Encl. 21 - F.I.a.L. Finanziaria Industrie Alto Lario S.P.A V Galperti S.R.L. - Written Submissions +@002

W-02(IPCv)(A)-537-03/2022
Encl No. 21
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W-02(IPCv)(A)-537-03/2022
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Khalid, Lim Eng Leong, Henry Goh &
Co. Sdn Bhd, House of Henry Goh,
No. 217, Jalan Imbi, 55100 Kuala
Lumpur
AND
IN THE MATTER of an Appeal against
the decision of the Registrar of Trade
Marks dated 14 December 2020 made
under the Trade Marks Act 1976
berkenaan Bangkangan in respect of
the Opposition against Trademark
Application No. 2012019573 by
GALPERTI S.R.L. pursuant to
sections 28(5) and (6) of the Trade
Marks Act 1976
BETWEEN
GALPERTI S.R.L. ...PLAINTIFF
AND
F.I.A.L. FINANZIARIA INDUSTRIE
ALTO LARIO S.p.A ...DEFENDANT
Decided by the Honourable High Court Judge Dato' Mohd Radzi bin Harun
at the High Court of Malaya in Kuala Lumpur at 21 March 2022]
APPELLANT’S WRITTEN SUBMISSIONS
May it please this Honourable Court,
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INTRODUCTION
1. May it Please Yang Arif, Yang Arif, Yang Arif. These submissions
are filed by the Appellant in support of the appeal of the Appellant
filed at the Court of Appeal vide the Notice of Appeal dated
24.3.2022. The said appeal filed by the Appellant is against the
decision of the Honourable Judge of the High Court, Dato’ Mohd
Radzi bin Harun handed down in Kuala Lumpur on 21.3.2022. In
essence, The Learned Judge allowed the appeal of the Respondent
against the decision of the Registrar of Trademarks dated
14.12.2022 with cost.
Chronology of relevant facts
2. The subject matter of the appeal is the Appellant’s application to

register its GALPERTI trademark (“the GALPERTI trademark”)
under the Malaysian Trademark Application No. 2012019573 (“the
subject application”). The subject application was filed on
20.11.2012 in respect of “Common metals and their alloys; metal
building materials; transportable buildings of metal; materials of
metal for railway tracks; non-electric cables and wires of common
metal; ironmongery, small items of metal hardware; pipes and tubes
of metal; safes; goods of common metal not included in other
classes; ores; all included in class 6”. After the subject application
was duly examined by the Trademarks Registrar, the subject
application was published in the Government Gazette in 2014.
3
3. The Respondent filed an opposition against the subject application.
The grounds relied upon by the Respondent during the opposition
proceedings can be summarized as follows:-
(i) The Respondent alleged that it is the lawful creator, owner and
user for the GALPERTI trademark in Malaysia and other
countries especially in relation to various goods of common
metals and their alloys in class 6.
(ii) The Respondent claimed that it had registered the GALPERTI
trademark in class 6 in other countries years before the filing
of the subject application by the Appellant in Malaysia.
(iii) The Respondent then claimed that there is no Galperti in the
Appellant’s trade name and thus there is purportedly no
cogent reason for the Appellant’s choice of GALPERTI as a
source identifier.
(iv) The Respondent took the position that by virtue of its alleged
first use of the GALPERTI trademark, the subject application,
if allowed would be contrary to section 14(1) of the Trade
Marks Act 1976 (“TMA”) on the grounds that its use and
registration is likely to deceive or cause confusion to the public
given that the trademarks are identical and that the goods are
similar.
(v) The Respondent claimed that the Appellant’s GALPERTI
trademark is a well-known trademark and that it is entitled to
protection under section 14(2) of the TMA.
(vi) The Respondent further claimed that the registration of the
subject application would constitute passing off.
(vii) The Respondent then claimed that by virtue of its prior
trademark rights worldwide, the registration of the subject
4
application would be contrary to sections 19(1) and/or 19(3) of
the TMA.
(viii) The Respondent thereafter took the position that the
GALPERTI trademark is not distinctive of the Appellant and
hence the subject application does not fulfil section 10 of the
TMA. The Respondent also claimed that the Appellant is not
the bona fide proprietor of the GALPERTI trademark and that
the registration of the subject application would offend section
25 of the TMA.
4. In response to the opposition filed, the Appellant raised the following

grounds in support of the registration of the subject application
during the opposition stage before the Registrar:-
(i) The Appellant, which was set up in 1982, is the holding

company of the Galperti Group, including Officine Nicola
Galperti e Figlio SpA which was founded in 1921. The
products bearing the Appellant’s GALPERTI trademark were
and are manufactured by Officine Nicola Galperti e Figlio SpA,
a subsidiary of the Appellant. Further, the Appellant also has
subsidiary companies based in Malaysia, namely Galperti
Malaysia Sdn Bhd and Galperti Manufacturing (Malaysia) Sdn
Bhd.
(ii) Since 1921, the Appellant, either through itself and/or its
associated or related companies and/or companies and/or
entities licensed by the Appellant, has extensively used the
GALPERTI trademark in relation to the Appellant’s goods
around the world.
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(iii) The Appellant thereafter applied for and/or obtained
registration for the GALPERTI trademark in class 6 in various
jurisdictions such as Australia, Colombia, South Korea, United
Arab Emirates, and many more. Insofar as Malaysia is
concerned, the Appellant filed the subject application in 2012.
It is pertinent to note that at the material time when the
opposition was lodged by the Respondent, there were no
registrations and/or applications by the Respondent for the
GALPERTI trademark in Malaysia which would necessarily
result in section 19(1) and/or 19(3) of the TMA being wholly
inapplicable as a ground of opposition.
(iv) In Malaysia, the use of the GALPERTI trademark in relation to
the Appellant’s goods commenced as early as in 1993. It is
important to bear in mind that at this date, there was no
evidence of any use by the Respondent of the GALPERTI
trademark in Malaysia. Neither was there any evidence to
indicate the exposure of the Respondent’s alleged GALPERTI
trademark to the Malaysian trade and public. Any alleged use
(even if accepted) came very much later. Since 1993, the
sales of the Appellant’s goods bearing the GALPERTI
trademark in Malaysia have been very encouraging.
(v) In support of the Appellant’s extensive sales, the Appellant
adduced random invoices issued by the Appellant’s
associated and/or related companies which evidenced the
continuous and extensive sales of the Appellant’s goods
bearing the GALPERTI trademark in Malaysia. Those invoices
could be found in pages 58-171 of Jilid R/P 2D (pages 92-
200 of Ikatan Teras Bersama (“ITB”) Jilid 4 and pages 3-7
of ITB Jilid 5) . While the Respondent tried to dispute some
6
of these invoices, it would be observed that these attempts
have no merits whatsoever. This would be considered later in
these submissions.
(vi) The Appellant was also involved in the 14th Asian Oil Gas &
Petrochemical Engineering Exhibition held from 5 to 7 June
2013 in Kuala Lumpur as part of its marketing efforts of its
GALPERTI trademark in Malaysia, which can be seen from
pages 167-171 of Jilid R/P 2D (pages 3-7 of ITB Jilid 5).
This is in addition to the various other fairs or exhibitions
attended by the Appellant and/or its associated or related
companies and/or companies and/or entities licensed by the
Appellant around the world, as can be seen from pages 172-
202 of Jilid R/P 2D (pages 8-38 of ITB Jilid 5) and pages
3-65 of R/P 2E (pages 30-101 of ITB Jilid 5).
(vii) As a result of such continuous and substantial use of the
GALPERTI trademark around the world including Malaysia,
the Appellant had acquired substantial goodwill in the
business identified with reference to the GALPERTI
trademark. The GALPERTI trademark had thus become
distinctive of and is identified with the Appellant in relation to
the Appellant’s goods, particularly in Malaysia. It is thus
without doubt that the Appellant is the bona fide proprietor of
the GALPERTI trademark in Malaysia and hence entitling the
Appellant to apply for the registration of the subject trademark
in Malaysia. It is again pertinent to reiterate that all this was
established well before the alleged use of the GALPERTI
trademark in Malaysia by the Respondent.
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The Registrar’s Decision on 14.12.2020
5. The Registrar of Trademarks having considered all the facts and

