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Malaysia – “Electronic Coding Survey” Permissible Evidence?

On 09 February 2010, the High Court of Kuala Lumpur, in delivering the judgment for the case of LAM SOON EDIBLE SDN BHD Vs HUP SENG PERUSAHAAN MAKANAN (M) SDN BHD, provided essential features in respect of claims, which are made, based on filing a cancellation action for non – use particularly for Market Survey Evidence.

The Plaintiff (LAM SOON EDIBLE SDN BHD) in this case is a registered proprietor of trademark “NATUREL” in Class 29; whereas, the Respondent (HUP SENG PERUSAHAAN MAKANAN (M) SDN BHD) is the registered proprietor for trademark “NATURELL” in Class 30.

The Plaintiff in its attempt to extend and market the use of its trade mark to include Class 30 products was unsuccessful when its application was objected, inter alia, on the basis that the mark is identical or confusing similar to the respondent’s trademark, and as such, contrary to Section 14(1)(a), Section 19(1) and Section 19(2) of the Trade Marks Act 1976.

The Plaintiff in reply to the Registry’s objection, filed an application to expunge and remove the Respondent’s trademark “NATURELL” in Class 30 from the Register of Trade Marks, pursuant to Section 45 and / or 46 of the Trade Marks Act 1976 ( hereinafter referred as “the Act”).

Section 45 of the Act provides that the Court may on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from the Register of any entry or by any entry made in the Register without sufficient cause or wrongfully remaining at the register, expunging or varying such entry as it thinks fit; whereas, Section 46 of the Act provides that the Court may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of which it is registered on the ground of non-use of trademark in the relevant period.

The Plaintiff’s main contention in filing this application is due to the non – use by the Respondent for its product range in Class 30.

In this case, the Plaintiff established itself as an aggrieved person as it is substantially interested in having the Respondent’s mark removed. However, the Plaintiff failed to establish the non-use of the Respondent of its product range in Class 30. The Plaintiff’s survey evidence on non-use was rejected on the basis that the reports have not complied with the governing admissibility of such evidence.

On the facts, the Plaintiff had relied on reports conducted by a Market Survey company of which the said company provides a wide range of market – measurement information, integrated with their own data. The said data appearing to be coded for computer input enables its client to view and analyze information from many perspective, such as by specific products categories or retail channels.

As such, the Judge in reaching out its decision referred to the case of LIM YEW SING v HUMMEL INTERNATIONAL SPORTS & LEISURE [1996] 3 MLJ 7 which emphasized that survey evidence must meet the “minimum requirement” as outlined below:

  • The interviewees must be selected so as to represent a relevant cross-section of the public;
  • The size must be statistically significant;
  • It must be conducted fairly;
  • All surveys carried out must be disclosed including the number carried out, how they were conducted, and the totally of the persons involved;
  • The totality of the answers given must be disclosed and made available to the defendant;
  • The questions must not be misleading nor should they lead the person answering into a field of speculation he would never have embarked upon had the question not been put;
  • The exact answers and not some abbreviated from must be recorded;
  • The instructions to the interviewers as to how to carry out the survey must be disclosed; and
  • Where the answers are coded for computer input, the coding instructions must be disclosed.

The Judge further noted that the Survey Evidence submitted by the Plaintiff was merely data compiled by the Market Survey Company in a computer code form that did not territorialize the whole of Malaysia; therefore, the evidences submitted was not statistically significant. The derivation of the said evidences including the number, names and location of supermarkets, hypermarkets, retail outlets, convenient stores and provisions stores from which the data was collected was not disclosed.

Due to the fact that the above information was not disclosed, there was no evidence to show that the information was collated from a cross section of the relevant trade in Malaysia.

Further, the Applicant did not submit any evidence that the data compiled by the said Survey Company had been accepted as an authoritative source of information or data by the Courts in Malaysia. The Applicant did not introduce the background and brief of the Nielsen Company Malaysia and AC Nielsen Malaysia. Lastly, the data appeared to be coded for computer use, and the coding instructions were not disclosed.

Thus, the learned Judge in delivering his judgment held that the Plaintiff failed to establish a prima facie case of non-use in good faith of the Respondent’s mark “NATURELL” in Class 30.

In such circumstances, the application by the Plaintiff could be dismissed without requiring the Respondent to show that it had used the mark “NATURELL” in Class 30 in question during the relevant period. Nonetheless, the Judge considered the evidence the Respondent had adduced as sufficient to show that there was in fact, use in good faith of the “NATURELL” mark during the relevant 3-year period.

In conclusion, electronic survey evidences are generally permissible in an application for non- use. So long as the evidence submitted fairly reflects the factual position of the Respondent, at the time an application to expunge is made. Further, it should also be noted that list of “minimum requirements” for survey evidence has to be strictly complied with in order to establish a prima facie case in a non-use action.

It is also important that survey evidence has to be carried out by an authorized body and has to be accepted as an authoritative source of information or data by the Courts in Malaysia.

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