BetweenMerck Kgaa … PlaintiffAnd1. Leno Marketing (M) Sdn Bhd … Defendant2. The Registrar Of Trade Marks … Interested Party

  

Download PDF Here

IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR (COMMERCIAL DIVISION)

 

ORIGINATING SUMMON NO: 24IP-33-07/2015

 

In the matter of Trade Mark

 

Application no. 8014118 for Bionel

 

in Class 5 filed in Malaysia in the name of Leno Marketing (M) Sdn Bhd of Wisma Leno No. 3, Jalan Teknologi 3/1, Taman Sains Selangor, Seksyen 3, PJU 5, Kota Damansara, 47810 Petaling Jaya Selangor Malaysia

 

And

 

In the matter of an opposition thereto by Merck KGaA of Frankfurter Strasse 250, Darmstadt D-64203, Germany

 

And

 

In the matter of an Appeal from the decision dated 13.04.2015 of the Registrar of Trade Marks, Malaysia pursuant to Section 28(5) and 28(6) of the Trade Marks Act 1976 and Order 87 of the Rules of Court 2012

 

Between

 

MERCK KGaA  … Plaintiff

 

And

 

1. Leno Marketing (M) Sdn Bhd … Defendant

 

2. The Registrar of Trade Marks … Interested Party

 

i

 

Grounds of Decision

 

Azizah Nawawi, J:

 

Application

 

[1] There are two (2) applications before this Court:

 

(i) the Originating Summons in enclosure (1); and

 

(ii) the Plaintiff’s application to strike out the Defendant’s affidavit affirmed by San Chin Choon on 3.8.2015 or exhibit “D-1” of the Defendant’s said affidavit be struck out and any averment in respect of the said exhibit be struck out in enclosure (12).

 

[2] The Originating Summons is the Plaintiff’s appeal against the decision of the Registrar of Trade Marks dated 13.4.2015, which rejected the Plaintiff’s Notice of Opposition dated 29.11.2011 and allowed the registration of the Defendant’s application No. 08014118 for the trade mark “Bionel” in Class 5.

 

[3] After hearing the parties, this Court had allowed the Plaintiff’s objection in enclosure (12) and ordered that exhibit “D-1” of the Defendant’s affidavit affirmed by San Chin Choon on 3.8.2015, be struck out and any averment in respect of the said exhibit be struck out.

 

2

 

[4] With regards to enclosure (1), this Court had dismissed the Plaintiff’s appeal with costs.

 

The Salient Facts

 

[5] The Plaintiff is a global pharmaceutical company based in Darmstadt, Germany and was established in 1668.

 

[6] In Malaysia, the Plaintiff is the registered owner of the trade mark “BION” and “BION 3” in Classes 5, 29 and 30.

 

[7] The Defendant filed the mark “Bionel” on 18.7.2008 in Class 5 for the goods of ‘pharmaceutical, veterinary and sanitary substance; infants’ and fat and invalids’ foods; plasters, materials for bandaging, materials for stopping teeth, dental wax; all included in Class 5’.

 

[8] The Defendant’s application was accepted by the Registrar and it was published in the Malaysian gazette on 29.9.2011.

 

[9] The Plaintiff filed their Notice of Opposition on 29.11.2011. After hearing the parties, the Registrar had rejected the Plaintiff’s Opposition and allowed the Defendant’s trade mark ‘Bionel’ to proceed to registration.

 

Enclosure (12)

 

[10] Enclosure (12) is the Plaintiff’s application to strike out the Defendant’s affidavit affirmed by San Chin Choon on 3.8.2015 or

 

3

 

exhibit “D-1” of the Defendant said affidavit be struck out and any averment in respect of the said exhibit be struck out.

 

[11 ] The grounds of the application are as follows:

 

(i) that exhibit “D-1” of the Defendant’s affidavit is irrelevant, oppressive and ought to be expunged and struck out; and

 

(ii) that exhibit “D-1” wrongly exhibit an additional document which is new, irrelevant and oppressive, which do not form part of the Registry proceedings which culminated in the appealed decision.