evidence presented dismissed the Respondent’s opposition against
the subject application. In essence, the Registrar’s grounds of
decision [see pages 114-124 of Jilid R/P 2E (pages 150-160 of
ITB Jilid 5)] can be summarized as follows:-
(i) The Registrar found that both the Respondent’s GALPERTI

trademark and the Appellant’s GALPERTI trademark are
identical and that the goods are the same. As such, the
Registrar found that “it is crucial to ascertain the right
proprietor” of the GALPERTI trademark in Malaysia.
(ii) The Registrar correctly stated that the “first person who uses
the trademark of an appropriate type within a country
becomes the proprietor of the mark”. The Registrar also held
that the relevant date to determine priority would be the date
of filing of the subject application namely 20.11.2012.
(iii) The Registrar then went on to note that the use of the
trademark in question must be use in Malaysia and not use of
the trademark in other jurisdictions for the purpose of
determining proprietorship of a trademark in Malaysia.
(iv) The Registrar took note of the invoices issued dating as far
back as 1993 as submitted by the Appellant in Exhibit F of the
Appellant’s SD and the Appellant’s explanation on the origin
of the Appellant’s GALPERTI trademark.
(v) Thereafter, the Registrar held that “based on the evidence of
use tendered by both parties”, the Appellant’s use of the
GALPERTI trademark in Malaysia was prior to the alleged use
8
by the Respondent in 2004. Based on this, the Learned
Registrar concluded that the Appellant is the first user of the
GALPERTI trademark in Malaysia.
(vi) Based on this finding, the Registrar found that the Respondent
had failed to satisfy the requirements of sections 14(1) and 25
of the TMA.
(vii) In response to the Respondent’s reliance on sections 19(1)
and 19(3) of the TMA, the Registrar held that the said
provisions were not applicable as the Respondent’s
GALPERTI trademark was not a registered trademark in
Malaysia at the material time.
(viii) The Registrar further found that the Respondent had failed in
its opposition based on sections 14(1)(d) and/or (e) and
section 14(2) of the TMA, as the Registrar was of the view that
the Respondent’s GALPERTI trademark was not a well-known
trademark in Malaysia at the material time.
(ix) On the Respondent’s opposition based on section 10 of the
TMA, the Registrar found no reason to object to the subject
application on this basis, as the Registrar had found that the
Appellant is the first user of the GALPERTI trademark in
Malaysia.
(x) In relation to the passing off ground raised by the Respondent,
the Registrar found that this issue ought to be determined by
the Court. While this reasoning may not be entirely correct, it
does not and would not affect the outcome of the present
opposition as the passing off allegation would have no merit,
given the prior use of the GALPERTI trademark by the
Appellant either through itself and/or its associated or related
9
Appellant in Malaysia.
Originating Summons No.: WA – 24IP-3-03/2021
6. Dissatisfied with the decision of the Registrar of Trademarks, the

Respondent appealed against the decision of the Registrar.
7. The Respondent’s appeal was heard before the High Court on

15.2.2022. The Respondent’s appeal against the Registrar’s
decision was made on the following basis:-
(i) The Registrar had purportedly erred in finding that the
Appellant was the first user of the GALPERTI trademark in
Malaysia; and
(ii) The Registrar had purportedly erred in relying on the invoice
dated 29 June 1993 invoice under invoice number 001038
(“the impugned invoice”) in finding that the Appellant is the first
user of the GALPERTI trademark in Malaysia.
8. The Appellant’s position on the other hand before the High Court
was that the Registrar of Trademarks had rightly dismissed the
Respondent’s opposition. The facts and evidence presented clearly
showed that the Appellant was the first user of the GALPERTI
trademark in Malaysia. Any use by the Respondent in Malaysia was
subsequent to the Appellant.
9. On 21.3.2022, the High Court allowed the Respondent’s appeal

against the decision of the Registrar with cost in the sum of
RM20,000.00 to be paid to the Respondent. In setting aside the
decision of the Registrar, the Learned Judge essentially premised
10
his decision on the purported error on the part of the Registrar in
deciding the opposition solely based on the evidence presented in
the Statutory Declarations (SDs) of the parties. The Learned Judge
held that it would have been necessary for the Registrar to request
for further evidence from the Appellant to explain how the usage of
the trademark by its subsidiary could be regarded as use by the
Appellant. The Judge then held that the Registrar failed to conduct
an inquiry under section 19 of the TMA to determine the question of
similarity. This was clearly the wrong approach to take in the context
of the dispute and went against settled and established principles of
law. The Learned Judge further failed to appreciate the totality of the
evidence when he arrived at his decision. More would be said of this
later in these submissions.
General Legal Principles
10. Before we consider the relevant grounds of appeal as set out in the
Memorandum of Appeal, it would be important to set out certain
general principles that would be applicable in the context of this
appeal.
11. The case of Hui Kuan Hoe v Societe Des Produits Nestle SA
[2012] 5 MLJ 343 [Tab 1 of Ikatan Autoriti Perayu (“IAP”)] is
instructive on this point. In that case, the Court of Appeal held that
due regard must be given to the decision of the Registrar of Trade
Marks and that the Registrar’s decision should only be disturbed if
it has “gone clearly wrong”.
11
“[38] The registrar's decision to allow the opposition had been
made after hearing evidence, taking into account the
respondent's mark. His decision entitled to substantial weight:
Solavoid Trade Mark [1977] RPC 1 at p 28 per Lord Fraser of
Tully Belton PC and applied in Bata Ltd v Sim Ah Ba @ Sim
Teng Khor & Ors [2006] 6 MLJ 445, at p 462.
[39] Unless the registrar has gone clearly wrong, his decision
ought not to be interfered with: Banham v Reddaway [1927]
AC 406, at p 413 (HL). In this regard, I am of the view that the
registrar had not 'gone clearly wrong'. Hence, the learned
judge had correctly refrained from interfering with the
registrar's decision in allowing the opposition with costs.
(emphasis added)”
12. It is trite law that a factual finding should only be reversed in it is

