing off of the trade mark known as "LEOPARD" (collectively, all these four trade marks are referred to as "the four trade marks").

[6] The four trade marks were used in and for the plaintiff's products commonly referred to as Gypsum Ceiling Boards ("GCB").

Defence And Counterclaim

[7] The defendant's defence is that the four trade marks are not capable of registration but were mere descriptions of the design on GCB and that the words registered as trade marks are not inventive words, but common to the trade in describing GCB.

[8] The defendant had also counterclaimed for rectification and expungement of the registered trade marks.

Finding Of Facts

[9] The essential facts as found by the trial Court may be narrated as follows:

(1) The plaintiff was and is the registered owner of the registered trade marks. The registered trade marks after expiry were renewed for a further period of 14 years (PINHOLE on 12 October 2001, FISSURED on 12 October 2001 and SAKURA on 20 September 2003).

(2) The plaintiff had manufactured and marketed GCB under the registered trade marks from 1986 and had more than 200 customers.

(3) From July 1980 to the end of 1990, the defendant was a supplier of raw materials in the form of gypsum boards to the plaintiff.

(4) The defendant had not lodged any complaint or objection against the plaintiff's application for registration of the registered trade marks or instituted any proceedings against the Registrar of Trade Marks either for rectification, expungement or subsequent renewal of the registered trade marks.

(5) The defendant had used the plaintiff's registered trade marks on its products from early 1991 until 1994 when, through the plaintiff's erstwhile solicitors, two cease and desist letters respectively dated 6 December 1994 and 12 December 1994 were issued whereby the defendant ceased to use the plaintiff's registered trade marks.

(6) The defendant had not filed any application to register the trade marks.

(7) The first time that the defendant raised an objection to the registrability and validity of the registered trade marks was in the counterclaim which, contrary to O. 87 rr. 7 and 9 of the Rules of the High 1980 (O. 87 rr. 7 and 9) , had never been served on the Registrar of Trade Marks.

(8) The defendant's yearly sales from 1991 until 1994 of its products bearing the four trade marks was RM14,866,000.

(9) The plaintiff's profit margin on the sale of its GCB products bearing the four trade marks was 30% to 35%.

(10) The trade mark "LEOPARD" belongs to the plaintiff.

[10] Other facts which are relevant to this appeal will be narrated later in this judgment.

Registrability Of Trade Marks

[11] It was contended by learned counsel Mr. SF Wong (Mr. R Mohana Krishnan with him) that the plaintiff's registered trade marks are incapable of being registered under the Trade Marks Act 1976.

[12] Plaintiff's learned counsel Mr Shahul Hamid Amiruddin submitted that plaintiff's registered trade marks are distinctive, invented words which have been duly registered by the Registrar of Trade Marks and the defendant had never raised any objection thereto, exce