Marqonsult

1. McLaren International Limited v Lim Yat Meen [2008] 1 AMR 243 CA; 8 June 2009 (unreported), Federal Court
2. UBS AG v UBS Corporation Sdn Bhd [2009] 4 MLJ 93

Final Pit-Stop for McLaren International Limited

Summary:

The Federal Court of Malaysia has affirmed the decision of the Court of Appeal to disallow the appellant, Mc Laren International, from expunging the respondent’s “McLaren” trademark which had been registered in 1992 on the grounds that the appellant does not have the requisite locus standi as a person aggrieved to contest the respondent’s registration under Section 45 of the Trade Marks Act 1976 (“said Act”).

Earlier in 1999, the appellant claiming to be the bona fide proprietor of the trademark “McLaren” had sought to register the mark in respect of “articles of clothing, footwear and headgear” in Class 25 but the appellant’s application was rejected by the Registrar of Trade Marks pursuant to Section 19(1) on account of the respondent’s prior registration for the same mark in respect of “articles of clothing, including boots, shoes and slippers” in the same class.

The appellant failing in the High Court and Court of Appeal to prove itself to be a person aggrieved appealed to the Federal Court. The Federal Court in finding that the appellant could not by merely filing an application be conferred the necessary locus standi for the purpose of rectification proceedings stated that “a person whose application for registration of his trade mark is jeopardized by Section 19(1) cannot, without more, qualify as a person aggrieved, because he could be a mere busybody”.

The Federal Court judge then proceeded to address the alternative relief sought initially by the appellant in the original motion of varying the respondent’s registration for non-use of some of the goods. Since it is an admitted fact that the respondents had used their registered mark only in respect of executive men’s shoes, the Federal Court held that should the appellant have possessed the requisite locus standi, the Court would have been prepared to grant the appellant the alternative relief sought.

UBS AG succeeds in blocking alteration of mark to UBS

Summary:

The plaintiff, UBS AG, is a leading global financial services firm and the common law and registered proprietor of the mark “UBS” in various jurisdictions worldwide. The defendant, UBS Corporation Sdn Bhd, is the registered proprietor of the trademark “UBS” in Malaysia in respect of computer software included in Class 09 since 1993.

The defendant had originally represented the mark when it was applied for and first registered as a square logo with a rectangular component and the letter UBS was underscored by the words “User Business System”. These representations were subsequently amended by the defendant resulting in the current representation of the mark with just the letters “UBS”, and which amendments were allowed and gazetted in 2001.

The court agreed that the defendant had been continuously using the trademark “UBS” for its products since 1991 before the plaintiff ventured into the Malaysian market and had acquired enormous goodwill and reputation in Malaysia as a reputable accounting software provider.

The plaintiff claiming that it was a person aggrieved by the alteration of the mark made in the Register evoked Section 45 of said Act to rectify the Register. The court held that the plaintiff was a person aggrieved by first quoting the requirements in Paragraph 25.35 of the WIPO Manual of Trade Mark Law and Practice in Malaysia that this phrase should be construed liberally.

The trial judge further substantiated the merit of the plaintiff on the basis that the use of the mark “UBS” by the defendant would cause the public to associate it with UBS the bank and wealth manager. As the business of UBS AG involves maintenance of high levels of public confidence in its financial and business experience, discretion and judgment, the defendant would gain by the association, whether the defendant intended it or not, with the mark “UBS” but the reverse would not hold true for the plaintiff. Further, if the plaintiff were to apply to register UBS now, it would be blocked by the defendant’s registration. Therefore, the trial judge acknowledged that the plaintiff was a person aggrieved within the meaning of Section 45 of said Act.

The plaintiff also claimed that the defendant’s amendment of the mark did not conform with the requirements in Section 44 of said Act. The trial judge acknowledged that the deletion of the words “User Business System” removed the qualification to the letters “UBS” in the trademark so that there is nothing to show the defendant’s mark is not the common law “UBS” mark of UBS AG. It was held therefore that the alteration affected the identity of the mark substantially, and was not a permissible alteration.

In coming to its decision, the High Court was mindful of the territorial nature of trademarks and careful not to base the decision on the premise that no person can register for his use a foreign mark. The High Court had instead taken into consideration the fact that UBS AG has a representative office in Malaysia and the fact that advertisements of UBS AG services have appeared in publications in circulation in Malaysia since the 1980s. As the introduction of the amendments to said Act to include prohibitions against registration of well-known marks came into effect in 2000, their application would be relevant to the alteration of the defendant’s mark made in 2001 but not to the original registration of 1993. Therefore, the Court ordered that the Register be rectified by the removal of the amendments made to the defendant’s original mark, but not the removal of the mark in its original form.

Comments:

This decision was handed down on 4 December 2008, prior to the Federal Court’s judgment in the McLaren case. The liberal approach adopted by the High Court in this case appears contradictory to the restrictive approach of the Federal Court on the issue of conferring a plaintiff locus standi as a person aggrieved. Unlike the plaintiff in the McLaren case, UBS AG had not, at the commencement of the lawsuit, filed a trademark application in Class 9 and only relied on its reputation as a well-known mark to qualify as a person aggrieved.

ABOUT THE AUTHOR:

Clara C.F. Yip, Founding Director, MarQonsult IP (MALAYSIA)

Ms Yip holds a Law and Economics degree from University of Auckland, New Zealand. She gained admission to the Malayan Bar and the New Zealand Bar in 1994 and 1993 respectively and worked in legal firms as well as one of the largest patent and trademark firms in Kuala Lumpur. She left legal practice in late 2001 and founded MarQonsult IP in February 2002, an IP boutique firm specialising in the protection, licensing and enforcement of Intellectual Property Rights. A member of FICPI, AIPPI, APAA, INTA, ABA International and MARQUES, she is fluent in English, Malay and Cantonese and is conversant in French and Mandarin.