AntaraDynawell Corporation (M) Sdn Bhd(No. Syarikat : 196756 – U) … PlaintifDan1. Dynasty Landmark Sdn Bhd(No. Syarikat : 235075 – P)2. Pendaftar Cap Dagangan Malaysia … Defendan – Defendan

  

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DALAM MAHKAMAH TINGGI MALAYA DI KUALA LUMPUR DALAM NEGERI WILAYH PERSEKUTUAN SAMAN PEMULA NO: 24IP-28-06/2014

 

Dalam perkara mengenai Permohonan Cap Dagangan No. 00012622 untuk cap dagangan “DYNASTY” di Kelas 43 di Malaysia atas nama Dynawell Corporation (M) Sdn Bhd beralamat di Level 7, No. 218, Jalan Ipoh, 51200 Kuala Lumpur, Malaysia (selepas ini dikenali sebagai “Pemohon/Plaintif”)

 

Dan

 

Dalam perkara mengenai Bangkangan oleh Dynasty Landmark Sdn Bhd (selepas ini dikenali sebagai “Pembangkang”)

 

Dan

 

Dalam perkara mengenai keputusan bangkangan oleh Penolong Pendaftar Cap Dangangan Malaysia keatas permohonan Cap Dagangan No. 00012622

 

Dan

 

Dalam perkara mengenai Aturan 87 kaedah 3, Kaedah – kaedah mahkamah 2012

 

ANTARA

 

DYNAWELL CORPORATION (M) SDN BHD

 

(No. Syarikat : 196756 – U) … PLAINTIF

 

DAN

 

1. DYNASTY LANDMARK SDN BHD (No. Syarikat : 235075 – P)

 

2. PENDAFTAR CAP DAGANGAN MALAYSIA … DEFENDAN – DEFENDAN

 

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Grounds of Decision

 

Azizah Nawawi, J:

 

Application

 

[1] The Plaintiff’s application is an appeal against the decision of the Registrar of Trade Marks (‘Registrar’) dated 26.5.2014 which allowed the objection raised by the First Defendant against the registration of the Plaintiff’s mark “DYNASTY” and refused the Plaintiff’s application to register the said mark.

 

[2] After hearing the application and submissions of the parties, this Court had dismissed the Plaintiff’s appeal.

 

The Salient Facts

 

[3] The Plaintiff operates and manages its hotel business, the “DYNASTY HOTEL” at Jalan Ipoh, Kuala Lumpur since 1.12.1994.

 

[4] The First Defendant is the registered proprietor of the trademark “DYNASTY HOTEL” in respect of services for providing food and drink, temporary accommodation; all included in Class 43 since 28.2.1998. The earliest documents issued by the First Defendant bearing its trademark “DYNASTY HOTEL” are dated June 1992.

 

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[5]

 

The Plaintiff filed an application to register its trade mark ‘DYNASTY’ on 12.9.2000 in Class 43. The Plaintiff’s application

 

No. 00012622 is to register the mark “ um w \ »« ”jn respect of services in Class 43, namely ‘providing hotel accommodation; food and drink catering; cafes; cafeterias; canteens; rental of temporary accommodation; boarding houses; tourist homes; hotels; restaurants; boarding house bookings; hotel reservation; self-service restaurants; snack-bars; cocktail lounge services; holiday camp services; temporary accommodation reservations; motel; rental of meeting rooms; all being services included class 43 ”.

 

[6] The Plaintiff’s application was gazetted on 21.12.2006. On 20.3.2007, the First Defendant filed an Objection to the Plaintiff’s application.

 

[7]

 

After considering the Plaintiff’s application and the objection raised by the First Defendant, on 26.5.2014 the Registrar allowed the objection and dismissed the Plaintiff’s application for the

 

registration of its mark,

 

[8] Hence, the Plaintiff filed this appeal against the decision of the Registrar delivered on 26.5.2014.

 

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The Findings of the Court

 

[9] It is common ground that under s. 67 of the Trade Marks Act 1976 (‘TMA 1976’), this Court has the power to review, reverse or otherwise vary the decisions of the learned Registrar.

 

[10]

 

It is also common ground that the burden of proof is on the Plaintiff, as the applicant for registration of the Plaintiff’s

 

Mark, to satisfy the Registrar and this Court that the said Mark is registrable under the TMA 1976. In Yong Teng Hing b/s Hong Kong Trading Co & Anor v Walton International Ltd [2012] 6 CLJ 337 FC (‘Walton International’),

 

Justice Zulkefli Makinudin, CJ (Malaya) held at p. 348 as follows:

 

“[12] It is to be noted in the present case, the respondent filed its notice of opposition before the appellant’s mark could be registered. On this point it is our judgment that the onus is on the appellant to prove that he is entitled to register the “GIORDANO” trade mark.”

