Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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.


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

more from across site and ros bottom lb

More from across our site

Counsel are eying domestic industry, concurrent PTAB proceedings and heightened scrutiny of cases before institution
Jack Daniel’s has a good chance of winning its dispute over dog toys, but SCOTUS will still want to protect free speech, predict sources
AI users and lawyers discuss why the rulebook for registering AI-generated content may create problems and needs further work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
A technical effect must still be evident in the original patent filing, the EBoA said in its G2/21 decision today, March 23
Brands should not be deterred from pursuing lookalike producers, and an unfair advantage claim could be the key, say Emma Teichmann and Geoff Steward at Stobbs
Justice Mellor’s highly anticipated ruling surprised SEP owners and reassured implementers that the UK may not be so hostile after all
The England and Wales High Court's judgment comes ahead of a separate hearing concerning one of the patents-in-suit at the EPO
While the rules allow foreign firms to open local offices and offer IP services, a ban on litigation and practising Indian law could mean little will change
A New York federal court heard oral arguments this week in a copyright case pitting publishing giants against a digital library