MALAYSIA: APPEAL DISMISSED BY THE FEDERAL COURT

October 27th, 2015

 

In the case of Mesuma Sports Sdn. Bhd. v Majlis Sukan Negara Malaysia, the Federal Court in Malaysia dismissed the appeal with cost due the facts that Mesuma Sports was the first user of the tiger stripes.

Majlis Sukan Negara Malaysia (hereinafter referred as “the Respondent”) is a statutory body established under the provisions of the National Sports Council of Malaysia Act 1971 (Act 29). Its main responsibility is the promotion of sports in the country.

Mesuma Sports Sdn Bhd (hereinafter referred as “the Appellant”) is a private limited company and is in the business of supplying sporting apparels, equipment, accessories and sporting goods generally. It had been a contract supplier of the same to the Respondent since 1990.

In 2005, the Ministry of Youth and Sports (hereinafter referred as “the Ministry”) with the cooperation of the Respondent and a company known as 59icons Sdn Bhd organized a New Jersey Design Competition to design a new motif and colour for sports attire to be worn by all Malaysian athletes representing the country in sports events held within the country and internationally. The Ministry reserved its right to claim ownership of all drawings, artwork or concepts submitted by participants in the Competition and to use them for any purpose. The tiger stripes design was selected as the winning design of the Competition. After final selection, the Ministry on 14.11.2005 officially launched the said design. Subsequently, the Ministry entrusted the Respondent with all responsibilities over the rights, ownership and management of the tiger stripes design.

In 2005, all Malaysian athletes who took part in the SEA Games which held in Manila, Philippines wore the sports attire incorporating the tiger stripes design for the first time. The Respondent had appointed a manufacturer by the name of Antioni to produce and supply the sports attire bearing the tiger stripes design. Not long afterwards, the Appellant was appointed as contract supplier by the Respondent to produce sports attire bearing the tiger 5 stripes design to be worn by Malaysian athletes for the 2006 Asian Games in Doha.

Three years later (9.7.2009), the Appellant claiming to be the first user of the tiger stripes design as a trade mark in the course of trade applied for registration of the design under the Trade Marks Act 1976 (the Act), while it was still a supplier of sports goods to the Respondent. On 11.2.2011, the tiger stripes design was registered as a trade mark by the Registrar of Trade Marks in the name of the Appellant as the proprietor in the Register for a period of ten years from 9.7.2009 to 9.7.2019 in Class 18 and Class 25 under the Act and in respect of “sporting apparels, equipment and accessories and sports clothing” vide Trade Mark No. 09011365 and Trade Mark No. 09011366, respectively. The Appellant admitted that its registered trade mark was entirely adapted from the Respondent’s tiger stripes design.

On 15.1.2010, the Respondent filed for registration under the Act the same tiger stripes design as a trade mark. As it turned out, the Registrar of Trade Marks objected to the Respondent’s application on the ground that the Appellant had earlier claimed to be the first user of the tiger stripes design as a trade mark. The Respondent filed a suit against the Appellant and the Respondent’s trade mark applications remained pending at the time of commencement of the High Court.

The Respondent asserted the following causes of actions in the High Court:-

(i) common law traditional passing off;

(ii) registered design infringement;

(iii) copyright infringement; and

(iv) rectification of the Appellant’s registered trademarks No. 09011365 (Class 18) and No. 09011366 (Class 25) from the Register, which was premised on section 45(1)(a) and section 46(1) of the Act.

The High Court held that the Respondent was entitled to rightful proprietorship and use of the tiger stripes design as the Respondent together with the Ministry was the first conceiver and first user of the said design, and thereafter, since 2005, had earned substantial goodwill and reputation over the design which was distinctive to the Respondent and never of the Appellant in any manner whatsoever. The High Court also found that the Appellant’s registered trade mark had been wrongly entered or entered without sufficient cause and as a result should be expunged pursuant to section 45(1)(a) of the Act. Consequently, the Register of Trade Mark was rectified by the removal of Trade Mark No. 09011365 (Class 18) and No. 09011366 (Class 25) registered in the name of the Appellant.

The Appellant had then filed an appeal against the High Court’s decision at the Court of Appeals.

The Court of Appeal observed that whilst the Respondent had expended time, effort and expense to develop the tiger stripes design, the Appellant had hardly expended any bona fide effort to design it, as the Appellant merely copied the design of the Respondent. Indeed, there was no material difference or distinction 6 between the Respondent’s tiger stripes design and the Appellant’s trade mark. They were just about identical, as the Appellant had copied the tiger stripes design of the Respondent.

The Court of Appeal held that the Appellant’s registration of the tiger stripes design as its trade mark was wrongfully made without sufficient cause and wrongfully remained on the Trade Mark

Register pursuant to section 45(1)(a) of the Act and that the application was filed in bad faith pursuant to section 46(1)(a) of the Act. The Court of Appeal also held that the Respondent was the first user of the tiger stripes design in the course of trade.

The Appellant filed an appeal at the Federal Court. The appeal to this court only relates to the Respondent’s application in the High Court to expunge the Appellant’s registered trade mark.

The Federal Court held that the Respondent was in fact and in law the first user of the tiger stripes design since 2005. At all material times, the contractual position of the Appellant was that of a supplier to the Respondent through the Appellant’s appointment to manufacture and produce the tiger stripes design trade mark over sports attire ordered by the Respondent. As a matter of fact, the Respondent was directly involved in business activity for commercialization of the tiger stripes design through its contract suppliers. The Federal Court also held that the Appellant was only appointed as a contract supplier for the Respondent, therefore the Appellant could not claim proprietorship of the tiger stripes design.

The Federal Court dismissed the appeal with cost.