plainly wrong. This is as illustrated in the case of Tengku Dato’
Ibrahim Petra Tengku Indra Petra v Petra Perdana Bhd &
Another Appeal [2018] 2 CLJ 641 [Tab 2 of IAP], where the
following was held:-
“[94] The law is clear and well-settled in that the principle on

which an appellate court could interfere with findings of fact by
the trial court is “the plainly wrong test” principle; see the
Federal Court in Gan Yook Chin & Anor v. Lee Ing Chin & Ors
[2004] 4 CLJ 309; [2005] 2 MLJ 1, UEM Group Bhd v. Genisys
Integrated Engineers Pte Ltd & Anor [2010] 9 CLJ 785, In re
B (A Child) (Care Proceedings: Threshold Criteria) [2013] 1
WLR 1911; and Dream Property Sdn Bhd v. Atlas Housing
12
Sdn Bhd [2015] 2 CLJ 453). This court has said this before,
and we adhere to it now. Having regard to the above principle,
we find that in the present case the Court of Appeal made no
findings that the High Court had gone plainly wrong, let alone
that on a reconsideration of the whole evidence the opposite
conclusion should be reached.
[97] Recently in Henderson v. Foxworth Investments Ltd and

Another [2014] 1 WLR 2600, the United Kingdom Supreme
Court held that in the absence of some other identifiable error,
such as a material error of law or the making of a critical
factual finding which had no basis in the evidence, an
appellate court should not interfere with the factual findings of
a trial judge unless it was satisfied that the decision of the trial
judge was ‘plainly wrong’ in the sense that it could not
reasonably be explained or justified and so was one which no
reasonable judge could have reached; and that if the appellate
court was not satisfied that the decision came within that
category it was irrelevant that, with whatever degree of
certainty, it considered that it would have reached a different
conclusion from the trial judge.
[98] Coming back to the present case, the Court of Appeal did
not undertake the appropriate review exercise and further, did
not make the appropriate determination that the High Court
had gone plainly wrong in its decision, in the sense that it could
13
not reasonably be explained or justified and so was one which
no reasonable judge could have reached.
[99] The Court of Appeal had reversed the overall conclusions

on primary facts of the learned High Court Judge without
impeaching findings of fact by the High Court on the existence
of a cash-flow problem in the plaintiff. The Court of Appeal did
not impeach the learned High Court Judge’s analysis of the
evidence on the pivotal issue of “dominant purpose” and
“conspiracy” and other critical matters in the dispute between
the parties.
[101] In our opinion, a grave fundamental error made by the

Court of Appeal was its failure to apply correctly the principles
governing the review of findings of fact by appellate courts.
This is in itself sufficient to warrant appellate interference on
our part on this point.”
13. This is affirmed in the case of Ng Hoo Kui & Anor v Wendy Tan
Lee Peng, Administrator of The Estates of Tan Ewe Kwang,
Deceased & Ors [2020] 10 CLJ 1 [Tab 3 of IAP]. In doing so, the
Federal Court further held that the appellant court is obliged to
identify why the lower court’s findings were plainly wrong. The
following paragraphs in the decision are relevant:-
“[78] Hence following this court’s ruling in Tengku Dato’

Ibrahim Petra Tengku Indra Petra (supra) an appellate court
14
should not interfere with the factual findings of a trial judge
unless it was satisfied that the decision of the trial judge was
“plainly wrong” where in arriving at the decision it could not
reasonably be explained or justified and so was one which no
reasonable judge could have reached. If the decision did not
fall within any of the aforesaid category, it is irrelevant, even if
the appellate court thinks that with whatever degree of
certainty, it considered that it would have reached a different
conclusion from the trial judge.”
[150] The Court of Appeal reversed the findings of the trial

judge on facts when it held that “there was no judicial
appreciation of the evidence adduced before it”. We are of the
view that the Court of Appeal had erroneously applied the
“plainly wrong” test in a broad and general manner. The
Court of Appeal erred in arriving at its conclusion without
identifying specifically why the learned trial judge’s
findings were plainly wrong on the key issues, …”
14. In the present case, it was clear that if the Registrar’s grounds are
considered, the Registrar had carefully considered the facts and
applied the correct legal principles when arriving at his decision.
Despite the complaints by the Respondent, it cannot be said that the
Registrar had gone clearly wrong in dismissing the opposition. This
would be made apparent in these submissions and hence due
regard must be given to the Registrar’s decision and there was no
clear reason to depart from the Registrar’s findings.
15
15. Turning to the substantive basis, the entire appeal is premised on
the competing rights of the parties over the GALPERTI trademark.
Thus before we move to consider the grounds of appeal, it would
also be useful at the outset to set out the applicable and relevant
legal principles which determine priority and ownership in the
context of ownership to a trademark in Malaysia, which is the crux
of the appeal. Essentially, the first party to assert rights to a
trademark either through first registration or use (whichever is the
earlier) would prevail. We first have the case of Re Hudson’s Trade
Mark (1886) 32 Ch. D 311 [Tab 4 of IAP] where the following at
pages 319 – 320 and pages 325 – 326 are instructive:-
“If a man has designed and first printed or formed any of those
particular and distinctive devices which are referred to in the
first part of sect. 10, he is then looked upon as the proprietor
of that which is under that Act a trade-mark, which will give
him the right so soon as he registers. How can it be said that
he is entitled to exclusive use of it? He never has used it,
but in my opinion the language, though not appropriate,
means this, that a man who designs one of those special
things pointed out in sect.10, is, as designed, to be
considered as the proprietor of it, and if there is no one
else who has used it, or who can be interfered with by the
registration and subsequent assertion of title to the mark,
then he is to be considered as entitled... (pages 319 – 320)
... Therefore, although not without hesitation and not

