DORETTI RESOURCES SDN BHD v. FITTERS MARKETING SDN BHD & ORS AND ANOTHER CASE

[2017] 5 MLRH 1
High Court Malaya, Kuala Lumpur
Wong Kian Kheong JC
[Suits Nos: 22IP-31-06-2015 & 24IP-43-10-2015]
Wong Kian Kheong JC

Trade Marks : Infringement of - Whether parties were aggrieved by registered mark - Who first user in course of trade was - Whether original registration of mark obtained by fraud - Whether use of registered mark likely to deceive or confuse public - Whether Trade Marks Act 1976 barred parties from claiming remedy for trade mark infringement - Whether compensatory and exemplary damages ought to be awarded - Trade Marks Act 1976, ss 36, 37 and 38

The present two suits concerned a combined trade mark "PYRO" ('PYRO Mark') which was registered in the Register of Trade Marks ('Register') with the registration no 04018316 ('Registered Mark') for goods in Class 6 (amongst others, locks, ironwork for doors and windows, padlocks, keys, door knobs and safes). The questions which arose in these two suits were: (1) whether Fitters Marketing, Pyro-Tech and Fitters Diversified were aggrieved by the Registered Mark so as to entitle them to apply to the court under s 45(1) of the Trade Marks Act 1976 ('TMA') to expunge the Registered Mark from the Register; (2) who was the first user in the course of trade ('1st User') of PYRO Mark; (3) whether the original registration of the Registered Mark by Mr Ng Heng Si

...
Sign up to view full cases Login