 

[12] Exhibit “D-1” of the Defendant’s affidavit affirmed by San Chin Choon on 3.8.2015 is a Direct Sales License issued under the Direct Sales Act 1993 dated 28.2.2013 for the period of 28.2.2013 to 27.2.2016, to an associate company of the Defendant, Leno (M) Sdn Bhd.

 

[13] From the submission of parties and the grounds of the application, the parties are limiting this application to Exhibit “D-1” and its related paragraph 12 of the affidavit affirmed by San Chin Choon on 3.8.2015. This, according to the Defendant’s Counsel, is premised on the agreement between parties in a letter dated 27.10.2015.

 

[14] It is the submission of the Plaintiff that pursuant to Order 41 r 6 of the Rules of Court 2012 (‘ROC 2012’), paragraph 12 of the Defendant’s affidavit and Exhibit “D-1” are not relevant to these

 

4

 

appeals as the said document was not before the Registrar, and there was no application before this Court to tender any new evidence as well.

 

[15] However, the Defendant submits that an application for fresh evidence is only relevant to Order O 55 rule 7 ROC 2012, in respect of appeals from lower Courts to the High Court. Since an appeal from the decision of the Registrar of Trade Marks is pursuant to Order 55A of the ROC 2012, the issue of an application for fresh evidence is not relevant. The Defendant submits that there is no limitation in Order 55A of the ROC 2012, and therefore the Defendant may bring in Exhibit “D-1”, which was not before the Registrar but is relevant as the Registrar did consider the fact that the Defendant’s products were sold by direct selling.

 

[16] The Plaintiff’s appeal is filed pursuant to section 28 of the Trade Marks Act 1976 (‘TMA 1976’). The Plaintiff’s appeal is against the decision of the Registrar in an Opposition Proceeding under section 28 (4A). Pertinent to our application here is section 28(7) which reads:

 

“(7) On the hearing of an appeal under this section any party may, either in the manner prescribed or by any special leave of the Court, bring forward further material for the consideration of the court but no

 

further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the

 

5

 

Registrar other than those stated by the opponent except by leave of the Court. ”

 

[17] Under this provision, further material for consideration by this Court on appeal may be brought before this Court “either in the manner prescribed or by any special leave of the Court”. The phrase “in the manner prescribed” will be in reference to Order 55A of the ROC 2012, which provides the procedure for an appeal to the High Court made under any written law, and in this case an appeal under section 28(5) of the TMA 1976. Since there is nothing in Order 55A ROC 2012 which prescribed the manner to bring forward further materials, therefore “special leave of the Court’ as prescribed in section 28(7) of the TMA 1976 itself is required.

 

[18] Therefore, since there is no application filed by the Defendant ‘for special leave of the Court to use further material for consideration by this Court (that is, the fresh evidence that was not before the Registrar in the Opposition proceedings), I will allow the Plaintiff’s application in enclosure (12), to the limited extent that Exhibit “D-1” and its related paragraph 12 in the affidavit affirmed by San Chin Choon on 3.8.2015, are hereby expunged from the court records, with cost to the Plaintiff.

 

Enclosure 1

 

[19] Enclosure (1) is an appeal against the decision of the Registrar dated 13.4.2015 which allowed the registration of the Defendant’s

 

6

 

mark application No. 08014118 in Class 5 and dismissed the objection raised by the Plaintiff. The Defendant’s mark is “Bionel”.

 

[20] The decision of the Registrar in dismissing the Plaintiff’s Opposition against the Defendant’s Marks at the Registry was based on the following grounds:

 

(i) that the Defendant’s marks are neither identical/similar to the Plaintiff’s “BION” marks;

 

(ii) that the Defendant’s mark is sufficiently distinguishable from the Plaintiff’s “BION” marks;

 

(iii) that the Defendant’s Mark is visually and aurally not confusingly similar to the Plaintiff’s “BION” marks;

 

(iv) that the trade channels which the Defendant’s goods were bought and sold are different;

 

(v) that the Defendant is involved in direct selling business and their products were sold through direct sales;

 

(vi) that the nature of both the Plaintiff’s and Defendant’s goods can be regarded to focus on the health industry and consumer who purchase these types of products would be more careful in their purchase; and

 

7

 

(vii) that the Plaintiff’s goods are not direct competitors of the Defendant’s product because the public will not be easily confused between the marks.

