MALAYSIA: PARLIAMENT V PARLIAMENT

September 1st, 2015

 

In the case of Philip Morris Brands SARL v Rothmans Brands Sdn. Bhd., the Malaysian High Court allowed the Plaintiff’s claims for non – use of the ‘Parliament’ trade mark by the Defendant.

Philip Morris Brands SARL (hereinafter referred as “the Plaintiff”) is a company incorporated in Switzerland and is part of the Philip Morris International Inc. Group of Companies (‘the PMI Group’). The Plaintiff manufactures, distributes, offers for sale and sells tobacco products and smokers articles, including cigarettes under various brand names, including its leading brand, Marlboro and PARLIAMENT. The PMI Group claimed to be the leading international tobacco company with products sold in more than 180 countries. In 1931, the Plaintiff’s “PARLIAMENT” trade mark was introduced in the USA by its predecessor in business, Benson & Hedges Co., and was subsequently launched in other markets. The tobacco products bearing the trade mark “PARLIAMENT” have been sold in numerous countries around the world, except Malaysia.

Rothmans Brands Sdn. Bhd. (hereinafter referred as “the Defendant”) is a company incorporated in Malaysia on 21.11.1985 as a trade marks holding company. It is a wholly-owned subsidiary of British American Tobacco (Malaysia) Berhad (“BAT Malaysia”). BAT Malaysia is part of the BAT plc group of companies (“BAT Group”). The BAT Group is principally engaged in the manufacture and sale of tobacco products, and claimed to be the world’s second largest independent tobacco products manufacturer. They are selling over 300 brands in 180 countries. In Malaysia, BAT Malaysia supplies its tobacco products through its wholly-owned subsidiary, Commercial Marketers and Distributors Sdn Bhd.

The Defendant is the registered proprietor of the following “PARLIAMENT” trade marks in Malaysia for goods such as tobacco and tobacco products, cigarettes, cigars, smokers’ articles, matches and etc.:-

Trade Mark Registration No.Trade Mark
R/001430PARLIAMENT
R/017461PARLIAMENT
S/022275PARLIAMENT
M/077086PARLIAMENT
92002485p01
06023526 p02
07023349 p03

 

The cigarettes bearing the word “PARLIAMENT” (“PARLIAMENT Cigarettes”) were first introduced by BAT Malaysia into the Malaysian market through a launch sometime in January 2008 in Bidor and Slim River, Perak. Defendant claimed that the purpose of this market launch in 2008 was to test the response and acceptance of adult smokers to the “PARLIAMENT Cigarettes” at a price range of the said RM6.70 in Malaysia. However, after the launch of the “PARLIAMENT Cigarettes” in 2008 and upon the results of the launch, the Defendant has made a commercial decision to temporarily stop the sale of “PARLIAMENT Cigarettes” for the time being and instead review and revise their launch strategy in order to ensure the commercial success of their product. Hence the Defendant has since been studying and collating information in order to come up with a revised launch strategy.

 

The Plaintiff filed a suit on 9.4.2014 to expunge and remove the Defendant’s trade marks ”PARLIAMENT” from the Register of Trade Marks pursuant to section 46(1)(b) of the TMA 1976 for non use of trade mark.

In order to file a suit for non-use under Section 46, the Plaintiff must prove and established 2 grounds, namely:-

  • that the Plaintiff is an aggrieved person; and
  • that there has been non-use by the Defendant of its trade mark “PARLIAMENT” for a continuous period of 3 years up to one month before the application to cancel the trade mark, that is, for the period 9.3.2011 to 9.3.2014.

For the first ground, the court held that the Plaintiff’s is an aggrieved party as the Plaintiff has a genuine and present intention to use its trade mark ‘Parliament’ in Malaysia. The court also held that the Plaintiff has been using its trade mark ‘Parliament’ in many jurisdictions with the intention of expanding its business in Malaysia under the said mark. The Plaintiff has filed an application to register its trade mark ‘Parliament’ in Malaysia on 5.3.2007. All these clearly show the commercial intention of the Plaintiff to expand the use of its trade mark ‘Parliament’ into the Malaysian market. However, the Defendant contended that since the Plaintiff had first applied to register its trade mark bearing the word “PARLIAMENT” on 5.3.2007 in Malaysia, therefore the bona fide intention is to be assessed as at 5.3.2007 i.e., at the date of the filing of the application of the Plaintiff’s trade mark applications, and not 7 years later i.e. 9.3.2014 when the Plaintiff filed this application.

The Defendant alleged that the Plaintiff does not possess a genuine and present intention to use the “PARLIAMENT” trade mark in Malaysia.

For the second ground, the Originating Summons was filed on 9.3.2014 by the Plaintiff for non-use by the Defendant of its trade mark “PARLIAMENT” for a continuous period of 3 years up to one month. The relevant period for consideration is between 9.3.2011 to 9.3.2014.

The Plaintiff relied on two (2) reports to establish a case of non – use by the Defendant. The two reports are dated 5.12.2013 and 7.4.2014 prepared by a firm of investigators. From the reports, there was no reference to the brand ‘Parliament’ in the annual returns of BAT Malaysia for 2001 to 2012; there was no reference to ‘Parliament’ on the price list of its products; there was no reference to ‘Parliament’ in BAT Malaysia’s brands and new product development list in 2013; there was no listing for ‘Parliament of the contents of ‘bat-ingredients.com; leading Duty free operators had confirmed that the Defendant’s ‘Parliament’ brand tobacco products had not been sold via duty free; from a search of product and image databases for Malaysia in respect of tobacco products, it also confirmed that ‘Parliament’ products are not on sale in Malaysia; from enquiries with BAT Malaysia in South East Asia, it also disclosed that there had been no use or commercialization of ‘Parliament’ as a brand on BAT products sold in South East Asia.

The only evidence relied by the Defendant to establish the use of its trade mark ‘Parliament’ is the launch of cigarettes bearing the trademark ‘Parliament’ in Bidor and Slim River in January 2008.

From the report, the court held that the Plaintiff has establish a case of non – use of the ‘Parliament’ trade mark by the Defendant in Malaysia.

Court found that the Defendant has failed to show any evidence of use of its trade mark ‘Parliament’ within the statutory period. As such, the Court allowed the Plaintiff’s claims with costs.