 

[11] The Plaintiff did not specify any particular ground to challenge the decision of the Registrar except to simply state that ‘pihak Defendan Kedua, di dalam alasan keputusannya terkhilaf secara fakta serta undang-undang apabila pihak Defendan Kedua menerima bangkangan Defendan Pertama tersebut…’. The Plaintiff’s ground of appeal that the Registrar has erred in law and in fact, is not only wide but vague as well.

 

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[12] From the decision of the Registrar, she has accepted the objection raised the First Defendant premised on section 14 and 19 of the TMA 1976. Her decision reads as follows:

 

“Looking at the respective mark of the applicant and the opponent, there is a common word in these marks namely “DYNASTY” and it is clear that both parties used their respective mark in respect of the same services in Class 43. As both marks consist of the same word, it is likely for these marks to be referred to by the same word.

 

Although the word “DYNASTY” in the applicant’s mark is written with stylized letters, it would still be referred to as “DYNASTY” by the public since that is the only word contained in the mark. Thus, it is clear that both the applicant and the opponent’s marks are phonetically the same.

 

Meanwhile, although the location of the applicant and the opponent’s hotels are far from each other as the former is in Kuala Lumpur while the latter in Sarawak, the similarity in the word “DYNASTY” and similarity in the services make it likely for the public to be led into thinking that there is a connection or association in trade between the hotels when in fact no such connection exists.

 

Besides, it must be noted that, in view of the imperfect recollection doctrine, most of the time the public would not remember the visual appearance of a hotel’s trade mark

 

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in detail, instead it is the word in it that would remain in people’s mind. Thus, the different visual appearance of the word DYNASTY” in both marks is unlikely to avoid the confusion arises from the use of the same word in the marks.

 

In the present case, the opponent’s evidence shows that at the relevant date, the opponent had a registered mark in respect of the same services with those of the applicant’s. And I have also found the applicant’s mark as a whole to be so nearly resembles the said opponent’s registered mark as is likely to cause confusion. Having said that, I have no choice but to allow the opponent’s opposition under Section 19 of the Act.”

 

Issue on Deception and Confusion

 

[13] The relevant provisions of sections 19 and 14 of the TMA 1976 reads as follows:

 

Section 19:

 

(1) No trade mark shall be registered in respect of any goods or description of goods-

 

i. that is identical with a trade mark belonging to a different proprietor and entered in the register in respect of the same goods or description of goods or in respect of services that are closely related to those goods; or

 

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ii that so nearly resembles such a trade mark as is likely to deceive or cause confusion.

 

Section 14:

 

(1) A mark or part of a mark shall not be registered as a trade mark-

 

(a) if the use of which is likely to deceive or cause confusion or would be contrary to law;

 

[14] Both sections 14(1)(a) and 19(1) of the TMA 1976 addressed the issue of confusion and deception. In determining whether the Plaintiff’s mark is confusingly similar to the First Defendant’s mark, the relevant test can be found in the Supreme Court case of Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 2 MLJ 63, where the Court held that:

 

“The ‘test’ which Wan Adnan J was referring to were contained in Parker J’s judgment in The Pianotist Co Ltd in the following terms:

 

“ You must take two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade

 

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mark for the goods of the respective owners of the marks.”

 

[15] The test formulated by the Court in the Pianotist case, as accepted by our Supreme Court in Tohtonku, in determining whether there is any likelihood of confusion can be summarized as follows:

 

(i) by comparison of the conflicting marks;

 

(ii) by considering the goods/services to which the conflicting marks are to be applied; and

 

(iii) by considering the type of customers of the proprietors of the conflicting marks.

 

The underlying consideration would be all the circumstances surrounding the usage or proposed usage of the conflicting marks taken as a whole in determining whether there will be any likelihood of confusion.

 

[16] It is common ground that the circumstances of use to be considered must be with reference to the time the Defendant’s mark was applied for registration, that is, on 12.9.2000. In Walton International case (supra), which involved an appeal against the Registrar’s decision to dismiss an opposition against registration for the trade mark “GIORDANO”, the Federal Court held at page 346:

 

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“At the outset we would like to state here that the relevant date upon which the court has to decide whether the appellant is entitled to register the “GIORDANO” trade mark in Class 9 is the appellant’s application date on 25 July 1992” (emphasis added)

 

[17] In comparing the Plaintiff’s DYNASTY trade mark and the First Defendant’s DYNASTY trade mark, I am of the considered opinion that the learned Registrar had applied the correct approach for comparison of these two (2) marks, which are as follows:

 

First Defendant’s DYNASTY Plaintiff’s DYNASTY Mark

 

T rade Mark

 

DYNASTY HOTEL DINASTf

 

[18] On the visual and phonetic aspects of the marks, the learned Registrar held that:

 

“Looking at the respective mark of the applicant and the opponent, there is a common word in these marks namely “Dynasty” and it is clear that both parties used their respective mark in respect of the same services in Class 43. As both marks consist of the same word, it is likely for these marks to be referred by the same word. Although the word “Dynasty” in the applicant’s mark is written in

 

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stylised letters, it would still be referred to as “Dynasty” by the public since that is the only word contained in the mark. Thus, it is clear that both the applicant and the opponent’s marks are phonetically the same”.

