Federal Court provides crucial trademarks clarification

01-02-2012

Chew Kherk Ying and Sonia Ong

The Malaysian Federal Court 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.

The 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. The 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.

The 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.


Malaysian FC, Trademark clarification

WIPR