Courtroom Chronicles: The Battle of IP Rights - Chapter 15

Case: Bonia International Holdings Pte Ltd vs. The Registrar of Trademarks, Malaysia [2023] MLJU 834

Key Details of the IP Case:

Bonia International Holdings Pte Ltd sought to overturn the decision of the Registrar of Trademarks, Malaysia, which rejected their application to register a two-letter trademark "CR" for goods in Class 14. The mark consisted solely of the letters "C" and "R" without any special font or stylisation. The Registrar’s decision was based on Section 10(1) of the Trade Marks Act 1976, which requires trademarks to meet certain criteria to be considered distinctive and registrable. The Registrar concluded that the mark lacked distinctiveness, a key requirement under the Act.

Legal Arguments and Rulings:

1. Inherent Distinctiveness:

The court found that the two-letter mark "CR" was not inherently distinctive. It did not possess unique features or a special representation that would distinguish Bonia's goods from others in the market. The judgment referenced prior case law and guidelines, which indicated that simple letter combinations are commonly used in trade and do not inherently serve as identifiers of origin unless they have been distinctly stylized or combined in a unique way.

2. Factual Distinctiveness:

Bonia argued that the "CR" mark had acquired distinctiveness through continuous and extensive use in Malaysia. However, the court found that the evidence submitted primarily related to other marks associated with "Carlo Rino" rather than the "CR" mark on its own. The use of "CR" was often accompanied by other branding elements, and there was insufficient evidence showing that "CR" alone functioned as a trademark distinguishing Bonia’s goods from those of others.

3. Foreign Registration:

Bonia also contended that the successful registration of the "CR" mark in Singapore should influence the Malaysian decision. However, the court reiterated the territorial nature of trademark laws, stating that each jurisdiction has its own standards for determining distinctiveness. Therefore, the registration in Singapore did not bind the Malaysian Registrar, and there was no legal error in rejecting Bonia's application based on local requirements.

Practical Implications:

This case highlights the importance of distinctiveness in trademark registration, particularly for businesses seeking to protect simple letter combinations. To secure trademark registration, companies must ensure their marks possess unique characteristics or stylizations that make them capable of distinguishing their products.

Additionally, businesses should document continuous and widespread use of the mark in a manner that clearly associates it with their goods to establish factual distinctiveness.

My Comments:

The IP Court's detailed analysis of trademark distinctiveness provides valuable insights for businesses navigating the registration process. When selecting trademarks, opting for unique designs, invented words, or stylized representations can increase the chances of successful registration. For marks consisting of letter combinations, evidence of distinct use in the marketplace is crucial.

Moreover, businesses should recognize that trademark protection is territorial in nature, meaning that registration in one country does not guarantee approval in another. This case reaffirms the importance of strategic legal planning and robust evidence to support trademark applications.

If you have any questions regarding the article, please feel free to contact our managing partner, Eugene Yeong.