 

[21] In their written submission, the Plaintiff has set out three (3) main grounds as to why the Defendant’s marks should not proceed to registration, namely:

 

(i) the Defendant’s Marks are contrary to Section 14 and 19 of the Trade Marks Act 1976 (“TMA 1976”);

 

(ii) the Defendant’s Marks are contrary to Section 25 of the TMA 1976; and

 

(iii) the Defendant’s Marks are contrary to Section 10 of the TMA 1976.

 

The Findings of the Court

 

Issue (i) whether the Defendant’s Marks are contrary to Section 14 and 19 of the TMA 1976

 

[22] It is the submission of the Plaintiff that the learned Registrar has erred in law and/or in fact in dismissing the Plaintiff’s Opposition against the Defendant’s Marks on the basis that the Defendant’s Marks does not offend Section 14 and 19 of the TMA 1976.

 

[23] On this issue, the Registrar found as follows:

 

8

 

“First, I have to determine whether the Applicant’s mark is identical or nearly resembling the Opponent’s marks. Looking at the respective trademarks of the Applicant and the Opponent, I am of the view that the marks are not identical. Now, I have to determine whether the Applicant’s mark is deceptively and/or confusingly similar with the Opponent’s mark. Bearing in mind the test as to confusing similarity that laid down in case laws (Pianotist Co’s Appn, De Cardova, jafferjee v Scarlett, etc) and the doctrine of ‘imperfect recollection’, the Registry is of the view that the Applicant’s mark is sufficiently distinguishable from the opponent’s marks. The Applicant’s mark is consists of the word “Bionel” in a stylized manner and can be pronounced as “/BIO/NEL/”. Whereas, the Opponent’s 1st mark is wordmark namely “Bion”, 2nd mark is consists of word “Bion” with a device and the 3rd mark is consists of the word “Bion 3” in black block letters within a racetrack shape device in which can be pronounced as “/BION/ and “/.BION/THREE/’. On the visual aspect of the mark, based on the trade mark principle of essential feature and imperfect recollection, it is sufficient to say the Applicant’s mark is not confusingly similar. On the aural aspect, the mark when pronounced as a whole neither similar nor confusing. Taking my consideration of the visual, oral and conceptual makeup of the respective marks as a whole, I am of the view that the Applicant’s mark is sufficiently distinguishable from the Opponent’s marks.”

 

9

 

[24] Section 19(1) of the TMA 1976 states as follows:

 

“(1) No trade mark shall be registered in respect of any

 

goods or description of goods:

 

(a) 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 such goods; or

 

(b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion”.

 

[25] Section 14(1)(a) of the TMA 1976 reads as follows:

 

“14. Prohibition on registration

 

(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 to the public or would be contrary to law;”

 

[26] Section 19 of the TMA 1976 relates to registered trademarks only, whereas section 14 of the TMA 1976 is of wider application. The objective and purpose of section 14(1)(a) is held by the Federal Court in Yong Teng Hing b/s Hong Kong Trading Co & Anor v Walton International Ltd [22012] 6 CLJ 37 as follows:

 

10

 

“[25] The objective and purpose of s. 14(1)(a) of the Act is to protect the public and consumers from instances of confusion or deception as a result of the use of two similar marks. Thus, under s. 14(1)(a) of the Act, a mark shall be refused registration if use thereof is likely to deceive or cause confusion to the public notwithstanding that it is the result of use of an earlier identical or similar mark, whether registered or not in Malaysia and which is being used in relation to good or services which may be different from that sought to be registered.” (emphasis added)

 

[27] However, both sections 19 (1) and section 14 (1)(a) deals with the issue of identical or confusingly similar trademarks. As the Defendant’s ‘Bionel’ mark is not identical with the Plaintiff’s ‘BION’ or ‘BION 3’ marks, the issue then is whether these marks are confusingly similar. In determining whether the Defendant’s Mark is confusingly similar to the Plaintiff’s Mark, the relevant test can be found in the Supreme Court decision 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

 

11

 

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

 

[28] 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 summarised 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.

 

[29] It must also be emphasized 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 18.7.2008. In Walton

 

12

 

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:

 

“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.”

