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1st December, 2014

In the case of MP Machinery (M) Sdn. Bhd. v Chongqing Rato Power Co. Ltd., the Intellectual Property Corporation of Malaysia (MyIPO) dismissed the opposition filed by Chongqing Rato Power Co. Ltd. even though Chongqing Rato Power Co. Ltd. has registered similar trade marks in other countries.

M P Machinery (M) Sdn. Bhd, (hereinafter referred as “the Applicant”) had applied to register a word mark “RATO” in Class 7 in Malaysia claims goods of engine, generator , water pump, (diesel & petrol), agricultural machinery and welding machine (hereinafter referred to as the “Opposed Trade Mark Application”) . The Opposed Trade Mark Application was subsequently accepted by MyIPO and was published for opposition proceedings.

Chongqing Rato Power Co. Ltd. (hereinafter referred as “the Opponent”) had filed an opposition against the Trade Mark Application. In the Notice of Opposition, the Opponent had indicated that it is the proprietor of the two trade marks for goods in Classes 7 and 9 for the mark “RATO” (hereinafter referred to as “the Opponent’s Trade Marks”) and the Opponent’s Trade Marks have been registered in China, United States of America, Portugal, Japan, Switzerland, Turkey and Korea.

Based on the Notice of Opposition, it is noted that the Applicant had previously purchased the Opponent’s goods and sold them to its customers in Malaysia. However, it is also noted that the Applicant had also purchased similar goods from other suppliers and assembled the goods in their factory in Malaysia before the goods are sold to its customers.

The Opponent argued that the Opposed Trade Mark is identical and/or substantially similar and/or resembles to the marks that the Opponent has been using in the countries that it sells its products and therefore if the Opposed Trade Mark is registered, it may create confusion in the market with regards to the source of the goods and the customers may be confused to believe that the Applicant’s goods originate from the Opponent when it is not the case. The Opponent also pointed out that passing off can create damages to the Opponent’s goodwill and reputation.
The Opponent also argued that the Opposed Trade Mark is not distinctive and there is no mean to distinguish the Applicant’s goods that Applicant is claiming to be the owner of the Opposed Mark.

Meanwhile, Applicant argued that it was the first party to actually use the mark “RATO” in Malaysia and it has spent money and time in promoting the mark. Applicant argued that the Opposed Trade Mark is distinctive from the Applicant. It also argued that since the Opponent did not register Opponent’s Trade Marks in Malaysia, it cannot deny the Applicant the chance of registering the Opposed Mark in Malaysia.

The MyIPO held, by dismissing the opposition considering the first ‘use’ of the said Opposed Mark. The MyIPO took the view that the Applicant submitted significant amount of evidence of use to use the use of the Opposed Mark in Malaysia but the Opponent has only produced a few invoices confirming the sale of its goods to the Applicant.

Moreover, the MyIPO also held that the Opponent’s Trade Marks are not well-known marks just because the Opponent’s Trade Marks were registered in other countries and therefore the Opponent cannot rely on this ground in opposing the Opposed Trade Mark.