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29th May, 2015

Recently, the Federal Court of Malaysia took the opportunity to clarify the scope and functions of the Registrar of Trade Marks. Ho Tack Sien & Others v Rotta Research Laboratorium S.p.A & Anor and Rotta Research Laboratorium S.p.A & Anor v Ho Tack Sien & Others are two civil appeals heard jointly by the Federal Court.

We shall refer to the parties as they were before the High Court. By way of background, the first Plaintiff (Rotta Research) is a company incorporated in Italy and manufactured a glucosamine sulphate based drug call Viartril-S used to treat osteoarthritis. The first plaintiff duly registered the Viartril-S trade mark in Malaysia on 8 July 1976. The second plaintiff (Antah Pharma Sdn. Bhd.) is company incorporated in Malaysia and has been the distributor appointed by the first plaintiff for the sale of Viartril-S in Malaysia. The first defendant (Ho Tack Sien) is a pharmacist and was first appointed by the by Antar Radin Sdn. Bhd., a related company of the second plaintiff before he was dismissed for serious breaches of confidentiality of information and acting in conflict of interest of the second defendant. The second defendant (Chai Yuet Ying), the wife of the first defendant, is also a pharmacist and was engaged by the second plaintiff on 15 April 1998 on a part-time basis to provide independent consultancy services on the registration of the second plaintiff’s products with the Drug Control Authority (DCA). Her services were terminated on 21 May 2001. The third defendant (Advance Pharma Sdn. Bhd.) is company incorporated by the second defendant and the first defendant’s father. The third defendant is the distributor and seller of Atril-250 and is the registered owner of the Atril-250 which was registered on 10 September 2002. The fourth defendant (Hovid Sdn. Bhd.) was the appointed contract manufacturer of Atril-250. The fifth defendant (Schmidt Biomedtech Sdn. Bhd.) and the sixth defendant (AV Manufacturing Sdn. Bhd.) were and are the appointed manufacturers of Atril-250. The plaintiffs contended that all the defendants had infringed their intellectual property on Viartril-S and further alleged that fifth and sixth defendants manufactured, distributed, sold or offered to sell the product under the name of Atril-250 which is similar to and bears a colourable and deceptive imitation of the first plaintiff’s trade mark.

The questions of law posted before the Federal Court are as follows:

  1. Whether the evidence of the Registrar of Trade Marks (hereinafter be referred “the Registrar”) who had approved the registration of the defendant’s mark after the commencement of the plaintiff’s infringement suit is material in proving infringement.
  2. Whether it is a pre-requisite to name the Registrar of Trade Mark or the Intellectual Property Corporation of Malaysia (MyIPO) as a party in a Writ or Statement of Claim in an application to expunge or rectify the Register of Trade Marks (hereinafter be referred “the Register).
  3. If question 2 is answered in the affirmative, whether the several decisions by the High Court ordering to expunge or to rectify the Register without insisting the Registrar or MyIPO to be named a party in the suits are now bad in law.

The Court held that there is no necessary to bring in the Registrar as a party to the suit where there is no cause of action against the Registrar. It was the Defendants contention that the Registrar is entitled to be heard in any legal proceedings relating to trade marks registered on the Register pursuant to Section 62 of the Trade Marks Act 1976 and that the plaintiff’s failure to call the Registrar to give evidence during the trial was fatal to the plaintiff’s case. It was argued that the Registrar is a key witness in the instant case having regard to his decision to allow the registration of “Atril-250” as a trade mark after the commencement of the suit i.e. the Registrar is the key witness to establishing likelihood of confusion. The Court of Appeal has also decided that the Registrar should have been made a party or at the very least summoned to give evidence to the Court pursuant to Section 62. The Court, disagreed with the Court of Appeal’s decision and rejected the arguments put forward by the Defendants, held that there is no statutory provisions which require the Registrar to be made a party to a proceeding to rectify or expunge a mark under the Trade Marks Act 1976.  It was highlighted that Section 62(1) of the Act accords the right to the Court to call the Registrar if the Court so requires his assistance and further gives the Registrar a right to appear if he wishes to do so, referring to Ramly Ali J’s decision in the case of Godrej Sara Lee Ltd. v Siah Teong Teck & Anor (2007) 10 CLJ 255. The Court further commented that the decision of the Court of Appeal, to hold that the Registrar should be made a party or heard in evidence before a rectification be made, would place the Registrar in an invidious position of participating in the proceedings in favour of one side or the other, and would destroy the neutrality of his office.
The Court is also of the view that neither the Court nor the Registrar has the discretion to allow a mark that has been wrongfully registered to continue to remain on the Register. Although, a mark that is registered by the Registrar is prima facie a valid mark, the Court stated that it is a rebuttable presumption. Once the grounds for revocation or removal of a mark have been made out, the mark must be expunged from the Register. The registration is therefore not a defence in relation to marks that have been wrongfully entered on to the Register. The Court noted that the Court of Appeal has wrongly interpreted Section 40(1)(f) of the Trade Marks Act 1976 which states that:
 “Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of a trade mark –
(f) the use of a trade mark, which is one of two or more registered trade marks which are substantially identical, in exercise of the right to the use of that trade mark given by registration as provided by this Act.” [Emphasis added]

The Court held that the correct interpretation of Section 40(1)(f) is the Court of Appeal’s application in Sinma Medical Products (M) Sdn. Bhd. v Yomeishu Seizo Co. Ltd. & Ors. [2004] 3 CLJ 815 that held that Section 40(1)(f) did not afford a defence in relation to marks which were wrongfully entered on the Register. Furthermore, the Court adopted the approach of the learned author of Kerly’s Law of Trade Marks and Trade Names, whereby the learned author has stated that under section 4(4) of the English Trade Marks Act 1938 [which is substantially similar with section 40(1)(f) of the Act] only a valid registration gives rights under section 4(4). The subsection states “the right to the use of the defendant’s mark given by registration”. But it refers back to section 4(1) of the English Trade Marks Act 1938 which gives rights only to a valid mark. The learned author goes on to observe that if the defendant’s registration can be shown to be invalid and thus expunged it will not protect him in the future. Accordingly, if a defendant pleads a registered mark in defence, the plaintiff should apply for rectification of the Register by removing or limiting the defendant’s registration.

Furthermore, the Court stated that even if the Registrar gives evidence, the determination of whether there is likelihood of confusion still lies with the Court. The Court held that the question of whether there is a real likelihood of deception of the public is ultimately one for the Court to decide and cited the judgment by Lord Hodson in the case of Parker-Knoll Limited v Knoll International Limited [1962] RPC 265 (HC) at page 285 as follows:
“All relevant circumstances must be taken into account, and the question whether or not there is a real likelihood of deception of the public is ultimately for the court and not for the witnesses to decide: see Spalding & Bros. v. Gamage Ltd. (1915) 32 R.P.C. 286 per Lord Parker of Waddington: There may, of course, be cases of so doubtful a nature that a judge cannot properly come to a conclusion without evidence directed to the point; but there can be no doubt that in a passing-off action the question whether the matter complained of its calculated to deceive ,in other words, whether it amounts to a misrepresentation, is a matter for the judge, who looking at the documents and evidence before him, comes to his own conclusion, and to use the words of Lord Macnaghten in Payton & Co. Ltd. v. Snelling, Lampard & Co. Ltd. (1990) 17 R.P.C. 635, must not surrender his own independent judgment to any witness whatever.” [Emphasis added]

Therefore, it was concluded that the Registrar’s attendance in court is not necessary unless so ordered by the court.

Accordingly, the first and second questions were answered in the negative leaving the third question redundant.