 

[30] Applying the Pianotist’ case, this Court must first make a comparison between the Plaintiff’s “BION” marks and the Defendant’s “Bionel” marks. Having considered the Plaintiff’s registered mark “BION” and “BION 3”, and the Defendant’s “Bionel” Mark, I agree with the findings of the Registrar that the marks are not confusingly similar. Visually, conceptually or phonetically, the marks are clearly different:

 

PLAINTIFF’S MARK  DEFENDANT’S MARK

 

BION BION 3 VS. Bionel

 

[31] I agree with the findings of the Registrar that the Defendant’s mark consists of the word “Bionel” in a stylized manner and can

 

13

 

be pronounced as “/BIO/NEL/”, pronounced with two (2) syllables. Whereas, the Plaintiff’s mark consist of the word mark, that is “Bion” and the other mark consists of a word “Bion” with a device and another mark consists of the word “Bion 3” in black block letters within a racetrack shape device in which can be pronounced as “/BION/ and “/BION/THREE/”. Thus, “BION’ is pronounced in a single syllable.

 

[32] Other cases came to the similar finding, as can be seen in the case of Elba Group Sdn Bhd v Pendaftar Cap Dagangan dan Paten Malaysia [1998] 4 MLJ 105 where the Court held that ‘DAX was not confusingly similar with ‘DAKS’. In Fif Trade Mark [1979] RPC 355, it was held that ‘FIF’ was not similar to JIF.

 

[33] Next we consider whether the goods/services to which the conflicting marks are to be applied, as per the Pianotist test. On this issue the Registrar made the following finding:

 

“After go through the arguments of both parties I conclude that the goods of the Applicant and Opponent are goods of the same description. The uses and the physical nature of the products are thus similar. However, the trade channel through which the Applicant’s and Opponent’s goods are bought and sold are different.

 

The Applicant involved in direct selling business and their products was sold through direct sales and in their own retails stores only. Unlike Applicant, the Opponent’s goods are over-the-counter products that can only be purchased in the pharmacies.

 

14

 

Taking into account all the relevant factors, I am of the opinion that the Applicant’s goods and the Opponent’s goods are not direct competitors and because of this fact, the public will not be easily confused between Applicant’s mark and the Opponent’s mark”.

 

[34] On this issue, the Registrar has made a finding of fact that the trade channels through which the Plaintiff’s and the Defendant’s goods are bought and sold are different. The Defendant is involved in direct selling business and their products were sold through direct sales and in their own retails stores, whereas the Plaintiff’s goods are sold over-the-counter in the pharmacies. I do not find any basis to disturb this finding of fact by the Registrar. As such, I am of the considered opinion that the Registrar has made the correct finding that since the Plaintiff’s goods and the Defendant’s goods are not in direct competition, the public will not be easily confused between Plaintiff’s mark and the Defendant’s mark. In Consitex SA v TLC Marketing Sdn Bhd [2008] 3 MLJ 574, the Court held that there is no likelihood of confusion or deception when the channels of distribution of the trademarks are different. The Plaintiff’s ‘Ermenegildo Zegna’ and ‘Zegna’ clothing are distributed at exlusive malls noted for high priced items, such as KLCC and Avenue K, whereas the Defendant’s ‘Emmer Zecna’ clothing are sold in departmental stores and supermarkets. The Court added that:

 

15

 

“[36] Further to the above, according to the Pianotist test, surrounding circumstances should be taken into account when determining whether the mark is ‘likely to deceive or cause confusion’. In the present case, both the plaintiff and the defendant focus their business on different markets and target different segments of the public. The Plaintiff targets customers who can afford designer wear and brands which are recognized by the fashion world … The defendant on the other hand, has targeted the average middle -class portion of the public. Taking this fact into consideration, it is obvious that there is no likelihood of confusion or deception to the public.’’ (emphasis added)

 

[35] The Plaintiff however relied on the case of Leo Pharmaceutical Products Ltd A/S (Lovens Kemiske Fabrik Produktionsaktieselskab) v Kota Pharma (M) Sdn Bhd (No. 2) [2012] 10 CLJ 507, where the Court has held that the marks ‘FUCIDIN’ and ‘FUCIDIC, and ‘FUCICORT and ‘FUSI-CORTE’ are confusingly similar. In making such findings, the Court had considered that the “goods in question are prescription drugs which were dispensed or dealt with by licensed pharmacist or pharmacists’ assistants and doctors tend to scribble their prescriptions.’

