1 May 2013Jurisdiction reportsChew Kherk Ying and Sonia Ong

Trademark appeals in Malaysia

This was confirmed by the Federal Court in Yong Teng Hing B/S Hong Kong Trading Co. v Walton International Limited in July 2011.

The Federal Court decided in this case that the Registrar of Trade Marks was not a ‘subordinate court’, which was an important assessment as the Subordinate Courts Act only applies to the Sessions Court, Magistrates Court and Penghulu’s Court for which there lies a right of appeal to the High Court exercising its appellate jurisdiction.

Therefore, in all other cases, the High Court was deemed to be exercising its original jurisdiction. This stems from Section 96 of the Courts of Judicature Act, which requires that an appeal heard by the Court of Appeal emanates from a decision decided by the High Court in the exercise of its original jurisdiction.

In January 2013, the Federal Court discussed the same issue in the case of Tio Chee Hing v United Overseas Bank (Malaysia) Bhd. Unlike Walton, this case involved an appeal against the decision of the assistant commissioner of land revenue for an order for sale of the lands charged to the respondent bank under the Sabah Land Ordinance.

“DECISIONS OF THE HIGH COURT IN AN APPEAL AGAINST DECISIONS OF THE REGISTRAR OF TRADE MARKS ARE ONLY SUBJECT TO ONE LEVEL OF APPEAL—TO THE COURT OF APPEAL.”

Having lost appeals at both the High Court and Court of Appeal, the appellant sought final recourse at the Federal Court. The respondent filed a preliminary objection on the ground that the impugned decision was not made by the High Court in the exercise of its original jurisdiction and therefore, the appellant could not appeal to the Federal Court as the matter ended with the decision of the Court of Appeal.

In considering the respondent’s preliminary objection, the Federal Court disagreed with the view it took in Walton and held that it was not necessary for it to undertake an inquiry into the status of the tribunal in order to categorise it as a subordinate court. The court reasoned that the Federal Court was never set up to look into factual matters or be bogged down by exercises that should have been resolved at the High Court stage.

Rather, the pivotal issue is whether the High Court was exercising its original jurisdiction or appellate jurisdiction when hearing the matter. The Federal Court assessed the provisions of the Sabah Land Ordinance relating to appeals and interpreted the statute as barring the High Court from exercising its original jurisdiction, thus leaving it with an appellate jurisdiction only. Accordingly, the appellant was not granted leave to appeal to the Federal Court.

Although the recent decision of the Federal Court was not applied in the context of an appeal against the decision of the Registrar of Trade Marks, it expressly disagreed with the approach it took in Walton. Therefore, the current position appears to be that decisions of the High Court in an appeal against decisions of the Registrar of Trade Marks are only subject to one level of appeal—to the Court of Appeal, without the possibility of a further appeal to the Federal Court.

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