Three appellants namely Ooi Siew Bee, BM Eng Leong Sdn. Bhd and Tan Choo Hin (hereinafter referred as “the original Plaintiffs”) had made an appeal in the Court of Appeal (COA) against the dismissal of their application to expunge the respondent’s, Zhu Ge Kong Ming Sdn. Bhd. (hereinafter referred as “the original Defendant”) trade marks by the High Court of Malaya.
In the past, the original Defendant had commenced an action at the High Court of Alor Setar against the original 2nd Plaintiff for the following relief:
- an action for trade mark infringement of the original Defendant’s Registered Trade Marks;
- an action of passing off of the original Defendant’s Chinese prayer papers and boxes consisting of the Chinese words “Huan Zhai Jin” and the “get ups”.
The High Court dismissed the original Defendant’s claim on the basis that the Chinese words “Huan Zhai Jin” on Chinese prayer papers and boxes were common words in Mandarin language and the original Defendant had no exclusive rights over the words. The original Defendant had made an appeal to the Court of Appeal and the appeal was dismissed. The appeal was dismissed as the Court of Appeal was of the view that there were no trade mark infringements as the Chinese words “Huan Zhai Jin”, the combination of the colours and the usage of the symbolism and imagery used by the original Defendant was not exclusive to the original Defendant and they were commonly used by the Chinese/Taoism community in relation to their beliefs and rituals.
The original Defendant had also filed a motion for leave to the Federal Court and the original Defendant’s leave application was also dismissed.
Prior to this appeal, the original Plaintiffs applied to expunge the original Defendant’s Registered Trade Marks and seek for the following orders:
- an order pursuant to the section 45 of the Trade Marks Act 1976 (hereinafter referred to as “the TMA 1976” that the Register be rectified by expunging the mark as an entry wrongfully remaining in Register;
- an order pursuant to section 37 of the TMA 1976 that the Register be rectified by expunging the mark as an entry wrongfully remaining in Register;
- an order pursuant to section 10(1) of the TMA 1976 that the mark be removed from the Register in respect of all the goods in respect of which it was registered.
The original Plaintiffs claimed that they are persons aggrieved as a result of the original Defendant’s Registered Trade Marks.
However, the High Court dismissed the original Plaintiffs’ claim on the following grounds:
- the original 3rd Plaintiff, Chinese Prayer Material Society was not an aggrieved person under Section 45(1)(a) of the TMA;
- the original 3rd Plaintiff was not the first user of the trade mark “Huan Zhai Jin” in 1998;
- as the Registered Trade Marks have been registered for more than 7 years, section 37 of the TMA 1976 applies and as such, the original Plaintiffs cannot expunge the Registered Trade Marks on grounds other than those provided under section 37 of the TMA 1976;
- the original Plaintiffs failed to adduce evidence to prove grounds for expungement under section 37 subsections (b) and (c) of the TMA 1976.
The original Plaintiffs since then filed an appeal with the COA on two main questions that need to be answered in the COA which are as follows:
- whether the original 3rd Plaintiff was an aggrieved person?
- whether the Chinese words “Huan Zhai Jin” was a common word used in relation to the burning of prayer papers and boxes was caught by the doctrine of res judicata?
Aggrieved Person
The original 3rd Plaintiff contended that the High Court had erred in law and fact that when it decided that the original 3rd Plaintiff did not have locus standi to sue on the basis that the society is not an aggrieved person.
The original Defendant had disputed that the original 3rd Plaintiff was to be regarded as an aggrieved person. The learned counsel for the original Plaintiffs had presented evidence to establish that the original 3rd Plaintiff was a society which was importing and selling Chinese prayer papers and boxes with the trade mark “Huan Zhai Jin”. However, this had been dismissed by the High Court based on the ground that the original 3rd Plaintiff had not used the mark in the course of trade. The High Court had found that:
- The original Plaintiffs had not adduced any evidence that the Chinese Prayer Material Society (3rd Plaintiff) had imported and sold prayer papers and boxes bearing the 1st Defendant’s Registered Trade Marks. In fact, one of the witnesses testified during cross-examination that the Chinese Prayer Material Society was not involved in any trading, hence, will not suffer any loss due to the outcome of this expungement suit. As such, the Chinese Prayer Material Society was not “person who had used its mark as a trade mark… in course of a trade” within the meaning of the first limb of “person aggrieved” as explained in the landmark case of McLaren International.
- There was no evidence that the Chinese Prayer Material Society had genuine and present intention to use the original Defendant’s Registered Trade Marks in the course of trade. As such, the Chinese Prayer Material Society did not fall within the second limb of “person aggrieved” as decided in McLaren International.
It is important to determine whether the issue of res judicata is applicable based on the findings of the COA. Learned counsel for the original Plaintiffs had pointed out that the COA had concluded that the Chinese characters “Huan Zhai Jin” were deemed to be common descriptive words and were not invented/coined by the original Defendant. Hence, the original Defendant was not entitled to the exclusivity of the words and the original Defendant’s Registered Trade Marks ought to be removed from the Register. On the other hand, the learned counsel of the original Defendant submitted that the cause of action brought by the original Plaintiffs in the expungement suit was for the expungement of the original Defendant’s Registered Trade Marks from the Trade Marks Registry pursuant to the section 45 of TMA 1976. According to section 45 of the TMA 1976, plaintiffs must establish that (1) the original registration was obtained by fraud; (2) the trade mark offends section 14 of the TMA 1976 or (3) the trade marks were not, at the commencement of the proceedings, distinctive of the goods or services of the registered proprietor.
Although the High Court had concluded that the Chinese characters “Huan Zhai Jin” were not common descriptive words as the meaning of the three combined Chinese characters were not found in the Chinese dictionary, but in contrast, the COA had determined that the three Chinese characters were common descriptive words and they were not invented/coined by the original Defendant. According to the principle of res judicata, once the issue had been decided previously, the parties cannot reopen it as it will risk conflicting decisions. Therefore, the COA held that the High Court was wrong for it to decide on the issue even though it acknowledged the decision made in the COA.
The COA held that the three Chinese characters “Huan Zhai Jin” were common descriptive words and therefore the original Defendant cannot monopolise the use the words. Therefore, the COA held that the original Plaintiff’s appeal to be allowed and the original Defendant’s Registered Trade Marks to be expunged from the Register.