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Malaysia – High Court Overrules Registrar’s Rejection

On April 1 2009, the High Court of Kuala Lumpur, in delivering the judgment in the case of Illinois Tool Works, Inc v Pendaftar Cap Dagangan, Malaysia [2009] 1 LNS 507 (Illinois), provided proper guidelines for the Registrar in issuing acceptance or objections when examining a trade mark.

Illinois is a Fortune 500 company, founded in 1912, and has a business presence in Malaysia. As Illinoi’s business increased in Malaysia, the company applied to register “High Temp Red” as trade mark. This was approved by the Registrar. Then strangely, the Registrar issued a letter to Illinois, retracting the approval to register that mark.

Dissatisfied, Illinois appealed to the High Court of Kuala Lumpur. Illinois argued that the trade mark is registrable as it only needs to fulfill any one of the requirements under the law: non-descriptive, invented word or distinctive. The Registrar, in reply, contended that the mark is descriptive and not an invented word. The Registrar further quoted the provisions in the Trade Marks Act, which allowed retracting an application after acceptance if the acceptance is made in error. According to the Registrar, the error was discovered after the mark was registered.

The High Court allowed Illinois’s appeal and highlighted the principle that the discretion of a Registrar must be exercised upon judicial principals and affected neither by caprice nor over caution. Judge Datuk Ramly Haji Ali further stated that arbitrary decisions, over-presumptuous and over-cautious assessment would not enable businessmen and members of the public at large to conduct their business with confidence. The Court also noted that the Registrar failed to prove the error that it relied on to retract the registration of the mark. It was also noted in the judgment of this case that inconsistencies in registering a mark in various classes would set unhealthy precedents. This observation was made due to the fact that Illinois had already registered the mark “High Temp Red” in a different class.

Having reviewed the decision of this case, it is clear that the laws and rules underlying the trade mark system in Malaysia have incorporated sufficient safeguards to ensure a fair balance between the proprietors and the consumers at large.

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