without difficulty, I come to the conclusion that the true
16
meaning of the Act was to enable a person who had
invented a trade-mark which had not been previously
used by some other person to obtain registration of that
trade-mark and to treat its being on the register as
evidence of public user or equivalent to public user
(pages 325 – 326).”
16. Whilst it is clear that the first user of the trademark would be the party
entitled to seek ownership of the trademark, the above authority also
recognizes the fact that an application for registration could be
deemed as evidence of public user and can be taken into account if
it predates the first market use. This is a principle that has been
acknowledged by our apex court in Liwayway Marketing Corp v
Oishi Group Public Co Ltd [2017] 4 MLJ 141 [Tab 5 of IAP]. The
following paragraphs from the decision are of importance:-
“[16] Learned counsel for Liwayway further submitted that not

only the trademarks were not dissimilar, but also claimed that
Oishi Group was a subsequent user of the trademark.
Liwayway was the first to assert its rights via the trademark
filing/registration which was done in the absence of any prior
user at that point of time. Oishi Group’s trademar only came
to be used in 2013, long after Liwayway had used and
registered its trademark in 2003. Based on that, it was
submitted that Liwayway ought to be recognised as the
common law proprietor of the trademark, making reference to
the English Chancery Division case of In re Hudson’s Trade-
Marks (1886) 32 Ch D 311 where Cotton LJ said that a person
17
who first designed and first printed or formed a trademark was
to be considered as the proprietor of it.
[17] A similar view was taken by the Federal Court of Australia

in Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994)
120 ALR 495 wherein a passage from the aforesaid judgment
of Cotton LJ in Re Hudson’s Trade-Marks was quoted:
“... and if there is no one else who has used it, or who
can be interfered with by the registration and
subsequent assertion of title to the mark, then he is to
be considered as entitled within the meaning of the Act
to the exclusive use of that which in fact has never been
in any way used, but which has only been designed by
him, and which he can be treated as the person entitled
to register, if no one else had so used it as that his user
would be interfered with by the registration.”
17. These cases clearly demonstrate that the first party to assert rights
to a trademark would have priority and the right to claim ownership.
This assertion of rights could either take the form of actual use or an
application for trademark registration (whichever is the earlier). This
principle certainly has merits as the party first to stake its claim to a
trademark in the absence of use by any third party, must be the party
who should be allowed to claim ownership. Any other reasoning
would result in a subsequent user with no connection with the trade
and public in Malaysia claiming ownership to the trademark
concerned, which not only cannot be right but would create an
anomalous situation. Further, the party first asserting rights could
18
not be said to have infringed the rights of another party as there was
no other party before it. All these were not considered or addressed
by the Learned Judge, resulting in the errors in the decision of the
High Court. This would be considered in the course of these
submissions. It would be made clear that by reason of the
undisputed facts and the applicable principles of law, no appellate
intervention is required.
18. We shall now turn to the grounds of appeal as set out in the
Memorandum of Appeal (“MA”) dated 24.5.2023.
Ground 2 of the MA
19. This ground is premised on the fact that the Learned Judge erred
when he found that the Registrar in deciding on the opposition
based his decision solely on the evidence presented in the Statutory
Declarations and that it was necessary for the Registrar to request
for further evidence to explain how the sales of the goods bearing
the Appellant’s trademark by the Appellant’s subsidiary could be
regarded as use by the Appellant. In doing so, the Learned Judge
failed to take into considerations some very trite principles in law.
Had these principles been taken into account, the Learned Judge
would not have faulted the approach taken by the Learned Registrar
in arriving at the decision taken by the Registrar.
20. The first failure on the part of the Learned Judge was his failure to
appreciate the trite principle that use of a trademark by a licensee
would enure to the benefit of the licensor. There are various
decisions of the court including that of our own Court of Appeal in
19
the case of Yong Sze Fun & Anor (t/a Perindustrian Makanan &
Minuman Layang-Layang) v Syarikat Zamani Hj Tamin Sdn Bhd
& Anor [2012] 1 MLJ 585 [Tab 6 of IAP]. In this case, the Court of
Appeal held the following at page 647:-
“[130] It is trite law that even where there is a

licensor/licensee arrangement, in the contractual sense,
and there is a hot dispute between the licensor and the
licensee, goodwill generated out of the activities of the
licensee remain throughout with the licensee to entitle
them to the proprietary rights to the said goodwill. In
Habib Bank Ltd v Habib Bank AG Zurich [1981] 1 WLR 1265
(CA), a dispute arose between the licensor and the licensee
yet the court held that the licensee could lay a claim on
goodwill and reputation generated out of their use of the
'Habib' trade name notwithstanding the fact that such use was
on the basis of a licence given by the licensor.”
21. In fact, the court in Yong Sze Fun & Anor (t/a Perindustrian
Makanan & Minuman Layang-Layang) v Syarikat Zamani Hj
Tamin Sdn Bhd & Anor [2012] 1 MLJ 585 [Tab 6 of IAP] relied on
various authorities all of which pointed in one direction vis a vis use
by a licensee enuring to the benefit of the licensor demonstrating
how trite this principle is. We cite the relevant paragraphs in the
judgement highlighting the additional cases in support:-
“… In Habib Bank Ltd v Habib Bank AG Zurich [1981] 1 WLR

1265 (CA), a dispute arose between the licensor and the
licensee yet the court held that the licensee could lay a claim
20
on goodwill and reputation generated out of their use of the
'Habib' trade name notwithstanding the fact that such use was
on the basis of a licence given by the licensor.
[132] A classic example would be the case of DHN Food

Distributors Ltd v Tower Hamlets London Borough Council;
Bronze Investments Ltd v London Borough of Tower Hamlets;
DHN Food Transport Ltd v London Borough of Tower Hamlets
[1976] 1 WLR 852 (CA) at p 860 Lord Denning MR had this to
say:
We all know that in many respects a group of companies

are treated together for the purpose of general accounts,
balance sheet, and profit and loss account. They are
treated as one concern. Professor Gower in Modern
Company Law, (3rd Ed), (1969) at p 216 says:
there is evidence of a general tendency to ignore

the separate legal entities of various companies
within a group, and to look instead at the economic
entity of the whole group.
This is especially the case when a parent company

owns all the shares of the subsidiaries — so much so
that it can control every movement of the subsidiaries.
These subsidiaries are bound hand and foot to the
parent company and must do just what the parent
21
company says. A striking instance is the decision of the
House of Lords in Harold Holdsworth & Co (Wakefield)
Ltd v Caddies [1955] 1 WLR 352. So here. This group is
virtually the same as a partnership in which all the three
companies are partners. They should not be treated
separately so as to be defeated on a technical point.
They should not be deprived of the compensation which
should justly be payable for disturbance. The three
companies should, for present purposes, be treated as
one, and the parent company DHN should be treated as
that one. So DHN are entitled to claim compensation
accordingly. It was not necessary for them to go through
a conveyancing device to get it.
[133] And according to Goff LJ in the same case at p 861, that

