MERCK KGaA v. LENO MARKETING (M) SDN BHD; REGISTRAR OF TRADE MARKS (INTERESTED PARTY) [2018] 6 CLJ 167

The appellant, an international pharmaceutical company, filed a notice of opposition before the Registrar under section 28 of the Trade Marks Act 1976 ('the TMA') against the respondent’s application for “Bionel” in Class 5 on the grounds that inter alia, the respondent's mark was confusingly or deceptively similar to the appellant's mark registered mark for “BION” and “BION 3” in Classes 5, 29 & 30 and that the registration would likely deceive or cause confusion amongst the public.

The opposition was dismissed and the respondent's trade mark was registered. The appellant appealed against the decision of the Registrar to the High Court but the appeal was dismissed.

The appellant was yet granted leave to appeal to the Court of Appeal on several questions of law. However, the respondent raised a preliminary objection that the appeal was not competent as section 96 of the Courts of Judicature Act 1964 limits the appellate jurisdiction of the Federal Court to matters decided by the High Court in the exercise of its original jurisdiction. The respondent argued that the appeal should have been dismissed since it did not emanate from a decision of the High Court in its original jurisdiction.

The main issue that arose for determination was whether the High Court, in exercising its powers under the TMA, was acting in its original jurisdiction or appellate jurisdiction.

The Federal Court held that the High Court was exercising its appellate jurisdiction in hearing an appeal from the decision of the Registrar under section 28 TMA. Since the matter was not decided by the High Court in the exercise of its original jurisdiction, the appeal did not meet the statutory requirement for an appeal to the Federal Court. The appellant’s appeal was dismissed with costs.

This case serves as a reminder to all brand owners that all matters originating from the Registry of Trade Marks in Malaysia end at the Court of Appeal and not the Federal Court which is the highest court and the final appellate court in Malaysia.