Introduction

This is an appeal against the decision of the Malaysian Registrar of Trade Marks pursuant to Section 28(5) and (6) of the Trade Marks Act 1976 (“The Act”). On 26 May 2014, the Registrar had dismissed the Plaintiff’s (Dynawell Corporation (M) Sdn Bhd) application against the registration of the mark ‘DYNASTY’ in Class 43 via Application No. 0012622.

The Plaintiff challenged the learned Registrar’s decision in this appeal on the ground that the Registrar had erred in law and/or fact in allowing the objection by the Defendant premised on Section 14 and 19 of the Act.

The marks to be compared are as follows:

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Confusion and Deception

Both Sections 14 (1)(a) and 19 deal with the issue of identical or confusingly similar trademarks. As the Defendant’s “DYNASTY HOTEL” mark is not identical with the Plaintiff’s “DYNASTY” mark, the issue then is whether these marks are confusingly similar. 

With reference to Sections 14 and 19 of the Act, the Defendant argued that the DYNASTY trade mark was deceptively similar to its existing trade mark DYNASTY HOTEL, which was also registered in the hotel services industry, and therefore was in direct competition.

In determining whether the marks are confusingly similar, the High Court referred to the relevant test established by Parker J in The Pianotist Co Ltd [1906] xxiii RPC 774 (“Pianotist”), as follows:-

“You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of those marks is used in a normal way as a trade mark of goods of the respective owners of the marks.”

When applying the test laid down in Pianotist of whether a mark is likely to deceive or cause confusion, the comparison - visually and orally - must assess the entirety of the marks. Taking into account the whole of the DYNASTY and DYNASTY HOTEL trademarks, the High Court held that there were substantial visual, oral and conceptual similarities between them.  Accordingly, the High Court concluded that the marks were deceptively similar, and that the ground of opposition pursuant to Section 14 (1)(a) and 19 of the Act was made out.

Honest concurrent use

The Plaintiff contended that they had made honest concurrent use of the opposed mark and therefore were entitled to registration of the mark pursuant to Section 20(2) of the Act.

The High Court dismissed the defence of ‘honest concurrent use’ since the Plaintiff failed to establish that the use of the mark was longer than the Defendant’s use; the Defendant had used their trademark since June 1992 whereas the Plaintiff began operations in December 1994. Hence, the Plaintiff had failed to establish that there was a substantial period of use of the trademark.

Conclusion

This case illustrates that there is no set rule as to the minimum period that may constitute honest concurrent use – rather, the extent of use required is directly proportional to the degree of confusion likely to arise in the marketplace, should the opposed mark be granted registration.

This decision could also be seen as a reminder to those who seek to register a new mark, to undertake a trade mark search as a basic precaution. Often, applicants find themselves using a confusingly and deceptively similar trade mark for identical or closely related goods and services, oblivious to the existence of other marks.