 

[36] Therefore, the Leo Pharmaceutical Products Ltd case is factually different from our case. In that case the products are the same, prescription drugs, which are sold in the same channel, the

 

16

 

pharmacy, with the added anxiety over doctors who tend to scribble their prescription.

 

[37] Lastly, the Pianotist’s test requires this Court to consider the type of customers of the proprietors of the conflicting marks. In his decision, the Registrar made the following finding:

 

“In addition, the nature of both the Applicant’s and the Opponent’s goods can be regarded to focus on the health care. Consumer buying this type of products will be more careful in their purchase in that they are getting the brand that they are looking for”.

 

[38] Again I do not find anything wrong with the said findings of the Registrar. In the case of Consitex SA (supra), the Court held as follows:

 

“[54] Literacy level in Malaysia is high and consumers are more demanding, discerning and observant than before, and therefore, are able to distinguish the plaintiffs and the defendant’s trademarks and businesses. This is evidenced by the fact that the marks ‘PANASONIC’ and ‘PENSONIC’ have been allowed to co – exist in relation to electronic and electrical goods in Malaysia, ‘adax’ and ‘DAKS’ for clothing, ‘MISTER’ and ‘SISTER’ for condoms, and ‘PUBLIC BANK’ and ‘BANK RAKYAT co-exist as name of banks.

 

17

 

[57] Taking this fact into consideration in this case, a well informed, circumspect and observant consumer would certainly not be confused with the co-existence of the defendant’s mark Emmer Zecna with the plaintiff’s Ermenegildo Zegna.”

 

[39] If the demanding, discerning and observant Malaysian consumers are not easily confused over trade marks on clothing, I agree with the Registrar’s finding that with regards to health care products, the demanding, discerning and observant Malaysian consumers would be more careful in their choice.

 

[40] Premised on the reasons enumerated above, I am of the considered opinion that the Registrar was correct in his finding that the Defendant’s mark ‘Bionel’ is not confusingly similar to the Plaintiff’s mark ‘BION’ or ‘BION 3’ which would offend either section 14 (1)(a) or section 19 (1)(a) of the TMA 1976.

 

Issue (ii) whether the Defendant’s Marks are contrary to Section 25 of the TMA 1976

 

[41] It is the submission of the Plaintiff that the Registrar erred in law and/or fact in not recognizing the fact that the Plaintiff is the originator and/or bona fide and/or common law proprietor of the trade mark ‘BION’ and that the Plaintiff has acquired substantial goodwill and reputation in its business in relation to the trade mark ‘BION’ in Malaysia long before the filing of the Defendant’s application.

 

18

 

[42] Section 25 of the TMA 1976 provides that:

 

“Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may make application to the Registrar for the registration of that mark in the Register in the prescribed manner.”

 

[43] Kerly’s Law of Trade Marks and Trade Names (13th edition) touched on section 17(1) of the English Trade Marks Act 1938 (corresponding to section 25(1) of the TMA 1976 and observed that:

 

“… claiming that he is entitled to be registered as the proprietor… [the] claim must in some sense be a justified one… Provided however that the claim of proprietorship is made in good faith and is not rebuttable on the ground that in fact someone else was the proprietor, it is difficult to see how it can be objected to. ” (emphasis added)

 

[44] In view of my finding that the Defendant’s ‘Bionel’ Mark is not identical or confusingly similar to the Plaintiff’s ‘BION’ or ‘BION 3’ marks, there is no issue of the Defendant attempting to ride on the alleged goodwill and reputation of the Plaintiff’s trade marks. The Defendant has also provided the explanation as to the choice of mark and the origins of its trade mark which shows that the said mark was not applied and used in bad faith.

 

19

 

Issue (iii) whether the Defendant’s Marks are contrary to Section 10 of the TMA 1976

 

[45] On this issue, the Registrar made the following finding:

 

“With regard to the distinctiveness of the mark, the Registry also of the view that the Applicant mark is distinctive and registrable under Section 10 of the Act. As long as the Applicant’s mark not confusingly similar to the Opponent’s mark that could lead to any confusing or deception, I have no reason to object the registration of the Applicant’s mark in Class 5. The Applicant also entitled to apply for the registration of the applied mark pursuant to Section 25(1) of the Act.”

