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26th September, 2014

In the case of Mesuma Sports Sdn. Bhd. v Majlis Sukan Negara Malaysia, the Court of Appeals in Malaysia dismissed the appeal with cost due the facts that, among others, that the trade mark application filed by Mesuma Sports was made under bad faith and that Majlis Sukan Negara Malaysia had already registered a similar trade mark prior to the filing date of Mesuma Sports’ trade mark application date.

By way of background, Mesuma Sports (hereinafter referred as the Appellant) is a private limited company and is a top retailer and wholesaler of sport apparels and equipment in Malaysia whereas Majlis Sukan Negara (hereinafter referred as the Respondent) is Malaysia’s National Sports Council and it is established under the National Sports Council Act 1971 to promote sports in Malaysia.

The Respondent had instructed the Appellant to supply sport apparels bearing the Tiger Strips Design (hereinafter referred to as the Respondent’s mark) in 2006. In 2009, the Appellant had registered two trade marks in Malaysia with similar to the Respondent’s mark claiming sporting apparels; equipment and accessories and sports clothing under Class 18 (hereinafter referred to as the Appellant’s trade marks). The application numbers of the Appellant’s trade marks are 09011365 and 09011366. The Appellant’s trade marks were registered in 2011.

The Respondent had previously filed an action in High Court of Malaya that they were the lawful owner of the Respondent’s mark. The Respondent argued that the Respondent’s mark was launched on 14 November 2005 in conjunction with the South East Asian (SEA) Games and it has been using the Respondent’s mark as its trade mark since then.

The Appellant had filed a counterclaim and claimed that the Respondent is infringing the Appellant’s trade marks and also that the Respondent was passing off the Appellant’s trade marks. The Appellant also argued that they were the first user of the Appellant’s trade marks.

In order to verify the ownership of the Appellant’s trade marks, the High Court had to consider the development of the Appellant’s trade marks from their creation or inception.

A Respondent’s witness explained to the High Court that the Appellant registered the Appellant’s trade marks based on the Respondent’s mark. The Appellant agreed that they registered the Appellant’s trade marks to protect the trade marks being copied by the others.

Nevertheless, the Appellant argued that it is the legal owner of the Appellant’s trade marks as it is the first one who started to use the Appellant’s trade marks. The Appellant also pointed out that the Respondent may be the owner of the Respondent’s mark but it did not use it. The Appellant had also argued that there is no prove or evidence of misrepresentation and use of the Respondent’s mark by the Appellant.

Meanwhile the Respondent argued that it was the registered owner and first user of the Respondent’s mark. The Respondent claimed that it is a statutory body and is a non-profit organization and it created the mark to attract public to attend their events and to allow sponsorships.

The High Court held that the Appellant had misused the Respondent’s mark.

The Appellant had then filed an appeal against the High Court’s decision at the Court of Appeals.

The Court of Appeals considered whether the Appellant had the legal right to the Appellant’s trade marks. Firstly, the Appellant must demonstrate that it is an aggrieved person has a locus standi under the Section 45(1) and Section 46 of the Trade Marks Act to bring an action. The Court of Appeal, relying on relevant case of McLaren International Ltd v Lim Yat Meen [2009] 4 CLJ 749, in which the Federal Court of Malaysia has indicated that an aggrieved person is a person who has used a mark as a trade mark, registered owner and has a legal interest on the trade mark, held that the Appellant is an aggrieved person and therefore it has a locus standi to bring this action.

The Court of Appeals held that the Respondent succeeded in the balance of probabilities that the Respondent’s mark was used as a trade mark in the course of trade. In terms of passing-off, the Court of Appeals held that the Respondent used the Respondent’s mark with goodwill before the Appellant.

Therefore, the Court of Appeal dismissed the appeal with costs of RM30000.00 (approximately USD9400.00) The Court of Appeal also had ordered the Intellectual Property Corporation of Malaysia (MyIPO) to remove the Appellant’s trade marks from the Trade Marks Register.