Deluxe Caterers Private Ltd vs. Food Stack Concepts Pte Ltd [2024] CLJU 414
Key Details of the IP Case:
Deluxe Caterers Private Ltd, known for its Copper Chimney restaurant chain, initiated legal action against Food Stack Concepts Pte Ltd to revoke the registration of the "Copper Chimney" trademark in Malaysia. Deluxe Caterers argued that Food Stack had not used the trademark in Malaysia for a significant period, making it eligible for revocation under Sections 46(1)(a) and (b) of the Trademarks Act 2019. Food Stack countered by claiming efforts to use the trademark through marketing and potential business partnerships, despite not having a physical presence in Malaysia.
Trademark in Dispute:
"Cooper Chimney"
Legal Arguments and Rulings:
The court needed to determine two primary issues: whether Deluxe Caterers qualified as an "aggrieved person" under the Trademarks Act 2019 and whether Food Stack had provided sufficient evidence of trademark use in Malaysia.
Aggrieved Person:
The court found that Deluxe Caterers qualified as an "aggrieved person" as they intended to use the Copper Chimney trademark in Malaysia for their planned expansion. The plaintiff’s inability to register their own trademark due to Food Stack’s existing registration was sufficient to demonstrate that they were aggrieved under Section 46 of the Trademarks Act 2019. The court referred to previous cases, establishing that the status of an "aggrieved person" does not require actual use of the mark but a genuine intention to use it.
Non-Use of Trademark:
The court examined whether Food Stack had genuinely used the "Copper Chimney" trademark in Malaysia. According to Section 46(1)(a) of the Trademarks Act 2019, a trademark can be revoked if it has not been used in good faith within three years of its registration. Additionally, Section 46(1)(b) allows for revocation if the use of the trademark has been suspended for an uninterrupted period of three years.
In this case, evidence provided by Deluxe Caterers, such as Google searches and records from the Companies Commission of Malaysia (SSM), indicated that there was no active use of the "Copper Chimney" trademark in Malaysia. The defendant’s marketing activities and the operation of restaurants in Singapore did not constitute use within Malaysia. Consequently, the court ruled in favour of revoking Food Stack's trademark registration under Sections 46(1)(a) and (b) of the Trademark Act 2019.
Practical Implications:
This case highlights several important practical considerations for businesses regarding trademark use and protection:
Understanding Section 46 of the Trademarks Act 2019:
Businesses must be aware that under Section 46(1)(a) and (b), a registered trademark can be revoked if it is not used in good faith within three (3) years of registration or if its use is suspended for an uninterrupted period of three (3) years. Active use within the jurisdiction where the trademark is registered is crucial to maintain its validity. Use in neighboring countries or indirect promotional activities is insufficient to satisfy the legal requirement for use.
Defining Trademark Use:
The court’s ruling clarifies that “use” must involve actual commercial activities within the jurisdiction of registration. For example, establishing a physical presence, such as a restaurant or store operating under the registered trademark, is necessary. The ruling emphasises that trademark use must be public, outward, and consistent with the trademark's purpose to distinguish goods or services.
Preparation for Market Entry:
Companies planning to enter new markets must ensure they actively use their trademarks in those jurisdictions. This case underscores the importance of developing and executing a clear market entry strategy that includes tangible actions demonstrating the use of the trademark. Businesses should not rely solely on plans or discussions but should establish a physical or operational presence to meet the requirements of the Trademarks Act 2019.
Legal Preparedness:
Companies should regularly monitor their trademarks' status and use to avoid unintentional abandonment. This includes documenting marketing efforts, sales, and any business activities associated with the trademark. Having comprehensive records can support the defence of a trademark against revocation applications and demonstrate genuine use.
Trademark Diligence:
Companies need to perform thorough due diligence before entering new markets. This includes checking for existing registrations that might conflict with their intended use and understanding local laws regarding trademark registration and use. Proactively managing intellectual property can prevent legal disputes and safeguard business interests.
My Comments:
The decision emphasises the need for businesses to engage in genuine commercial use of their trademarks to secure their intellectual property rights. International expansion plans should be accompanied by a strategy to maintain active use of trademarks in each targeted jurisdiction. Proper use and documentation are crucial to preventing challenges and potential loss of valuable trademark rights.
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