'… one is entitled to look at the realities of the situation …'.
[134] The same position was adopted by Justice Dillon in

Revlon Inc and others v Cripps & Lee Ltd and others [1980]
FSR 85 (CA) at p 96.”
22. The second consideration is that where the dispute on the use is not
between the licensee and the licensor, the court need not even go
to consider the relationship between the licensor and the licensee
and neither is there the need for the court to enquire into the
relationship. We cite the judgement of Abdul Malik Ishak JCA at
page 647 in the case of Yong Sze Fun & Anor (t/a Perindustrian
Makanan & Minuman Layang-Layang) v Syarikat Zamani Hj
22
Tamin Sdn Bhd & Anor [2012] 1 MLJ 585 [Tab 6 of IAP] in
support:-
“[131] In a situation where the dispute is not between the

licensor and the licensee but rather with a third party, the
position is even more certain and clear. In such a situation,
there is no necessity for the court to go into the relationship
between the licensor and the licensee which regulates the
contractual arrangements between them as to how the
respective trademarks are to be held. …”
23. In view of this, the Learned Judge clearly took an erroneous

approach when he required to Registrar to conduct further enquiries
when the same was clearly not required. The evidence clearly
pointed in the direction of use by companies within the group.
24. In addition to all that, the Learned Judge failed to appreciate the trite
principle that use of the trademark by the Appellant would occur as
soon as the goods bearing the said trademark of the Appellant were
put into the market in Malaysia. This would be irrespective of
whether the sales in Malaysia was conducted directly by the
Appellant or by the Appellant’s subsidiary or any third party.
25. Even if the use was deemed use by the Appellant’s subsidiary, the
Learned Judge failed to appreciate that any use of the trademark by
the Appellant’s subsidiary with the knowledge and consent of the
Appellant would enure to the benefit of the Appellant as licensor. It
is trite law that the use of a trademark by a licensee would enure to
the benefit of the licensor. This is demonstrated in the case of Lam
23
Soon (M) Bhd v Forward Supreme Sdn Bhd & Ors [2001] 4 CLJ
673 [Tab 7 of IAP], at page 682, where the court held as follows:-
“Since the Plaintiff was merely using the “Lam Soon Knife Label”
under license or with the permission of Whang Tar Choung, I am of
the view that the goodwill generated by the Plaintiff in relation to its
use accrued for the benefit of Whang Tar Choung. My view is
supported by Christopher Wadlow in The Law of Passing - Off 2nd
edn at pp. 115 and 116 where the learned author clearly states the
legal position on ownership of goodwill as follows:
If a valid licence of a name or mark is in operation in

respect of the business so carried on accrues to the
licensor rather than the licensee. The licence may be
expressed or implied.”
26. This position in law was again applied in the recent High Court
decision of World Taekwando Federation & Anor v Tuan Wing
Keong & Anor (Pendaftar Cap Dagangan, Malaysia, interested
party) [2016] MLJU 1129 [Tab 8 of IAP].
27. The above principle was not fully appreciated fully by the Learned
Judge. The failure of the Learned Judge to apply the correct
principles of law resulted in the erroneous decision on his part. In
fact, if the decision of the Registrar is considered, it would be clear
that the Registrar had considered all the relevant facts and evidence
presented by the parties and applied the correct principles in law in
arriving at his decision.
24
Ground 3 of the MA
28. This ground is premised on the Learned Judge failure to appreciate

or even consider the relevant principles which determine priority to
a trademark in Malaysia which would ultimately determine
proprietorship. Unlike the Registrar who addressed these issues,
there was nothing in the Learned Judge’s grounds of decision that
addressed this fact which would have been central to outcome of
the opposition. The Learned Judge failed to direct his mind to the
relevant factual and legal considerations and took into consideration
the wrong principles of law.
29. As illustrated in the cases of Re Hudson’s Trade Mark (1886) 32

