Case: Chin Mei Koon (trading as Xu Care Trading) vs. Soo Yah Hoi [2024] CLJU 322
Key Details of the IP Case:
Chin Mei Koon, operating as Xu Care Trading and acting on behalf of Nanjing Lingdu E-commerce Co., Ltd, sought to invalidate Soo Yah Hoi's registered trademark "Dr. Chu" for various sanitary masks under Class 10. The application was made under sections 47(1), (3), and (6) of the Trademarks Act 2019.
The IP court dismissed the application on several grounds, including non-compliance with procedural rules and the plaintiff's failure to establish that they were an aggrieved person under the Act.
Trademark in Dispute:
"Dr. Chu"
Legal Arguments and Rulings:
The IP court found that the affidavit supporting the Originating Summons did not comply with the Rules of Court 2012, as it was not properly prepared in the national language.
Additionally, the plaintiff, Xu Care Trading, was not correctly named in the application, leading to further procedural issues.
The IP court also determined that Nanjing Lingdu was not an aggrieved person, as they had not demonstrated a genuine intention to use the trademark in Malaysia.
Practical Implications:
This case highlights the importance of strict compliance with procedural requirements in IP disputes. It underscores the need for clear and accurate documentation, proper naming of parties involved, and establishing a genuine intention to use a trademark in the jurisdiction where protection is sought.
In the judgment, the IP court emphasised the necessity of being an "aggrieved person" to seek invalidation of a trademark under sections 47(1), (3), and (6) of the Trademarks Act 2019. The judge pointed out that Nanjing Lingdu, the real party seeking invalidation, did not succeed in proving that it had a genuine and present intention to use the "Dr. Chu" trademark in Malaysia. The IP court stated, "Nanjing Lingdu has not satisfied this Court that it is an aggrieved person and therefore able to proceed with its application to invalidate the Defendant’s Trademark".
The IP court referenced several legal precedents, including Fazaruddin bin Ibrahim v Parkson Corp Sdn Bhd [1997] 4 MLJ 360 and McLaren International Ltd v. Lim Yat Meen [2009] 4 CLJ 749, to support its decision. These cases clarified that a person aggrieved is one who has a genuine commercial interest or intention to use the trademark in question within the jurisdiction. The judge found that Nanjing Lingdu had failed to demonstrate such an interest, particularly since it had never applied to register the "Dr. Chu" trademark in Malaysia, and there was no evidence of any genuine intention to use the mark in the Malaysian market.
My Comments:
This IP case serves as a crucial reminder of the need to demonstrate a genuine commercial interest in a trademark to qualify as an "aggrieved person" under the Trademarks Act 2019. It also underscores the importance of meticulous preparation and adherence to procedural requirements in intellectual property disputes.
Businesses must ensure that they not only comply with all procedural aspects but also clearly establish their intent to use the trademark within the relevant jurisdiction to avoid dismissals on technical grounds.
If you have any questions regarding the article, please feel free to contact our managing partner, Eugene Yeong.
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