Facts of the case
In the recent 2024 High Court case, the Court revisited the test for an ‘aggrieved person’ in the case of Deluxe Caterers Pvt Ltd v Food Stack Concepts Pte Ltd [2024] 9 MLJ.
The plaintiff, Deluxe Caterers Pvt Ltd (“Plaintiff”), is the owner of the ‘Copper Chimney’ brand (shown above), which is renowned for its secret recipes and cooking techniques from across undivided North India. Founded by JK Kapur in 1972 in Bombay, Copper Chimney offers a flavorful mélange of signature Indian dishes, flavors, and ingredients to deliver an unforgettable dining experience. There are approximately 20 Copper Chimney restaurants across India, Dubai, the UAE, the UK, and Kuwait. The Plaintiff has also registered trademarks containing the name ‘Copper Chimney’ in these countries.
The Plaintiff decided to expand their ‘Copper Chimney’ brand into Malaysia but discovered that the ‘Copper Chimney’ trademark, under Registration No. 2014007985 in Class 43, has already been registered by the Defendant, Food Stack Concepts Pte Ltd. The Defendant, a company based in Singapore, has held the ‘Copper Chimney’ trademark since 2014 in Malaysia.
High Court action under Section 46 of the Malaysia Trademarks Act 2019 filed by the Plaintiff
Upon discovering that their ‘Copper Chimney’ trademark had already been registered in Malaysia, the Plaintiff filed an action under Section 46 to revoke the Defendant’s trademark registration on the grounds of non-use.
Section 46 (1) provides that the registration of a trademark may be revoked by the Court on an application by an ‘aggrieved person’ on any of the grounds as follows:
(a) where within a period of three years following the date of issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the registered proprietor or with his consent, in relation to the goods or services for which the trademark is registered, and there are no proper reasons for non-use;
(b) where the use of the goods or services under paragraph (a) has been suspended for an uninterrupted period of three years, and there are no proper reasons for non-use.
In filing the action, the Plaintiff sought to prove that the Defendant had not used the ‘Copper Chimney’ trademark in good faith in Malaysia, as required under paragraph (a), and that the use of the goods/services had been suspended for an uninterrupted period of three (3) years, as stipulated in paragraph (b).
The defense raised by the Defendant
The Defendant argued that the Plaintiff’s action was defective because the Plaintiff did not qualify as an ‘aggrieved person’ under Section 46, as it had not actually used its ‘Copper Chimney’ trademark in Malaysia.
In Malaysia, any action under Section 46 (1) must be filed by an ‘aggrieved person’ and it is not an application that can be made by just any person. The Federal Court in Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia Pendaftar Cap Dagangan Malaysia (Intervener) [2015] 6 MLRA 331 clarified as follows:
“A person aggrieved is a person who has used his mark as a trademark or who has a genuine and present intention to use his mark as a trademark in the course of a trade which is the same as or similar to the registered trademark that the person wants to be removed from the register. The person must be someone who has some element of legal interest, right or legitimate expectation in its own mark which is being substantially affected by the presence of the registered trademark. The interest and right must be legal or lawful.” If the person who applied to invalidate a trademark is not an “aggrieved person”, such an application will be dismissed.
The decision by Judge Azlan Sulaiman JC
The High Court found that the Plaintiff qualifies as an ‘aggrieved person’ because the Plaintiff provided evidence of having used and possessed various ‘Copper Chimney’ trademark registrations in India, Kuwait, the UK, and the UAE. Additionally, the Plaintiff demonstrated an intention to use the ‘Copper Chimney’ trademark in Malaysia.
The learned Judge Azlan Sulaiman JC did not accept the contention that prior use of the trademark in Malaysia by the Plaintiff was a prerequisite for qualifying as an ‘aggrieved person.’
The Defendant was unable to demonstrate any use of the ‘Copper Chimney’ trademark under Registration No. 2014007985 in Class 43 in Malaysia. Consequently, the Plaintiff succeeded in proving their case under both grounds of Section 46, leading to the revocation of the Defendant’s ‘Copper Chimney’ trademark registration in Malaysia.
Please feel free to get in touch with us if you have any inquiries regarding trademark registration issues in Malaysia. We will be happy to assist you.
Written by:
Hardeep Singh