Malaysia - Merck KGaA v Leno Marketing (M) Sdn Bhd
Legal News & Analysis - Asia Pacific - Malaysia - Intellectual Property
29 June, 2018
The Federal Court in the recent case of Merck KGaA v Leno Marketing (M) Sdn Bhd held that the High Court, when hearing “appeals” against the Registrar’s decisions made pursuant to sections 28(5), (6) and (7) of the Trade Marks Act 1976 (“TMA”) is, in actual fact, exercising its appellate jurisdiction and not original jurisdiction. This decision is significant as it means that any cause or matter brought to the High Court under section 28 of the TMA will end at the Court of Appeal and no further appeal can be taken to the Federal Court.
The Appellant (Plaintiff in the High Court, “Merck KGaA”) is an international pharmaceutical company. In Malaysia, Merck KGaA is the registered owner of trade marks “BION” and “BION 3” in Classes 5, 29 and 30.
On 18 July 2008, the Respondent (Defendant in the High Court, “Leno Marketing”) applied to register “BIONEL” in respect of goods in Class 5.
The Registrar accepted Leno Marketing’s application for “BIONEL” in Class 5.
Upon publication of the mark in the Gazette, Merck KGaA opposed Leno Marketing's BIONEL trade mark by filing a notice of opposition under section 28 of the TMA.
Merck KGaA’s opposition was dismissed by the Registrar.
Merck KGaA appealed against the decision of the Registrar to the High Court under sections 28(5) and 28(6) of the TMA. Merck KGaA’s appeal was dismissed.
Dissatisfied, Merck KGaA appealed to the Court for Appeal. The Appeal was dismissed.
One of the approved leave questions which the Federal Court had to deal with was as follows:
“Whether the High Court in exercising its powers under section 28(5), (6) and (7) of the Trade Marks Act 1976 is acting in its original jurisdiction or appellate jurisdiction?”
Section 96 of the Courts of Judicature Act 1964 (“CJA”) sets out the conditions for an appeal to the Federal Court. It is clear from section 96(a) of the CJA that one of the conditions needed is that the High Court must have decided the cause or matter “in the exercise of its original jurisdiction”.
In coming to its determination that the High Court was in fact exercising its appellate jurisdiction when considering a cause or matter brought under section 28(5), (6) and (7) of the TMA, the Federal Court had considered the wording used in these sections. In all these sections, the word “appeal” is used. The Federal Court felt that the choice of words by the draftsman is significant as it is presumed that the draftsman uses particular words in order to convey the intention of the Parliament.
In justifying this determination, the Federal Court also made reference to other sections within the TMA that require deliberation by the High Court which had not used the word “appeal”, namely, sections 45 (rectification of the register) and 46 (provisions as to non-use of trade mark). These sections provide a mechanism for the aggrieved person not to “appeal” but to make an “application to the court”.
The distinction between appeals and applications brought to the High Court under the TMA is also reflected in Order 87 of the Rules of Court 2012, which makes specific provisions in respect of the provisions that employ two different sets of wordings. Rule 2 states that “an application to the Court under the Act shall be begun by originating summons”, whereas Rule 3 states that “an appeal to the Court under the Act shall be brought by originating summons”.
The Federal Court had clearly favoured a plain and natural reading of the word “appeal”. To construe this word any other way would only unduly stretch and constrain an otherwise unambiguous and clear word.
Accordingly, the Federal Court did not proceed to hear the remainder of the leave questions.
For further information, please contact:
Michelle Loi, Partner, Shearn Delamore & Co
 Civil Appeal No 01(f)-9-04/2017(W)
 28 (5) A decision of the Registrar under subsection (4) is subject to appeal to the Court. (6) An appeal under this section shall be made in the prescribed manner and the Court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions, amendments, modifications or limitations, if any, registration is to be permitted. (7) On the hearing of an appeal under this section any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court but no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar other than those stated by the opponent except by leave of the Court.
 *96. Subject to any rules regulating the proceedings of the Federal Court in respect of appeals from the Court of Appeal, an appeal shall lie from the Court of Appeal to the Federal Court with the leave of the Federal Court — (a) from any judgment or order of the Court of Appeal in respect of any civil cause or matter decided by the High Court in the exercise of its original jurisdiction involving a question of general principle decided for the first time or a question of importance upon which further argument and a decision of the Federal Court would be to public advantage; or…