Malaysia: Collecting information and insight not trade mark use
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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

Malaysia: Collecting information and insight not trade mark use

In Philip Morris Brands Sarl v Rothmans Brands Sdn Bhd & Anor, the court held that collating information and gathering insights does not amount to "use" under the Trade Marks Act 1976 (TMA).

The case related to expungement of the defendant's marks for the word Parliament and the three logos (shown above), all registered for tobacco products and smokers articles in Class 34. The plaintiff, as an aggrieved party, has made an application to expunge the defendant's Parliament marks on grounds that there was no use in good faith by the defendant pursuant to section 46(1)(b) of TMA.

cigs

The plaintiff has established that it is an aggrieved party by virtue of its worldwide use of the Parliament mark with the intention of expanding its business in Malaysia under the same mark.

In establishing non-use, the plaintiff relied upon investigation reports and information obtained from the defendant's website including annual report of the BAT Malaysia and BAT Malaysia's price list report. The judge held that this information is sufficient to establish prima facie non-use and that there is no requirement in law that requires the plaintiff to conduct a market survey.

The first defendant's only evidence of use of the Parliament marks was the launch of cigarettes bearing the Parliament mark in January 2008 and sales of 8½ cartons. The first defendant contended that it has made a commercial decision to temporarily halt the sale of cigarettes bearing the Parliament mark to review and revise its launch strategy. As the application to expunge was made on April 9 2014, the use in January 2008 is beyond the relevant statutory period which is between March 9 2011 and March 9 2014.

The defendant contends that it has used the Parliament mark during the statutory period by way of conducting research and development to ensure the commercial success of Parliament cigarettes. The judge held that "studying and collating information" and "gathering insights" for purposes of a revised launch plan does not amount to use of the Parliament mark. Section 3(2) of the TMA and the case of Godrej Sara Lee v Siah Teong Teck & Anor (No 2) [2008] 7 CLJ 24 provide that use of a mark must be physical use and would include affixing the mark to goods or advertising material.

In Lam Soon Edible Oil v Hup Seng Perusahaan Makanan (M) Sdn Bhd [2010] 5 CLJ 975, the judge had similarly considered the issue of continuous development, research and collation of information during the relevant statutory period when considering the question of use. The judge in the present case however distinguished this case with that of Lam Soon as there was continuous advertising, finalisation of packaging artwork and acquisition of raw materials of goods during the statutory period which were absent in the present case.

The judge further held that the defendant cannot rely on the special circumstances of non-use under section 46(4) of the TMA on the basis that the Control of Tobacco Products Regulations prohibits tobacco advertising. The defendant had made a commercial decision to halt sales of the cigarettes bearing the Parliament marks for purposes of collating information and gathering insights hence it is concluded that there is no physical use by the defendant.

The Court's decision affirms that use under the TMA must be in relation to physical use of a mark and merely collating information, conducting research and development for commercial strategy is not sufficient to prevent expungement on the basis of non-use.

teng

Chew Kherk Ying

Woo Wai Teng


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 site and ros bottom lb

More from across our site

As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Pham Nghiem Xuan Bac, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Counsel explain how pricing flexibility, patent agents and being business partners can help them maintain profitable patent prosecution practices
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Speakers at an INTA event weighed in on why firms should create AI use policies and how they stay on top of the latest developments
The England and Wales Court of Appeal backed Lidl in its trademark dispute with Tesco, but we should pay more attention to how we rule on first-instance decisions
Richard Kempner, partner at Haseltine Lake Kempner, discusses the ‘remarkable’ comments from judges, despite the court finding against his client Tesco on the bulk of issues
Gift this article