 

[19] Therefore, by comparing the marks as a whole, I find that the Registrar has correctly found that by the visual, oral and conceptual make-up of the Plaintiff’s DYNASTY trademark was substantially similar to the First Defendant’s DYNASTY trademark. As the result, the use of the Plaintiff’s DYNASTY Trade Mark would result in confusion and deception in a manner which would offend both sections 19 and 14(1)(a) of the TMA 1976. As the First Defendant’s DYNASTY Trade Mark was registered since 28.2.1998 which is before the filing of the Plaintiff’s application on 19.9.2000, the learned Registrar held that:

 

“In the present case, the opponent’s evidence shows that at the relevant date, the opponent had a registered mark in respect of the same services with those of the applicant’s. And I have also found that the applicant’s mark as a whole to be so nearly resembling the said opponent’s mark as is likely to cause confusion. Having said that, I have no choice but to allow the opponent’s opposition under section 19 of the Act.

 

[20] Further, where the services provided are similar or closely related, there is a higher likelihood of confusion and deception that members of the public would assume that the two marks are

 

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connected with each other. In the present case, since both marks are used in the hotel services industry, then the services of Plaintiff and the First Defendant are in direct competition. In Leo Pharmaceutical Products Ltd A/S v Kontra Pharma (M) Sdn Bhd [2009] 5 MLJ 703, the Court held that:

 

“Where the parties’ goods or service are in direct competition with each other, only a small degree of similarity is required to establish the likelihood of confusion. ”

 

Issue on Concurrent Use

 

[21] It is also the submission of the Plaintiff that they are entitled to register their Mark pursuant to section 20(2) of the TMA 1976, which reads:

 

“20. (2) The Registrar shall not refuse to register a trade mark which is identical to or so nearly resembling another trade mark in the Register if the applicant of the first mentioned trade mark or his predecessor in business has continuously used that trade mark from a date before—

 

(a) the use of that other trade mark by the registered proprietor or his predecessor in business or by a registered user; or

 

(b) the registration of that other trade mark by the registered proprietor or his predecessor in business,

 

whichever is the earlier. ”

 

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[22] The Plaintiff submits that the Registrar has failed to take into consideration the Plaintiff’s argument of ‘honest concurrent usage’ pursuant to section 20(2) of the TMA 1976. The Plaintiff submits that they have furnished ample evidence of usage prior to its trade mark application in order to establish ‘honest concurrent user’. The Plaintiff relied on the case of Pakai Industries Bhd v Chen Yew Industries Sdn Bhd [1991] 3 CLJ 383 where Zakaria Yatim J held as follows:

 

“ Thus, in order to succeed in proving that the respondent is an honest concurrent user, it has to prove that the use of the mark was nearly as long as that of the applicant if not longer.’’ (emphasis added)

 

[23] However, it is not in dispute that the issue of ‘honest concurrent user was not raised before the Registrar. Therefore, the Plaintiff cannot now submit that the Registrar has failed to give any consideration on this issue, when the same was not raised before her in the first place.

 

[24] In any event, having considered the documents filed before the Registrar and are now before this Court, I am of the considered opinion that the Plaintiff has failed to establish that they have used the mark “nearly as long as that of the applicant if not longer.’ (see Pakai Industries supra)

 

[25] From the documents before the Registrar and this Court, the First Defendant has shown that they have used their “DYNASTY” trade mark since June 1992. Invoices show that the First Defendant

 

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has been operating its hotel business since 1992, with its mini bar bill dated 23.11.1992.

 

[26] On the other hand, in paragraph (6) of the written submission of the Plaintiff, the Plaintiff has conceded that they only started operation on 1.12.1994. Paragraph 6 reads as follows:

 

“6. The Plaintiff in its affidavit in support says that it has been operating and managing its hotel known as “DYNASTY HOTEL” since its opening for business on 1.12.1994 (May My Lady refer to Paragraph 5 of the said Affidavit in support).”

