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JURISDICTION REPORT: MALAYSIA


FEDERAL COURT PROVIDES CRUCIAL TRADEMARKS CLARIFICATION


Chew Kherk Ying and Sonia Ong Wong & Partners


Te Malaysian Federal Court (FC) recently clarified the High Court’s position in appeals against decisions of the registrar of trademarks in Yong Teng Hing B/S Hong Kong Trading Co. v Walton International Limited.


Yong is the registered proprietor of the Giordano mark in Classes 13, 18 and 25 in Malaysia. Te matter arose as a result of an opposition filed by Walton against Yong’s registration of the Giordano mark in respect of eyewear in Class 9. Walton’s allegation was that the mark filed by Yong resembles its Giordano mark, for which Walton had acquired significant goodwill and reputation in many countries, including Malaysia. Te registrar and the High Court ruled against Walton on grounds that Yong was the first user of the mark for goods in Class 9, which were of a different description from Walton’s goods (clothing and apparel) and for which Walton did not have any goodwill and reputation. However, the Court of Appeal found otherwise and allowed Walton’s appeal. Yong subsequently appealed to the FC.


In its preliminary objection, Walton submitted that the High Court was acting in its appellate capacity when deciding the matter against the decision of the registrar. Further, the registrar, when hearing the opposition, was exercising a judicial function which was equivalent to a decision of an inferior court. Terefore, the final appeal should lie at the Court of Appeal. Yong claimed otherwise, that the High Court was exercising its original jurisdiction and thus the registrar was not to be deemed a subordinate court.


Te FC determined two questions: first, whether the decision of the registrar was equivalent to a decision of a subordinate court and second, whether the High Court was exercising its original or appellate jurisdiction when hearing an appeal from the decision of the registrar in a trademark opposition.


Te FC answered the first question in the negative. Te Subordinate Courts Act applies only to the Sessions Court, Magistrate’s Court and Penghulu’s Court, for which there lies a right of appeal to the High Court exercising its appellate jurisdiction. No other courts, tribunals or statutory bodies are equivalent to a ‘subordinate court’ in this context. Te FC also referred to case law to support the statutory position. In Sundaram v Chew Choo Khoon, it was held that the Collector of Land Revenue was not a ‘subordinate court’ and thus an appeal from his decision did not amount to an appeal from a subordinate court to the High Court, but rather a rehearing of the matter. Te same conclusion was arrived at by the Court of Appeal in Austral Amalgamated Tin Bhd v Abdul Wahab Kupon, in respect of an appeal from the decision of the Labour Office.


It followed that the FC’s answer to the second question was that the High Court exercises its original jurisdiction when hearing an appeal


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“THE FUNDAMENTAL PRINCIPLE IS THAT THE HIGH COURT EXERCISES ITS ORIGINAL JURISDICTION IN HEARING APPEALS FROM STATUTORY BODIES SUCH AS THE REGISTRAR, UNLESS THE APPEAL AROSE FROM A SUBORDINATE COURT.”


against a decision of the registrar. Te FC, in adopting the principle in the Australian Federal Court case of Committee of Direction of Fruit Marketing v Australian Postal Commission, held that the meaning of ‘appeal’ must be looked at based on its context of use rather than its conventional understanding. Te fundamental principle is that the High Court exercises its original jurisdiction in hearing appeals from statutory bodies such as the registrar, unless the appeal arose from a subordinate court. To support the proposition that the High Court exercises its original jurisdiction, the FC also cited section 67 of the Trade Marks Act, which provides that the High Court exercises the same discretionary powers as are conferred upon the registrar in any appeal from the decision of the Registrar—it is in effect a fresh hearing before the High Court.


Te position taken by the FC is welcomed, as parties in trademark disputes can now take comfort in the possibility of appealing to the highest court.


Chew Kherk Ying is a managing partner at Wong & Partners. She can be contacted at: kherk.ying.chew@wongpartners.com


Sonia Ong is an associate at Wong & Partners. She can be contacted at: sonia.ong@wongpartners.com


World Intellectual Property Review January/February 2012 www.worldipreview.com


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