Use it or lose it!

This article writes about a High Court decision concerning trademark non-use in Malaysia.

It is like any regular trademark non-use action where parties bear their respective onus in establishing their case, but an interesting argument arose in the course of the case on which this article will be focusing.

The facts were that plaintiff, a Swedish company, and defendant, a local pharmacy, both had existing registered trademarks on the register, respectively.

Plaintiff sought to expand its trademark portfolio by registering additional trademarks and was faced with a provisional refusal on relative grounds. Certain registered trademarks belonging to the defendant were cited as the basis for the relative grounds.

Prompted by the said refusal, the plaintiff initiated a non-use investigation against those cited marks, followed by a cancellation action.

The defendant argued that the plaintiff ought to have addressed the provisional refusal as prescribed under Section 29 of the TMA 2019 before coming to court; otherwise, there would likely be duplicity in proceedings, rendering it an abuse of court process.

The Court rejected the arguments and held that Section 29 does not prevent an applicant from pursuing a non-use action.

To learn more about the burden to establish a successful trademark non-use action in Malaysia or the principle and scope of Section 29 of the TMA 2019, please write to legal@timothyjdass.com

Case Reference: Oatly AB v. Pahang Pharmacy Sdn. Bhd. [2022] MLJU3042