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6th September, 2016

Previously, the Intellectual Property Corporation of Malaysia (MyIPO) has rejected a trade mark application by Kraft Foods Shweiz Holding GmbH. The trade mark is:

The decision was based on the reasons that the trade mark did not fulfil the requirements of Section 10(1)(d) and (e) of the Trade Mark Act 1976 and that the trade mark did not fall within the definition of Section 3(1) of the Act.

Kraft Foods Shweiz’s trade mark agents in Malaysia had attended an ex-parte hearing with the Registrar in order to overcome the objections. However, the Registrar has rejected the application even after the ex-parte hearing.

In view of the decision, Kraft Foods Shweiz (hereinafter referred to as “the Plaintiff”) had filed a case at the High Court of Malaya at Kuala Lumpur. There five issues that the Plaintiff wanted the Court to confirm.

The first issue was whether this originating summons (OS) is time-barred under Order 87 rule 3 of the Rules of Court 2012 (RC).

According to Order 87 Rule 3 of the Rules of Court, the Plaintiff’s appeal against the Registrar’s Refusal by way of an OS shall be brought within one calendar month from the date of the refusal, which was 27 July 2015. The Registrar had given a two-month extension of time until 27 October 2015 for the Plaintiff to file the OS which was called a Registrar’s Extension. The Judge has proceeded with the judgment on the assumption that the OS is not time-barred under Order 87 Rule 3 of the Rules of Court even though there was a time lapse between the application to appeal against the Registrar’s decision.
The second issue was whether Article 15(1) of the Agreement on Trade Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement) applies to the definitions of “mark” and “trade mark” in Section 3(1) of the Act.

The OS was filed for the Court to reverse the Registrar’s refusal to register the trade mark and so that the Registrar will register the trade mark. The Plaintiff argued that the device being applied for trade mark falls under the definition of “mark”, citing case laws and Registrar’s history of registering shape marks as a trade mark. Significantly, the Plaintiff cited the case of Re Coca Cola Applications [1986] 2 All ER 274 (Coca Cola’s Case). Previously, the Registrar has cited this case to show that a bottle cannot be registered as a trade mark. However, in the OS, the Plaintiff had said that the case could not be applied anymore as the bottle is currently registered as a trade mark.

The Plaintiff put forward that Malaysia is a member of the TRIPS Agreement. Hence, the Plaintiff has relied on the definition of “mark” in the Agreement which is “sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trade mark”.

However, the Court has rejected the argument put forward by the Plaintiff. The Court reaffirmed the decision made by the Registrar that said mark could not fall under the Act as it is merely a shape. Furthermore, the Court held that the TRIPS Agreement could not be referred to unless it can be shown that the Agreement has been legislated by Malaysian Parliament as part of the municipal law. Example of clauses that can be taken into consideration are the Paris Convention for the Protection of Industrial Property of 20 March 1883 and revised at Stockholm on 14 July 1967 (Paris Convention) and TRIPS Agreement into the Malaysian law that was incorporated in Section 14(2) of the Act (which provides that Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement shall apply for the purpose of determining whether a trade mark is a well-known trade mark or otherwise). In this case, the Plaintiff relied on the provision in the TRIPS Agreement that was had no reference to the TRIPS Agreement and cannot be made in determining whether the definitions of “mark” and “trade mark” in the Act includes three-dimensional (3D) marks or otherwise.

The third issue was whether a three-dimensional (3D) prism mark or a “shape” mark is a “mark” and “trade mark” in Section 3(1) of the Act.

The question whether the definition of “mark” under Section 3(1) of the Act includes a 3D shape is a constructive issue that the Court held was not yet discussed in any case laws. The Court followed the application of UK case law Smith Kline and French Laboratories Ltd that defined that a 3D representation can fall under the definition of mark in Section 3(1) of the Act.

The fourth issue was whether the Court can refer to the Registrar’s “Manual of Trade Marks Law & Practice”, Second Edition (2003) (Registrar’s Manual) in construing the meaning of “mark” and “trade mark” in Section 3(1) of the Act.
The distinction of “mark” and “trade mark” was noted by the Court. The Court held that the Plaintiff’s trade mark is not a trade mark because there is nothing in the Plaintiff’s trade mark which would indicate a connection in the course of trade between the Plaintiff’s goods and the Plaintiff. Accordingly, the Court held that the OS should be dismissed with costs on this ground alone.

The fifth issue was whether a 3D mark of the Plaintiff is distinctive of the Plaintiff’s goods within the meaning of Sections 10(1)(e), (2A) and (2B) of the Act so as to be registrable under the Act.

The Court held that the Registrar was correct in deciding that Sections 10(1)(a) to (d) of the Act were not applicable to the Plaintiff’s situation. Hence, the Plaintiff must prove that the mark is registrable under Section 10(1)(e) of the Act. The Court held that the Plaintiff’s trade mark did not possess any feature which was capable of distinguishing the Plaintiff’s goods in the course of trade from the goods of other traders. Hence, the Plaintiff was held to fail in proving either inherent distinctiveness or factual distinctiveness and therefore did not satisfy the requirements of Section 10(1)(e) of the Act.

In conclusion, the Court upheld all the decisions decided by the Registrar, and maintained the rejection for the Plaintiff’s application in registering the trade mark.