Ch. D 311 [Tab 4 of Ikatan Autoriti Perayu (IAP)] and Liwayway
Marketing Corp v Oishi Group Public Co Ltd [2017] 4 MLJ 141
[Tab 5 of IAP], the first party to assert rights to a trademark would
have priority and the right to claim ownership. This is precisely the
chain of events in this case. The Appellant was the first party who
applied for registration of the GALPERTI trademark by way of the
subject application in Malaysia in 2012. Further, the Appellant was
also the first user of the GALPERTI trademark in Malaysia either
through itself and/or its associated or related companies and/or
companies and/or entities licensed by the Appellant. This is clearly
established by virtue of the invoices dated as early as 1993. There
were then random invoices covering the years 1994, 1995, 2002,
2003 which were issued by the Appellant’s associated and/or related
companies relating to the sales of the Appellant’s goods bearing the
25
GALPERTI trademark in Malaysia [see pages 149-202 of Jilid R/P
2C (pages 181-200 of ITB Jilid 3 and pages 3-36 of Jilid 4), pages
3-171 of Jilid R/P 2D (pages 37-200 of ITB Jilid 4 and pages 3-7
of ITB Jilid 5) and pages 3-65 of Jilid R/P 2E (pages 39-101 of
ITB Jilid 5)]. Thus, the Appellant has priority both in terms of use in
the market (1993) as well as the application for registration (2012) in
Malaysia. The earliest evidence of use by GALPERTI trademark by
the Respondent in Malaysia, even if accepted was in 2004 whereas
the Respondent applied for registration for the GALPERTI trademark
in Malaysia in 2016.
30. It is clear from the evidence presented that the Appellant was the
first user of the Appellant’s GALPERTI trademark in Malaysia. The
Respondent’s alleged use of its GALPERTI trademark was well after
the date of first use of the GALPERTI trademark by the Appellant in
Malaysia. Given that the Appellant was the first user of the
GALPERTI trademark in Malaysia, any purported goodwill claimed
by the Respondent through the alleged subsequent use of the
GALPERTI trademark would be irrelevant against the Appellant.
The Learned Judge thus erred in law and in fact in holding that the
Registrar had failed to apply his mind fully and correctly based on
the evidence before him and the applicable test, in dismissing the
Respondent’s opposition.
31. The Respondent during the appeal before the High Court attempted
to rely on its alleged prior use and registration of its GALPERTI
trademark in other jurisdictions around the world. It must be noted
that trademark law is territorial in nature. This is as held by the Court
of Appeal in the case of Lim Yew Sing v Hummel International
26
Sports & Leisure A/S [1996] 3 MLJ 7 [Tab 9 of IAP], where the
following is instructive:-
“…[t]rade mark law is very territorial in many aspects.”
32. Such position was affirmed by our apex court in the case of Yong
Teng Hing b/s Hong Kong Trading Co & Anor v Walton
International Ltd [2012] 6 MLJ 609 [Tab 10 of IAP]. These
authorities have clearly demonstrated that use of the trademark in
other jurisdictions is irrelevant for the purpose of determining first
user as trademark law is territorial in many aspects. Accordingly, the
Appellant is clearly the first user of the GALPERTI trademark in
Malaysia either through itself and/or its associated or related
Appellant, based on the evidence presented.
33. Despite these factors, the Learned Judge set aside the decision of
the Registrar and found for the Respondent. Instead of applying the
above principles which are trite, the Learned Judge held that the
Registrar was duty-bound to request for further evidence on the
usage of the Appellant’s GALPERTI trademark. In doing so, the
Learned Judge had failed to give sufficient weight to the long-
established goodwill of the Appellant in its business identified by
reference to the Appellant’s GALPERTI trademark and failed to
consider that it was the Appellant that had priority of the Appellant’s
GALPERTI trademark in Malaysia. Such findings are clearly
contrary to the relevant authorities set out above.
27
34. During the appeal at the High Court, the Respondent also
challenged the invoice dated 1993 presented by the Appellant
based on the discrepancies of the name of the buyer in the said
invoice. The Appellant respectfully submits that such discrepancies
have no impact on the fact that the Appellant is the first user of the
GALPERTI trademark in Malaysia. As alluded to above, the use of
the GALPERTI trademark in Malaysia was by the Appellant either
through itself and/or its associated or related companies and/or
companies and/or entities licensed by the Appellant. The invoices
presented [see pages 149-202 of Jilid R/P 2C (pages 181-200 of
ITB Jilid 3 and pages 3-36 of Jilid 4), pages 3-171 of Jilid R/P 2D
(pages 37-200 of ITB Jilid 4 and pages 3-7 of ITB Jilid 5) and
pages 3-65 of Jilid R/P 2E (pages 39-101 of ITB Jilid 5)] were
dated before any alleged use of the GALPERTI trademark in
Malaysia by the Respondent and those invoices were issued by the
Officine Nicola Galperti Filgio SpA, a subsidiary company of the
Appellant.
35. It is trite law that the first in time should not have his rights altered
or removed, by the subsequent unauthorized act. This is clearly
provided for in the case of Syarikat Zamani Hj Tamin Sdn Bhd &
Anor v Yong Sze Fun & Anor [2006] 5 MLJ 262 [Tab 11 of IAP]
where the court held that: -
[193] ...They, by being the first user of the ‘TAMIN’ trade mark
in Malaysia are clearly entitled to the exclusive use of the
‘TAMIN’ trade mark when used in relation to the goods of
interest to them which are articles of foods and drink. The
defendants who are the subsequent users of ‘TAMIN’ are thus
28
not entitled to the usage of the ‘TAMIN’ trade mark in relation
to their syrups and cordials.
[194] By reason of the above, the facts point clearly towards a

decision in favour of the plaintiffs being the first users of the
‘TAMIN’ trade mark. This would further necessarily mean that
the counter claim of the defendants both in passing off and
slander to title and goods would also collapse. This is the only
logical conclusion having looked at the facts. Surely a
subsequent user of the mark should not be allowed to
frustrate the use of an earlier user. (emphasis added)
36. The position taken by the High Court in Syarikat Zamani Hj Tamin
(supra.) was affirmed by the Court of Appeal in Yong Sze Fun &
Anor (t/a Perindustrian Makanan & Minuman Layang-Layang) v
Syarikat Zamani Hj Tamin Sdn Bhd & Anor [2012] 1 MLJ 585
[Tab 6 of IAP]. In affirming the decision of the High Court, the Court
of Appeal held that: -
[195] It is our judgment that the subsequent use of the

‘TAMIN’ trademark by the defendants in Kelantan in 1990 had
caused confusion and deception to the ordinary
purchasing public. (emphasis added)
37. Applying the above on the facts of the present case, any subsequent
use of a trademark which is identical or confusingly and deceptively
similar to the Appellant’s GALPERTI trademark by a third party
without authorization would result in confusion and deception. It is
clear from the evidence presented that the Appellant either through
29
itself and/or its associated or related companies and/or companies
and/or entities licensed by the Appellant had first used the
GALPERTI trademark in Malaysia. Thus, it is the subsequent use of
the GALPERTI trademark by the Respondent which would be the
cause of any confusion and deception. By virtue of the above, the
Appellant is entitled to register its GALPERTI trademark in Malaysia
and such registration would not offend section 14 of the TMA.
38. The same reasoning above is also applicable to the Respondent’s

