JUDGMENT

Badariah Sahamid JCA:

Introduction

[1] This is an appeal against the decision of the learned Judicial Commissioner (JC) dated 4 May 2016, who ordered the defendants SRAM Marks under Registration Nos 05016151, 07017014, 09012790 and 09003528 in Class 12 (defendants SRAM Marks) to be expunged and removed from the Register.

[2] For ease of reference, parties will be referred to as they were in proceedings before the High Court.

Salient Facts

[3] The plaintiff, Huan Schen Sdn Bhd is a local company which was incorporated in 1995. The plaintiff has been in the business of distribution and selling of bicycles, bicycle parts and accessories.

[4] The defendant, SRAM LLC a company incorporated in the United States of America (USA) in 1987, manufactures bicycles and bicycle parts and accessories under the trade marks, "SRAM", "SRAM RIVAL" and their variations.

[5] It was not disputed that the trade mark "SRAM" was created by the defendant in the United States in 1987. The trade mark "SRAM" was created from the acronym of the three founders of the company: Scott, Ray and Sam.

[6] It was averred in the defendants affidavit that the defendants Goods and the defendants five Trade Marks had been featured in international events, including the Seoul Summer Olympic Games in 1988, the Atlanta Summer Olympic Games in 1996 and the Sydney Summer Olympic Games in 2000. The abovementioned Olympic Games were telecasted globally and broadcasted in Malaysia via local television channels like Radio Television Malaysia, Sistem Televisyen Malaysia Bhd and Astro.

[7] On 26 December 2003, the plaintiff had applied for registration of the plaintiffs Trade Mark for goods in Class 12 (bicycles, bicycle parts and accessories). The defendant had opposed the plaintiffs application on the grounds that the plaintiffs Trade Mark was deceptively similar to the defendants "SRAM" Marks and was likely to confuse the public.