A breach of natural justice
The plaintiff, Ginvera Marketing Enterprise Sdn Bhd, developed an exfoliating gel product and started selling under the brand name ‘Marvel Gel’.
In 1999, Ginvera applied to register ‘Marvel Gel’ as its trademark. The defendant, Tohtonku Sdn Bhd, opposed Ginvera’s application when the trademark ‘Marvel Gel’ was advertised in the Government Gazette, contending that it had used the name as part of the description for one of its skin products, known as ‘Follow Me UV White Marvel Gel’.
Despite the impending opposition proceedings, the registrar issued the Certificate of Registration for Marvel Gel even when a search conducted at the office of the registrar showed the legal status of Ginvera’s application as ‘pending (opposition)’.
In 2002, Ginvera made a claim against Tohtonku for its use of ‘Marvel Gel’ on the basis that such use infringed its ‘Marvel Gel’ trademark and/or constituted an act of passing off. Ginvera also claimed that the defendant’s subsequent use of ‘Renewal Gel’ in December 2002 amounted to passing off.
The High Court rejected Ginvera’s argument, holding that the Certificate of Registration had been issued in violation of the Trademarks Act and Trademarks Regulations which expressly provide for opposition.
As Tohtonku had been denied the right to be heard in the opposition proceedings, the certificate had been obtained in breach of the principles of natural justice and was thus invalid. As such, Ginvera’s claim for trademark infringement could not stand as the ‘Marvel Gel’ mark was, in effect, unregistered at the relevant time.
“AS TOHTONKU HAD BEEN DENIED THE RIGHT TO BE HEARD IN THE OPPOSITION PROCEEDINGS, THE CERTIFICATE HAD BEEN OBTAINED IN BREACH OF THE PRINCIPLES OF NATURAL JUSTICE.”
The court proceeded to consider the claim of passing off and found that the use of the words ‘Marvel Gel’ on Tohtonku’s products was unlikely to lead ordinary members of the public to believe that Tohtonku’s product was Ginvera’s Marvel Gel.
The reasoning for this was that the presentation of Tohtonku’s product was characteristically different from that of Ginvera and Ginvera had failed to establish that customers had been confused by Tohtonku’s use of ‘Marvel Gel’.
Further, the term ‘Marvel Gel’ was descriptive of the product in question and had not acquired a secondary meaning in law such that the public would associate the mark with Ginvera and not with the description concerned.
Although Ginvera had submitted survey evidence to prove consumers’ confusion, the court did not give it any weight on the basis that (i) the survey was carried out after the commencement of the suit; (ii) the survey forms were never produced in court; (iii) the respective persons who conducted the interviews did not give evidence; and (iv) the questions asked by the interviewee were framed in such a way to ensure a finding in favour of Ginvera.
Although the issues were not novel, this is the first time Malaysian courts have made a finding that a Certificate of Registration issued in violation of the provisions of the act and regulations which confer a substantive right to be heard by way of opposition procedure would be a breach of the principles of natural justice.