 

[27] From the financial statements, the earliest statement of account of the Plaintiff is for the financial year 1994, with revenue in the sum of RM17,920,000.00 for the period between 1994 to 1996. However, the earliest accounts generated for the First Defendant hotel business was in 1992, with revenue of about RM638,447.96.

 

[28] The Plaintiff’s earliest revenue generated under the mark, which is for hotel related services, was for the financial year of 1994, and this is consistent with the Plaintiff’s stand that they only started business on 1.12.1994. This is about two (2) after the First Defendant has used its trademark in the hotel related industry. Therefore, it cannot be said that the Plaintiff has used the mark earlier than the First Defendant under section 20(2) of

 

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the TMA 1976 or as “nearly as long as that of the (First Defendant) if not longer” as held in the case of Pakai Industries.

 

[29] Therefore, since the Plaintiff has failed to prove that it has used the mark nearly as long as that of the First Defendant, if not longer, I am of the considered opinion that the Plaintiff has failed to satisfy the requirements of section 20 of the TMA 1976. The Plaintiff only used the mark about three (3) after the First Defendant has used its mark in the same hotel service industry.

 

[30] I also agree with the First Defendant that the Plaintiff has failed to show the honesty of the concurrent use of the identical marks. In Lam Soon Marketing Services Ltd v. Lam Mei Hing t/a Yat Hing Trading Co [1994] 3 HKC 414, the Court dealt with the issue of whether there has been honest concurrent use of the mark, and Mayo J held as follows:

 

“I also accept that burden of proof in establishing honest use is placed upon an applicant,_namely the respondent in the present case.

 

The problem which arises is that there is no evidence whatever in Mdm Lam Mei Hing’s statutory declaration concerning the circumstances under which the decision was originally made to use the said trade mark. There is nothing whatever to enable the court to conclude that the use of the mark was

 

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honest. She does not say whether she was aware of the appellant’s mark which is very similar when she first used her mark. It would not seem, however, on the balance of probabilities that she would have been aware if it. I say this on account of the number of characteristics of the device which are either identical or very similar. It would have indeed been a coincidence if the respondent came up with a mark with so many similar characteristics entirely independent of any knowledge of the appellant’s trade mark. I accept the validity of the submission made by Miss Lau that the proper test to adopt in attempting to draw inferences due available is the balance of probabilities. As I have said earlier, the burden is on the respondent to establish there has been honest use of the mark and when she declines to give any evidence concerning the background to her decision to use the mark, it is, in my view, not possible to simply assume that the use was honest”. (emphasis added)

 

[31] In the present case, I agree with the Plaintiff that there is also nothing in the statutory declarations filed during the opposition proceedings and the affidavits filed in this Appeal that explains the manner in which the DYNASTY Trade Mark was conceived by the Plaintiff. The Plaintiff has not explained why it has chosen the DYNASTY mark, which is the same mark that was used by the First Defendant since 1992.

 

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[32] Due to the mark being fundamentally identical to the First Defendant’s DYNASTY Trade Mark and coupled with the First Defendant’s prior use of nearly three (3) years before the use of the identical mark by the Plaintiff, I find that there is an irresistible inference that the mark was adopted from the First Defendant’s mark. The adoption of the word DYNASTY from the First Defendant’s trademark is dishonest, and consequently the Plaintiff’s application cannot be said to have been filed with good intention by an honest concurrent user. Therefore, I find that the Plaintiff has failed to establish that there has been honest concurrent use of the identical mark by the Plaintiff.

 

Conclusion

 

[33] Premised on the reasons enumerated above, I find that the Registrar has correctly considered the law and the factual matrix of this case before she decided to allow the First Defendant’s opposition premised on sections 14 and 19 of the TMA 1976 and dismissed the Plaintiff application to register the

 

[34] At the same time, the issue of ‘honest concurrent user’ was not raised before the Registrar and the parties are precluded from raising the same in this appeal. Further, from the facts of the case, the Plaintiff cannot be said to be an honest current user as they only use the identical mark three (3) after the First Defendant had established its business in the hotel industry. Added to that, the Plaintiff has failed to show evidence of honest concurrent use.

 

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[35]

 

In the premise, the appeal is dismissed with costs.

 

(AZIZAH HAJI NAWAWI) JUDGE

 

HIGH COURT MALAYA (Commercial Division) KUALA LUMPUR

 

Dated: 28th September 2015

 

For the Plaintiff

 

For the Respondent 1

 

For the Respondent 2

 

Hoo Lin Coln Messrs Lin Coln & Co Kuala Lumpur.

 

WR Teng

 

Messrs Shearn Delamore & Co Kuala Lumpur.

 

Iylia Hashim

 

Perbadanan Harta Intelek Malaysia Kuala Lumpur.

 

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