contention before the High Court that the subject application would
offend section 25 of the TMA. We have seen with reference to the
authorities submitted above that proprietorship is determined by
reference to the first party who can claim ownership to the said
trademark. This would be the party who first asserts rights to the
trademark in Malaysia. In this case, the facts point towards the
Appellant. As the Appellant enjoys priority over the GALPERTI
trademark in Malaysia, the entitlement to seek registration lies with
the Appellant. Therefore, the only conclusion that can be drawn is
that the Appellant is the true proprietor of the GALPERTI trademark
in Malaysia and registration of the subject application ought not to
be denied under section 25 of the TMA.
39. Similarly, given that the Respondent is the subsequent user of the
GALPERTI trademark in Malaysia, it cannot be right for the
Respondent to allege that the GALPERTI trademark is not
distinctive of the Appellant (being the first to assert rights to the
GALPERTI trademark in Malaysia). The registration of the subject
application thus would not offend section 10 of the TMA.
30
40. During the appeal before the High Court, the Respondent also
challenged the invoice dated 1993 presented by the Appellant on
the following grounds:-
(a) that the said invoice was not in the name of the Appellant’s
controlled companies;
(b) that the said invoice did not make reference to any trademarks
or brands;
(c) that the buyer stated therein, Project Material Service (M) is a
fictitious entity.
41. With regard to the first ground of challenge raised, the Appellant had
clearly explained in the Appellant’s Statutory Declaration that the
said invoice is a genuine and bona fide invoice [see paragraph 4 in
page 5 of Jilid R/P 2C (page 20 of ITB Jilid 1)]. The said invoice
was issued by Officine Nicola Galperti Filgio SpA which is a
subsidiary company of the Appellant. Thus, it is misleading for the
Respondent to allege without any proof that the said invoice was
issued by a company unrelated to the Appellant.
42. The second challenge raised by the Respondent before the High
Court was devoid of reality. The absence of any reference to the
GALPERTI trademark in the invoice does not mean that there was
no sale of the Appellant’s products bearing the GALPERTI
trademark. It is important to note that it is a common practice in the
trade for invoices to refer to products sold without making specific
reference to its brand or trademark so long as it is clear to the buyer
and the seller what products are bought and sold. The absence of
the trademark in the invoice does not translate and mean that the
31
goods bearing the said trademark were not sold. In fact, even the
Respondent’s own alleged invoices refer to the products sold
without any reference to the GALPERTI trademark [see pages 54-
79 of Jilid R/P 2B (pages 9-34 of ITB Jilid 3]. Thus, this ground of
challenge raised by the Respondent has no merits when its own
invoices have the same purported shortcomings.
43. However, in the unlikely event that the Appellant’s invoices were to
be disregarded on this ground, a similar treatment should also be
accorded to the Respondent’s invoices. Even if this is done, the
Appellant would have still have priority by reason of its first
trademark filing in Malaysia. It is important to bear in mind that in the
absence of prior evidence of use in Malaysia, priority would be
accorded to the first party to file the trademark in Malaysia, which
was the Appellant in the present instance. The Appellant first filed
the GALPERTI Trademark in 2012 compared to the Respondent’s
filing in 2016. The Learned Judge however failed to give credence
to this and did not accord consistency in the assessment of the facts
and evidence presented resulted in the erroneous decision on his
part.
44. As for the last ground of challenge by the Respondent at the High
Court, the Appellant has explained that Project Material Service (M)
or the full name of the entity being Project Material Services (M) Sdn
Bhd is the former name of PFP (Malaysia) Sdn Bhd under company
registration number 228627-P. Further, the fact that the company
name was not stated in full together with a company registration
number in the invoice does not discount the fact that the
transactions with the said entity were genuine transactions as
32
reflected in the invoices. It is further important to bear in mind that it
is the Respondent who bears the burden to prove its specific
allegations that Project Material Service (M) is a fictitious buyer.
45. This principle is distilled from the case of Huan Schen Sdn Bhd v
Sram, LLC [2016] 1 LNS 898 [Tab 12 of IAP] which has analogous
facts to the present case. In that case, the Plaintiff who applied to
expunge the Defendant’s trademark registration had the burden of
proof to show that it was the first user of the trademark in question.
During the proceedings, the Defendant specifically alleged that the
Plaintiff’s invoice had been fabricated. Wong Kian Kheong JC (as
His Lordship then was) held that since the Defendant had
specifically alleged that the Plaintiff’s invoice had been fabricated,
the Defendant had the legal onus under section 103 of the Evidence
Act to prove such a particular fact.
46. Applying the above principle, it must mean that the Respondent has
the legal onus to prove that the entity reflected in the said invoice
was a fictitious entity. Simply alleging that Project Material Service
(M) is a fictitious company in the face of the clear explanation given
by the Appellant goes nowhere near discharging this burden of
proof. Even if this said invoice issued in 1993 is to be disregarded,
we wish to highlight that there are other numerous invoices showing
use of the Appellant’s GALPERTI trademark in Malaysia and such
use was prior to the alleged used by the Respondent in 2004. Thus,
even if the said invoice dated 1993 is disregarded, the evidence still
shows that the Appellant is the prior user of the GALPERTI
trademark in Malaysia.
33
Ground 4 of the MA
47. Under this ground, the Learned Judge erred in fact and in law in
finding that the Registrar failed to conduct an inquiry under section
19 of the TMA. The Learned Judge in arriving at his decision held
that the Registrar must consider whether the trademarks in issue
are substantially identical and whether there is any risk of likelihood
of confusion or deception in accordance with section 19 of the TMA.
The Learned Judge held that if the Registrar is satisfied that the
trademarks are identical and there is a risk of confusion or
deception, the Registrar must allow the opposition and should not
order the Appellant’s trademark application to be allowed. Section
19 of the TMA provides as follows:-
(1) No trade mark shall be registered in respect of any goods

or description of goods—
(a) that is identical with a trade mark belonging to a
different proprietor and entered in the Register in
respect of the same goods or description of goods or in
respect of services that are closely related to those
goods; or
(b) that so nearly resembles such a trade mark as is
likely to deceive or cause confusion.
(2) No trade mark shall be registered in respect of any services

or description of services—
34
(a) that is identical with a trade mark belonging to a
different proprietor and entered in the Register in
respect of the same services or description of services
or in respect of goods that are closely related to those
services; or
(b) that so nearly resembles such a trade mark as is
likely to deceive or cause confusion.
(3) Where separate applications are made by different

persons to be registered as proprietors respectively of trade
marks which are identical or so nearly resembling each other
as are likely to deceive or cause confusion and—
(a) such applications are in respect of the same goods
or description of goods; or
(b) at least one of such applications is in respect of
goods and the other or others is or are in respect of
services closely related to those goods,
the Registrar may refuse to register any of them until their
rights have been determined by the Court or have been settled
by agreement in a manner approved by him or by the Court.
(4) Where separate applications are made by different

persons to be registered as proprietors respectively of trade
marks which are identical or so nearly resembling each other
as are likely to deceive or cause confusion and—
(a) such applications are in respect of the same services
or description of services; or
35
(b) at least one of such applications is in respect of
services and the other or others is or are in respect of
goods closely related to those services,
the Registrar may refuse to register any of them until their
rights have been determined by the Court or have been settled
by agreement in a manner approved by him or by the Court.
48. If the relevant provisions are considered carefully, it would be clear

