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3rd April, 2015

In the case of Solid Corporation Sdn Bhd v Registrar of Trade Marks Malaysia & Yuen Sun Rubber Manufacturing Co. Sdn Bhd, the High Court of Kuala Lumpur held that Yuen Sun Rubber Manufacturing Co. Sdn Bhd’s trade mark is confusing or deception to the public under Section 14(1)(a) and 19(1) of the Trade Marks Act 1976.

Solid Corporation Sdn. Bhd. (hereinafter referred as “Plaintiff”) involved in the business and distribution of spare parts and parts for use in vehicles since 1992.

The Registrar of Trademarks (hereinafter referred as “1st Defendant”) allowed the registration trade mark application No. 96000854 in class 12 to be filed by Yuen Sun Rubber Manufacturing Co. Sdn Bhd (hereinafter referred as “2nd Defendant”).

Plaintiff has used the trade mark word “HANSA” in Malaysia since 1992.  The Plaintiff’s trade mark  hansa01  has been registered in Malaysia in various classes of goods i.e. claiming spare parts for car/vehicle.

The 2nd defendant filed a trade mark application for the mark hansa02 in Class 12 claiming “inner tubes for motorcycle, motor car, light truck, lorry, bus, forklift and tractor curing tubes. The 2nd Defendant’s trade mark application was subsequently accepted and was published by the 1st Defendant for opposition proceedings.

Plaintiff filed a Notice of Opposition against the 2nd Defendant’s trade mark application. In response to the Notice of Opposition, the 2nd Defendant filed a counter-statement rebutting the allegations made by the Plaintiff in their Notice of Opposition.

The 1st Defendant had reviewed all evidence put forth by both parties and dismissed the opposition made by the Plaintiff and allowed the 2nd Defendant’s trade mark application to be to registered.

The Plaintiff appealed the decision made by the 1st Defendant in the High Court based on four grounds in section 14(1) (a), (19) (b), 25, 10(1) (e) of the Trade Marks Act 1976. The Plaintiff argued that the 2nd Defendant’s mark hansa02 is confusingly similar to the Plaintiff’s trade mark and it can be used to confuse and deceive the public.

The Plaintiff also argued that the 2nd Defendant’s trade mark application “HANSA” has phonetical and visual similarities with the Plaintiff’s trade mark. The Plaintiff has based their arguments on the House of Lord decision whereby it was held that “by the pronunciation of the two words themselves in a formal or fair manner was likely to deceive or cause confusion”.

The Plaintiff argued that the goods claimed by the parties are irrelevant and not considered under section 14(1) of the Act.

The Plaintiff had also submitted evidence that their trade mark hansa01 has existed four years before the date of first use of the 2nd Defendant’s trade mark and the trade mark hansa01 has been in use consistently since 1992.

The plaintiff’s also argued that the goods are closely related to 2nd defendant’s trade mark application relating to the description of goods. The court considered the classification of goods claimed by both parties are similar i.e. goods for vehicles by land, air or water.

The High Court having considered the submission by both parties held that both Plaintiff and 2nd Defendant’s marks are phonetically and visually similar and therefore it cause confusion to the public and held that the 1st Defendant had failed to apply a proper test in determining the registrability of the 2nd Defendant’s mark. The Court ordered that the 2nd Defendant’s mark to be expunged from the Register of Trade Marks..