Malaysia: High Court Held Cargill Incorporated’s Trade Mark Registrable

September 26th, 2013

 

In the case of Cargill Incorporated v Registrar of Trade Marks, the High Court of Malaya in Kuala Lumpur adjudged Cargill Incorporated’s trade mark to be registrable under Section 10(1) of the Trade Marks Act.

Cargill Incorporated (hereinafter referred to as “the Plaintiff”) applied to the Registrar of Trade Marks to register the trade mark “Poultry Focus” claiming non-medicated animal feeds (hereinafter referred to as “the Plaintiff’s Application”). Registrar of Trade Marks (hereinafter referred to as “the Defendant”) rejected the Plaintiff’s Application under Sections 10 (1) (c), (d) and (e) of the Trade Marks Act. The Plaintiff responded to the Defendant’s objections stating that the objections were without merits; however, after hearing the Plaintiff’s objections, the Defendant refused the registration of the Plaintiff’s Application. The Plaintiff, then, contested the Defendant’s refusal in the High Court of Malaya.

The High Court stated that in order for a mark to be registrable under Section 10(1), only one condition out of the Sections 10 (1) (c), (d) and (e) needed to be satisfied; and thus set out to consider whether the mark “Poultry Focus” can be registrable under each of these sections.

Section 10(1)(c) states that a trade mark can be registrable if it contains an invented word or words. The Plaintiff contested that the mark “Poultry Focus” was an invented word as its meaning was not obvious and did not deprive members of the trade from using it to describe the character or quality of the goods. The Plaintiff further stated that whilst the words “Poultry” and “Focus” were common English words, they were nevertheless an invented word when combined together as the combination did not convey an obvious meaning.

The Defendant counter argued that the words “Poultry Focus” when read together as a whole would be understood and perceived as focusing on poultry. The Defendant asserted that due to the laudatory nature of the word “Focus”, it emphasized the meaning of the word “Poultry” instead of deriving a new or different meaning.

The High Court rejected the Defendant’s assertion stating that while the combination of the words “Poultry” and “Focus” may allude to the product sold by the Plaintiff, these words together cannot per se be said to describe the Plaintiff’s product as the word “Focus” had no real connection with the product. The High Court also noted that the Defendant conceded that this combination of words did not exist in the English language and therefore would not deprive any members of the trade from using it to describe the character or quality of goods. Further, the High Court rejected the Defendant’s notion that this combination was not inventive as the Defendant had already registered the Plaintiff’s other trade marks “Pork Focus” and “Aqua Focus” in Malaysia.

Section 10(1)(d) states that a trade mark can be registrable if it contains a word having no direct reference to the character or quality of goods. The Plaintiff submitted that the word “Poultry Focus” when read together, was not, according to its original meaning, a geographical name or surname and it did not convey that the Plaintiff’s product was nutritional, of good quality, or had greater advantages and benefits compared to other similar products. The High Court sided with the Plaintiff stating that even if the trade mark “Poultry Focus” did somewhat refer to the character or quality of the goods, such reference was an indirect one. Further, reiterating the fact that the Defendant had already registered the Plaintiff’s other trade marks “Pork Focus” and “Aqua Focus”, the High Court adjudged the mark “Poultry Focus” to be registrable under section 10(1)(d).

Section 10(1)(e) states that a trade mark can be registrable if it contains any distinctive mark which is capable of distinguishing goods or services with which the proprietor of the trade mark is connected. The Plaintiff asserted that the mark “Poultry Focus” was distinctive as it was likely to become distinctive of the goods of the Plaintiff. The Plaintiff further asserted that the combination of the words “Poultry” and “Focus” was an unusual juxtaposition syntactically and was not a familiar expression in the English language. The Defendant argued that the mark “Poultry Focus” was highly descriptive of the goods and was prone to be used by other traders in the poultry industry. The Defendant further submitted that the words “Poultry” and “Focus” were descriptive and could not be distinctive unless such words had acquired a secondary meaning. The High Court sided with the Plaintiff stating that the Defendant had failed to make a distinction between the common use of the word “Poultry” as against the juxtaposition of the words “Poultry Focus”. The High Court also rejected the Defendant’s contention that the mark “Poultry Focus” could not function as a trade mark and was thus not distinctive as when compared to the words “Cargill Animal Nutrition” on the Plaintiff’s packaging. The Plaintiff’s stated that the mark “Poultry Focus” on the packaging was in larger font than “Cargill Animal Nutrition” and that it was common for products to bear a house mark (i.e. “Cargill Animal Nutrition”) as well as another trade mark used specifically for a particular product (i.e. “Poultry Focus”). Lastly, the High Court stated that as the mark “Poultry Focus” had been found to be distinctive, there was no need for the Plaintiff to prove that there existed a secondary meaning to the mark “Poultry Focus”.

On the above grounds, the High Court held that the mark “Poultry Focus” was registrable under section 10(1)(c), (d) and (e) of the Trade Marks Act.