that section 19 of the TMA has no applicability in the present case.
For section 19 of the TMA to be applicable, there must be at least
one registered trademark and one pending application on the
Register or two pending applications on the Register. At the point
the opposition was filed by the Respondent on 26.09.2014, the
Respondent had yet to apply for or register its GALPERTI trademark
in Malaysia. Thus, section 19 of the TMA would not have any
applicability. Despite this, the Learned Judge found that the
Registrar failed to conduct an inquiry under section 19 of the TMA.
This cannot be right.
49. This was clearly not considered in the correct context by the
Learned Judge in his decision which means that the decision was
arrived at erroneously.
Grounds 5 and 6 of the MA
50. These grounds are premised on the errors by the Learned Judge in
finding that the Registrar had failed to apply his mind fully and
correctly based on the evidence before him and the applicable test,
in dismissing the Respondent’s opposition. Contrary to the findings
36
of the Learned Judge, the Registrar had diligently considered all the
evidence presented and applied the trite principles in arriving at his
decision. The evidence presented before the Registrar clearly
demonstrated that the Appellant is the prior user of the GALPERTI
trademark in Malaysia. Any alleged use by the Respondent in
Malaysia was subsequent to the Appellant. This is consistent with
the position in Re Hudson’s Trade Mark (1886) 32 Ch. D 311,
Liwayway Marketing Corp v Oishi Group Public Co Ltd [2017] 4
MLJ 141 [Tab 4 & 5 of IAP] and Yong Sze Fun & Anor (t/a
Perindustrian Makanan & Minuman Layang-Layang) v Syarikat
Zamani Hj Tamin Sdn Bhd & Anor [2012] 1 MLJ 585 [Tab 6 of
IAP]. The failure of the Learned Judge to give cognisance to this
must mean an error in the finding of the Learned Judge.
Grounds 7 and 8 of the MA
51. Under these grounds, the Appellant is submitting that the Learned
Judge erred in law and fact when he found that the Registrar had
failed to determine the question of similarity or likelihood of
confusion. In doing so, the Learned Judge failed to appreciate that
the issue of confusion is subsidiary to the issue of priority. Both the
Appellant and the Respondent had clearly accepted that the
trademarks in issue were similar. As such, the issue of confusion
would only follow once priority over the GALPERTI trademark is
shown. As alluded to above, evidence presented clearly shows that
the Appellant is the first party to assert rights to its GALPERTI
trademark. Thus, the only conclusion that can be drawn is that the
Appellant is the bona fide proprietor of its GALPERTI trademark and
37
any subsequent use of the GALPERTI trademark by the
Respondent would cause confusion and deception.
52. Given that the Learned Judge failed to direct his mind to the relevant
factual and legal considerations in arriving at his decision, his
decision cannot be justified.
Ground 9 of the MA
53. This ground relates to the order of cost. We submit that the case
should have been decided in favour of the Appellant should the
Learned Judge had applied his mind fully and correctly based on the
evidence before him and the applicable test.
CONCLUSION
54. In conclusion, it is our submissions that the Learned Judge’s

decision dated 21.3.2022 should be set aside and the Appellant’s
trademark application should be allowed to proceed to registration
pursuant to the TMA for the following summarized reasons: -
i. Based on the evidence presented, it is clear that the Appellant

is the first user of the GALPERTI trademark in Malaysia
Accordingly, the Appellant is entitled to seek ownership of its
trademark. Any alleged use of the GALPERTI trademark by
the Respondent was subsequent to the use of the Appellant’s
GALEPRTI trademark. Accordingly, it is the subsequent use
by the Respondent that would cause confusion and deception
to the members of trade and public.
38
ii. The use of a trademark by a licensee would enure to the
benefit of the licensor (namely, the Appellant). Where the
dispute is not between the licensee and licensor but rather
with a third party, the court need not go into the relationship
between the licensor and licensee which regulates the
contractual arrangements between them.
iii. The discrepancies in the invoice dated 1993 have been
explained by the Appellant. Even if the said 1993 invoice is to
be disregarded, there are other numerous invoices of sales
which evidenced the prior use of the Appellant’s GALPERTI
trademark in Malaysia.
iv. Section 19 of the Trade Marks Act 1976 has no applicability to
the present case as at the material time when the subject
application was examined and accepted by the Registrar of
Trade Marks, the Respondent had no pending application or
registration for the GALPERTI trademark in Malaysia.
55. Had the Learned High Court Judge appreciated the factual and legal
considerations correctly, the Learned Judge would not have arrived
at his findings but would have dismissed the Respondent’s appeal
and affirmed the decision of the Registrar.
56. By virtue of the above, we humbly pray that the court allows the
appeal of the Appellant against the Respondent with costs.
Dated this 15th day of November 2023.
39
………………………….
Indran Shanmuganathan,
Sim Sook Eng
Of counsel for the
Appellant
This APPELLANT’S WRITTEN SUBMISSIONS is filed by Messrs.

Shearn Delamore & Co., solicitors for the above-named Appellant whose
address for service is at the 7th Floor, Wisma Hamzah Kwong Hing, No.
1, Leboh Ampang, 50100 Kuala Lumpur
Our Ref SD (IP) 4836771 (IS/SSE)
Tel +603-2027 2922
Fax +603-2072 2758
40

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W-02(IPCv)(A)-537-03/2022

APPELLANT’S WRITTEN SUBMISSIONS

May it please this Honourable Court,

Chronology of relevant facts

2. The subject matter of the appeal is the Appellant’s application to

4. In response to the opposition filed, the Appellant raised the following

(i) The Appellant, which was set up in 1982, is the holding

5. The Registrar of Trademarks having considered all the facts and

(i) The Registrar found that both the Respondent’s GALPERTI

6. Dissatisfied with the decision of the Registrar of Trademarks, the

7. The Respondent’s appeal was heard before the High Court on

9. On 21.3.2022, the High Court allowed the Respondent’s appeal

General Legal Principles

12. It is trite law that a factual finding should only be reversed in it is

“[94] The law is clear and well-settled in that the principle on

[97] Recently in Henderson v. Foxworth Investments Ltd and

[99] The Court of Appeal had reversed the overall conclusions

[101] In our opinion, a grave fundamental error made by the

“[78] Hence following this court’s ruling in Tengku Dato’

[150] The Court of Appeal reversed the findings of the trial

... Therefore, although not without hesitation and not

“[16] Learned counsel for Liwayway further submitted that not

[17] A similar view was taken by the Federal Court of Australia

“[130] It is trite law that even where there is a

“… In Habib Bank Ltd v Habib Bank AG Zurich [1981] 1 WLR

[132] A classic example would be the case of DHN Food

We all know that in many respects a group of companies

there is evidence of a general tendency to ignore

This is especially the case when a parent company

[133] And according to Goff LJ in the same case at p 861, that

[134] The same position was adopted by Justice Dillon in

“[131] In a situation where the dispute is not between the

23. In view of this, the Learned Judge clearly took an erroneous

If a valid licence of a name or mark is in operation in

28. This ground is premised on the Learned Judge failure to appreciate

29. As illustrated in the cases of Re Hudson’s Trade Mark (1886) 32

“…[t]rade mark law is very territorial in many aspects.”

[194] By reason of the above, the facts point clearly towards a

[195] It is our judgment that the subsequent use of the

38. The same reasoning above is also applicable to the Respondent’s

(1) No trade mark shall be registered in respect of any goods

(2) No trade mark shall be registered in respect of any services

(3) Where separate applications are made by different

(4) Where separate applications are made by different

48. If the relevant provisions are considered carefully, it would be clear

Grounds 5 and 6 of the MA

Grounds 7 and 8 of the MA

54. In conclusion, it is our submissions that the Learned Judge’s

i. Based on the evidence presented, it is clear that the Appellant

Dated this 15th day of November 2023.

This APPELLANT’S WRITTEN SUBMISSIONS is filed by Messrs.

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