Malaysia: Confusion and honest concurrent use
The case of Dynawell Corporation (M) Sdn Bhd v Dynasty Landmark Sdn Bhd; Pendaftar Cap Dagangan Malaysia  1 LNS 1195, concerned an appeal against the Registrar's decision which disallowed the registration of the plaintiff's Dynasty mark.
The plaintiff operates and manages its hotel business, the Dynasty Hotel in Kuala Lumpur, and filed an application for its Dynasty trade mark in 2000. The defendant opposed the plaintiff's application in 2007. The Registrar subsequently disallowed the plaintiff's application for its Dynasty trade mark. The defendant is the registered proprietor of the trade mark Dynasty Hotel and operates its hotel business in Sarawak, east Malaysia since 1992. The plaintiff's and the defendant's marks are illustrated.
The plaintiff challenged the Registrar's decision in this appeal on the ground that the Registrar has erred in law and in fact.
Confusion and deception
The High Court endorsed the test adopted in the decision in Tohtonku Sdn Bhd v Superace (M) Sdn Bhd  2 MLJ 63 and in applying this test, the High Court considered the visual differences of the marks, the goods/services to which they are applied and the channels through which the goods/services are bought or sold.
Based on this test, the High Court held that both the plaintiff's and the defendant's marks are similar and the plaintiff's mark cannot be allowed in the market as it will result in confusion and deception.
It is also of interest that the High Court held that where parties' services are in direct competition, namely the hotel services industry, only a small degree of similarity is required to establish the likelihood of confusion.
Plaintiff’s trade mark(Application number 00012622)
Defendant’s trade mark(Registration number 98002352)
Providing hotel accommodation; food and drink catering; cafes; cafeterias; canteens; rental of temporary accommodation; boarding houses; tourist homes; hotels; restaurants; boarding house bookings; hotel reservation; self-service restaurants; snack-bars; cocktail lounge services; holiday camp services; temporary accommodation reservations; motel; rental of meeting rooms; all being services included class 43.
Services for providing food and drink, temporary accommodation; all included in class 43
Honest concurrent user
The defence of "honest concurrent use" was raised by the plaintiff. However, the High Court held that this defence is not available to the plaintiff as it had only used the mark for about three years after the defendant has used its mark in the same hotel service industry. It is also worth noting that the High Court disallowed the submission of the plaintiff on honest concurrent use as it was not raised before the Registrar and was therefore precluded from being raised in the appeal. The plaintiff's appeal was accordingly dismissed.
The High Court decision will be welcomed by trade mark owners as the decision endorsed the test of comparison of two similar marks and the decision also gave some clarification that three years' usage may not be sufficient for a party to raise a defence of honest concurrent use.
Chew Kherk Ying
Wong & PartnersLevel 21, The Gardens South Tower, Mid Valley City, Lingkaran Syed Putra59200 Kuala LumpurMalaysiaTel: +603 2298 7888Fax: +603 2282 2669www.wongpartners.com