 

[46] It is the submission of the Plaintiff that the Defendant’s marks are not distinctive within the meaning of section 10 of the TMA 1976, in that the Defendant’s Marks is not capable of distinguishing the goods of other traders due to the Defendant’s mark being identical and/or confusingly similar with the Plaintiff’s “BION’ trade marks.

 

[47] In view of my findings that the Defendant’s ‘Bionel’ Mark is not confusingly similar to the Plaintiff’s ‘BION’ marks, the Plaintiff’s contention is simply untenable.

 

[48] The Plaintiff also raised several other issues, including the contention that the Plaintiff’s marks are well known marks by virtue of their extensive advertisements, usage, public awareness

 

20

 

and trade mark registration/applications worldwide. The Plaintiff therefore submits that the Plaintiff’s marks are entitled to the protection of well known marks under Section 70B of the TMA 1976, Paris Convention and Article 16 of the TRIPS Agreement.

 

[49] On this issue, the Registrar made the following finding:

 

“With regards to the Opponent’s claim on the well-known mark, based on the related provisions under the Trade Marks Act 1976, and also the affidavit evidences tendered by the Opponent, the Registry is of the view that the Opponent’s marks are yet to be considered as a well-known mark in Malaysia.”

 

[50] As the Registrar has made a finding of fact on this, I will not disturb his finding of fact. In any event, under section 14(1)(d) of the TMA 1976, the onus is on the Plaintiff to establish: –

 

(i) that the Plaintiff’s Mark are well known in Malaysia; and

 

(ii) that the Defendant’s Mark is ‘identical’ or ‘so nearly resembles’ the Plaintiff’s Mark.

 

[51] Since the Registrar has made a finding of fact based on the affidavit evidences tendered by the Plaintiff, that the Plaintiff’s marks are yet to be considered as a well-known mark in Malaysia, the Plaintiff’s submission on this must fail. Added to that, I had also made a finding that the Defendant’s ‘Bionel’ Mark

 

21

 

is not ‘identical’ nor ‘so nearly resembles’ the Plaintiff’s ‘BION’ Mark. Thus, the Plaintiff has failed to establish the requirement of section 14(1)(d) of the TMA 1976.

 

[52] Finally, the Plaintiff also raised the issue of whether the Defendant’s products are duly registered with the National Pharmaceutical Control Bureau (NPCB). Thus, the Plaintiff submits that “ it has not been established by the Defendant that the products to which the Defendant claims offering via direct selling are drugs that have been approved by the NPCB. Further, it has not been established that the direct personnel of the Defendant are qualified in the medical field to sell pharmaceutical products to the customers. In the interest of the public, pharmaceutical products cannot be sold via direct selling unless proper approvals from the relevant authorities..” ( see para 3.4.3 of the Plaintiff’s written submission)

 

[53] I take note that this issue was not raised as one of the Plaintiff’s Grounds of Opposition dated 29.11.2011, and section 28(7) of the TMA 1976 clearly provides that “…. no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar other than those stated by the opponent except by leave of the Court. ”

 

[54] After complaining about the Defendant’s use of fresh evidence, it does not augers well for the Plaintiff to later submit on an issue that was not raised in the Grounds of Objection, which is clearly against section 28(7) of the TMA 1976.

 

22

 

Conclusion

 

[55] Premised on the reasons enumerated above, the Plaintiff’s appeal is dismissed with costs.

 

(AZIZAH BTE HAJI NAWAWI) JUDGE

 

HIGH COURT MALAYA (Commercial Division) KUALA LUMPUR

 

Dated: 19 May 2016

 

For the Plaintiff : Sunitha Rengasamy

 

Messrs Miranda & Samuel Kuala Lumpur.

 

For the Defendant: Arun Kasi and Eugene Teo

 

Messrs Esther Ong, Tengku Saiful & Sree Subang Jaya, Selangor D.E.

 

23

PDF Source: http://kl.kehakiman.gov.my