Lee Hun Hoe CJ (Borneo)

(delivering the judgment of the Court): This appeal is against the refusal of the learned judge to discharge an order made by him earlier in respect of certain trade mark.

On January 22, 1976 respondents registered in Sabah the trade mark of "Golden Dragon" consisting of the device of a golden coloured dragon enclosed in a circle in respect of edible oil under the Sabah Trade Marks Ordinance (Cap. 142). The trade mark number is 19862 in Class 29. A certificate of the said registration was issued by the Registrar of Trade Marks, Sabah. In addition to the above trade mark respondents are also the registered proprietors in Sabah since 1973 of the "Double Dragon" trade mark No. 16293 and the "Double Phoenix" trade mark No. 16493 each of which also consists of the device of a dragon as a distinctive feature. In 1978 certain cooking oils not of respondents' manufacture and bearing identical trade mark of the "Golden Dragon" were sold in Sabah. It should be pointed out that the trade marks were only identical in the sense that the device of a dragon was used in each case but the design was dissimilar. So, by a notice of motion dated June 13, 1979 respondents applied ex parte for an order pursuant to section 16 of the Trade Descriptions Act, 1972 that the said trade mark of the "Golden Dragon" used in relation to edible oils and in particular to cooking oil not manufactured by or distributed by respondents shall be deemed for the purposes of the said Act to be a false trade description. On July 31, 1979 the learned judge made order in terms.

Subsequently, by a notice of motion dated November 8, 1979 appellants who claimed to have a proprietary interest in the trade mark of the "Golden Dragon" sought to discharge the order dated July 31, 1979. Appellants are a large and established manufacturer of palm and other edible oils. Some time in 1975 they decided to manufacture cooking oils for sale in the South East Asian market. As a result of this decision they created a number of trade marks to be used for the sale of the cooking oils. One of these marks was the "Golden Dragon". At the material time a Bill was laid before Parliament to repeal the trade mark laws of Semenanjung Malaysia, Sabah and Sarawak and replacing them with a Trade Marks Act applicable throughout Malaysia. Although the Trade Marks Act, 1976 had received the Royal Assent on June 21, 1976 it has yet to come into operation. Appellants claimed to have started selling cooking oil in Malaysia under the "Golden Dragon" trade mark on January 5, 1976. The manager of appellant firm, Mr. Khoo Chooi Leong affirmed in his affidavit that he was advised, apparently wrongly, by one Mr. Kanagaratnam against making three separate applications as the Bill was expected to be passed soon and there would be a central Registry for Semenanjung Malaysia, Sabah and Sarawak.

Following this advice appellants applied for registration of the "Golden Dragon" trade mark in Semenanjung Malaysia, Brunei and Hongkong but not Sabah and Sarawak. Appellants applied for registration of the said mark in Semenanjung Malaysia on September 13, 1975. In his supplementary affidavit Khoo Chooi Leong stated that the application had in fact been approved by the Registrar of Trade Marks and had been gazetted in the Government Gazette on March 31, 1977. Subsequently, upon advertisement of the said mark respondents raised objection so the said mark had not been registered in Semenanjung Malaysia.

Respondents took the trouble to have their trade marks registered in Sabah as early as 1973 and the "Golden Dragon" was registered on January 22, 1976. The reasons given by appellants for failing to seek registration in Sabah of the "Golden Dragon" trade mark are immaterial and irrelevant to the question before the court, that is, whether the order made on July 31, 1979 should be discharged or not. Appellants must show their proprietary interest in the trade mark in Sabah. Respondents alleged that appel