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26th June, 2015

In NCTECH INT BHD. v NCV TECHNOLOGIES SDN. BHD., the High Court of Malaya in Kuala Lumpur ruled on the application of the word “use” in the context of trademark law as defined in Section 3(2) of the Trade Marks Act 1976.

It is an application for leave to commence committal proceedings against the Defendant for non-compliance with an ad interim order of the High Court dated 30 October 2014 (hereinafter be referred as “the Order”). Following the Order, the Defendant was prohibited from using and/or to continue using the brand or representation “vellux” or any brand/name containing their words “vellux” in the course of its business from 30 October 2014 to 13 November 2014.

The Plaintiffs submitted that the Defendant has failed to comply with and was in breach of the Order and adduced two documents which appeared on the Defendant’s website during the period where the Order was in force. The documents are, firstly, Certificate of Conformity issued by SIRIM on 18 December 2012 and due to expire on 17 December 2015, for the brand “vellux”. The second document is a letter from Korean company, DUNAN Co Ltd, dated 4 July 2011 wherein the Defendant was given the exclusive rights to distribute “vellux” products in Malaysia.

The Court cited several cases that have made references to the term ‘use of the mark’ in the context of the Trade Marks Act 1976. The Court adopted the reasoning in Godrej Sara Lee Ltd v Siah Teong Teck & Anor (No. 2) [2008] 7 CLJ 24 and Oishi Group Public Company Limited v Liwayway Marketing Corporation [2015] 2 CLJ 1121. In Godrej Sara, Ramly Ali J held that:

“For actual use to arise there must be use of the mark on or in relation to goods. This would include affixing the marks to the goods or in an advertisement, circular or a catalogue.”

In the Oishi case, the court held that:

“[23] Therefore from section 3(2) read with section 46(1)(b), the reference to use of the mark must be physical use of the mark on or in relation to the goods by the registered proprietor or registered user. By simply showing the mark noted on cash invoice of a third party, and not of the registered proprietor or registered user is not ‘use’ of the registered mark within the meaning of section 46(1)(b) read with section 3.” (emphasis added)

The Court in the instant case held that although the word “vellux” can be found in the documents but it cannot be said to be physical use of the mark by the Defendant as the documents were not issued by the Defendant but by third parties.

Accordingly, the Court held that the Plaintiff has failed to establish a prima facie case of contempt against the Defendant and the application was dismissed.