All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

Malaysia: Likelihood of confusion in trade mark registrations

BRG Brilliant Rubber Goods (M) Sdn Bhd v Santa Barbara Polo & Racquet Club Management Inc; Pendaftar Cap Dagangan,Malaysia (Interested Party) And Another Case [2015] 4 CLJ, concerned an appeal against the Registrar's decision to dismiss the plaintiff's objections to the defendant's trade marks.

The plaintiff was a Malaysian company involved in the manufacture and sale of products using the Polo marks in Malaysia, and had obtained registrations for them in 1981. The defendant was the management company of the Santa Barbara Polo & Racquet Club, established in 1911 and the third oldest polo club in the United States of America. The defendant's mark was created in 1911 and registered in Malaysia in 1993 (see illustration).

Plaintiff’s mark

Defendant’s mark


Plaintiff's mark Defendant's mark

The plaintiff submitted that the defendant's mark nearly resembled the plaintiff's mark and was likely to cause confusion premised upon section 19(1) of the Trademarks Act 1976. However, the Court held that :-

  • visually, conceptually or phonetically, the two marks were clearly different;

  • the plaintiff had not secured any registration for the word mark Polo;

  • even if the word polo was compared between both marks, they were not confusingly similar;

  • in any event, component features of a mark cannot be selected and compared with selective components of another mark. In this respect, the word Polo in the plaintiff's mark could not be compared with the word Polo in the defendant's mark; and

  • the words "Santa Barbara", "Racquet Club" and the device of a polo player on horseback meant that the defendant's mark was distinct from the plaintiff's mark.

The plaintiff further relied on section 14(1)(a) of the Trademarks Act 1976 in arguing that the defendant's mark was confusingly and deceptively similar to the plaintiff's family of trade marks, including inter alia the marks Polo, POLO, Polo player device and Horse device. Where an earlier mark was part of a series of marks owned by the same proprietor and that part was taken as the common element of the series of marks, then the likelihood of confusion or deception was very high.

However, the Court held that the plaintiff could not claim a monopoly over anything with the word polo, the horse device or polo player device. The plaintiff had to prove its ownership of the mark through registration or as a common law proprietor of the marks. The Court held that the defendant's mark consisted of the full name of the club, which formed an integral part of the defendant's mark. The words Santa Barbara were therefore more pronounced than the word polo.

The appeal was accordingly dismissed.

Wong-Ling-Yah

Chew Kherk Ying

Wong Ling Yah


Wong & PartnersLevel 21, The Gardens South Tower, Mid Valley City, Lingkaran Syed Putra59200 Kuala LumpurMalaysiaTel: +603 2298 7888Fax: +603 2282 2669www.wongpartners.com

More from across our site

In-house and private practice counsel discuss issues with pre-grant opposition in India, including the rise of non-speaking orders and straw man filings
The US Supreme Court rejected an appeal on American Axle, dashing hopes of a judicial fix to patent eligibility uncertainty
The Copyright Office refused to grant protection on the basis that the authorship couldn’t be distinguished from the final work produced by the program
COVID vaccines top Clarivate’s new brands list; Fed Circuit reverses Coca-Cola’s TTAB win; Skechers sues Brooks; USPTO to retire Public PAIR tool; CCB sees cricket complaint
Lawyers should pay attention to APJs’ questions and remember that PTAB proceedings aren’t jury trials, say former PTAB judges
The USPTO cancelled ‘Galavava’ and 'Surfstar Wake' and partly cancelled ‘Heika’ this month
We have published all the 2022 rankings of the leading firms for patent litigation and protection work
In-house and private practice counsel say UK judges have raised the bar for preliminary injunction requests
António Campinos will serve another five years as EPO president – perhaps he’ll calm unrest at the office in that time
LGBTQ IP lawyers say using rainbow colours and posting solidarity messages on social media must be followed by concrete action
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree