JUrISdIctIOn repOrt: mALAYSIA
retrActIOn OF
Accepted trAdemArKS
Azlina Aisyah Khalid
Henry Goh & Co. Sdn. Bhd.
The Malaysian Intellectual Property Court recently issued a judgment
“WItH reGArdS tO tHe deScrIptIVeneSS
in respect of an appeal by Illinois Tool Works (the appellant) against the
ObJectIOn, tHe JUdGe StAted
registrar’s decision in refusing to register the appellant’s trademark (Trade
Mark Application Number 02005832) for ‘High Temp Red’ in Class 17.
tHAt tHe reGIStrAr HAd tAKen An
OVerpreSUmptUOUS ApprOAcH bASed
Several procedural peculiarities formed the basis of the appeal. The mark
was filed in 2002. It was examined substantively, approved and subsequently
On A WrOnG And nArrOW prOpOSItIOn
advertised in the Malaysian Government Gazette in May 2005. It was not OF tHe AppeLLAnt’S trAdemArK.’’
opposed. However, instead of granting the Registration Certificate, in July
2006, the registrar issued a retraction of the trademark’s acceptance and raised
fresh objections. Following written submissions, the matter was heard before
the hearing officer. Thereafter, the registrar issued a refusal and the appellant
made a request for the Grounds of Decision. The appeal was subsequently
filed upon receipt of the same.
Two important issues were discussed thoroughly in the judgment. One was
consider the appellant’s trademark High Temp Red in one singular fashion,
as used by the appellant as its source identifier.
the exercise of the registrar’s discretionary powers and the registrability of
the mark itself.
“What the registrar had done is exactly what is prohibited,” the judgment
said. “The registrar had broken up or dissected the appellant’s mark into
Section 25(12) of the Malaysian Trade Marks Act 1976 empowers the registrar
three components…the registrar had said that the appellant’s mark is not
to retract any acceptance of a trademark application if he is satisfied that the
distinctive because ‘HIGH’ on its own means something, ‘TEMP’ means
application was accepted in error. Section 30(1) further provides that the
something and ‘RED’ means something. So by taking the individual
registrar cannot register a trademark application if it was accepted in error.
meanings of each component…the registrar concluded that it is not
These two sections formed the basis of the refusal.
distinctive…”
The registrar argued that the acceptance was withdrawn because it was
The court also took judicial notice that, in 2005, the Kuala Lumpur High
made in error—the mark contravenes Section 10(1)(c), (d) and (c) of the
Court had declared the appellant’s trademark High Temp Red as distinctive
Trade Marks Act 1976. Section 10 is the registrability section, which allows
under a granted Trade Description Order. The Order was for the exact
registration of a trademark application if it fulfils any of the conditions for
mark High Temp Red that had been registered for Class 1 bearing Trade
registration mentioned in Section 10(1) (a) to (e).
Mark Number 02005833. Thus, the refusal to grant registration to its
The objections were premised on the fact that the mark consists of non-
sister Class 17 application rendered the registrar’s decision irrational—a
invented words that are descriptive and non-distinctive. The judge dealt
mistake that the court felt obliged to rectify.
with the first premise by pointing out that the appellant’s trademark must be
Concluding with a caution that the registrar should maintain consistency
seen and considered singularly. Though consisting of three words, it is the
and certainty in deciding to allow or refuse a mark for registration,
combination of these words that the appellant sought to register and protect.
the judge stated that arbitrary decisions, and overpresumptuous and
overcautious assessment and treatment of a trademark would not enable
With regards to the descriptiveness objection, the judge stated that the
businessmen and members of the public at large to conduct their business
registrar had taken an overpresumptuous approach based on a wrong and
with confidence.
narrow proposition of the appellant’s trademark. The mark when considered
does not directly refer to gasket silicones—the goods applied for. In fact, the
court found that there is no meaning at all to the mark High Temp Red.
Azlina Aisyah Khalid is senior legal counsel at Henry Goh & Co. Sdn.
As for the third objection, the court gently chided the registrar on its erroneous
Bhd. She can be contacted at: azlina@henrygoh.com
method of breaking up the appellant’s mark into individual and separate
words namely ‘High’, ‘Temp’ and ‘Red’, when the correct methodology was to Henry Goh & Co. acted as the appellant’s trademark agent in this case.
www.worldipreview.com World Intellectual property review September/October 2009 65
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