Andreas Stihl AG & Co. KG v Wong Chee Seng

wa-24ip-39-11-2024 High Court (Mahkamah Tinggi) 3 November 2025 • WA-24IP-39-11/2024 • 38 min read

15 cases cited (0 SG, 15 foreign)

Catchwords

invalidate, revoke and expunge trademark registration-whether the defendant’s trademark is similar to the plaintiff’s trademark such that there is a real likelihood of deception of the public is a question of fact. It is a matter the court is eminently capable of determining, and not one for determination by witnesses-sections 47 and 76 of the TMA 2019-Sections 23, 24, 47, 48, 54 and 56 of TMA 2019-an aggrieved person under section 47[1] of the TMA 2019-TMA 2019 replaced the old Trade Marks Act 1976-i.An opposition proceeding does not give rise to any estoppel to the same party [say the plaintiff here] from seeking to rectify the register by expunging the registered mark after an unsuccessful opposition. This is because an opposition proceeding is inherently not final so as to be capable of being the basis for an issue estoppel;-- ii. the fact that the plaintiff had not appealed against the decision of the registrar in dismissing the plaintiff’ sopposition to the defendant’s mark is likewise irrelevant;- iii. even if a person [i.e. the plaintiff here] had pursued an opposition and lost, that person could still apply to invalidate and no cause of action estoppel nor issue estoppel would prevent it; and -iv. it remains open for the plaintiff here to challenge the registration of the defendant’s trade mark by relying on the provision on relevant sections in the TMA 2019 in rectification proceedings-Sections 48, 54 and 56 of TMA 2019-The person must be someone who has some element of legal interest, right or legitimate expectation in its own mark which is being substantially affected by the presence of the registered trademark. The interest and right must be legal or lawful-i.A small amount of use of a trademark by the plaintiff is sufficient to prevent the defendant or any other party from claiming proprietorship in the said mark if its use by the defendant is likely to cause confusion to the public-ii. the phrase "use in the course of trade" in the TMA 2019 is wide and has been liberally interpreted-iii.Proof of actual confusion is not required. It is sufficient for the plaintiff to demonstrate that there exists a probability or possibility of confusion-iv. The issue of likelihood of confusion is not to be determined by witnesses. The determination of whether there is likelihood of confusion still lies with the court. It is ultimately one for the court to decide-v.trademark infringements can be decided by way of an OS-the test for likelihood of confusion and deception is met if a number of persons are led to wonder whether the two products originate from the same source-“[103] Upon a full consideration of the principles and authorities aforementioned, the test for likelihood of confusion and/or deception would be as follows: (a) Both side-by-side comparison and the Imperfect Recollection Test must be satisfied; (b) The comparison is made in terms of phonetic, visual, trade channel, and idea aspects of the marks; (c) The purpose of such comparison is to determine whether the defendant’s mark contains essential features of the plaintiff’s registered trade mark, which strike the eye and fix themselves in the recollection of the users of the plaintiff’s goods;(d)The Court shall then take into account all surrounding circumstances and apply the Imperfect Recollection Test, bearing in mind the outcome of the comparison, in order to determine whether it is likely that ordinary consumer with ordinary memory who would be likely to buy the goods would be deceived and think that the defendant’s mark is the same as the plaintiff’s registered trade mark. In other words, the test of whether one trade mark is confusingly similar is an objective test and the test is that of an ordinary person with an appropriate level of literacy (Merck Kgaa v Leno Marketing (M) Sdn Bhd: Registrar of Trade Marks (Interested Party) [2017] 1 LNS 1006); and-(e)In determining this test, the Court is entitled to give effect to t

Judges (1)

Leong Wai Hong Delivered

Parties (2)

Andreas Stihl Ag & Co. Kg Applicant Wong Chee Seng Respondent

Cases Cited (15)

AU (1)

[2000] FCA 1335

MY (14)

[1987] 2 MLJ 681 [2009] 4 CLJ 749 [2009] 5 MLJ 703 [2009] 5 MLJ 741 [2012] MLJU 695 [2015] 4 MLJ 166 [2015] 6 MLJ 465 [2016] MLJU 429 [2019] 9 CLJ 365 [2021] 10 MLJ 234 [2021] MLJU 269 [2022] 2 MLJ 67 [2022] MLJU 356 [2024] 9 MLJ 603

Judgment

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Source: eJudgment (wa-24ip-39-11-2024)