The GIORDANO saga continues! This case highlights that goodwill and reputation in a trademark do not extend merely to goods which are in the same class that the mark is used for, but also to goods having the “same description”.
The case involved Walton International Ltd (the appellant), one of the companies owned by Giordano Holdings of Hong Kong, which brought an opposition action against the registration of the mark “GIORDANO” in Class 9 by Yong Teng Hing B/S Hong Kong Trading Co. (the respondent). The appellant’s case was that the respondent was trying to ride on the mark’s reputation, goodwill and commercial advantage. When the opposition failed at the Trademark Registry level, the appellant appealed to the High Court. In 2007, the High Court dismissed the appellant’s case, stating that the respondent was the true owner of the mark, as they were the first user of the mark for Class 9 products (optical goods, sunglasses, etc) in Malaysia and that the appellant had never applied for the registration of the mark “GIORDANO” in Class 9.
However, in a recent judgment, the Court of Appeal (CA) decided in favour of the appellant and reversed the High Court’s decision. The CA found that the respondent had failed to adduce sufficient evidence to show that it had commenced use of the trademark in relation to optical goods and sunglasses prior to the filing date of his application for registration. The CA also held that “optical goods and sunglasses” (in Class 9) and “garment and wearing apparels” (in Class 25) are goods of the same nature in that both can be commercially described as “personal wear” or articles meant to be worn on the body and both categories of goods are considered under the same umbrella of “fashion wear”.
Appellant’s outlet
Appellant’s trademark
On the above basis, the CA held that although the appellant had not registered or used its mark on Class 9 products before the filing date of the respondent’s application, the use of the mark as early as 1990 by the appellant on various other products which falls under the same description of goods as those in Class 9 is sufficient evidence to prove that (i) the appellant (not the respondent) is the first user and (ii) therefore, is a bona fide proprietor of the “GIORDANO” trademark.
The CA further stated that the Registrar of Trade Mark should have refused the registration of the application during the opposition stage as there is a real risk of confusion or deception to the public. The public will think that both goods (optical products and garment apparels) bearing the “GIORDANO” trademark originate from the same source, especially since the goods are usually manufactured, distributed and sold through the same channels and commonly sold at the same places, next to each other.
This case certainly shows that the Malaysian Courts are delivering decisions that take brand owners’ interests into consideration, along with public interest. Although the appellant had to battle three times for a final win, the facts of the case were not so straightforward and therefore, the need for a long battle is understandable. The appellant was not relying on its “well-known status” which allows trademark protection to extend to dissimilar goods or goods in different classes. At the time the respondent applied for its mark in Class 9 (in 1992), the appellant had yet to make a name for its brand “GIORDANO” in Malaysia (as it only entered the market in 1990). Reliance was on the fact that the respondent was not a “bona fide proprietor” of the mark “GIORDANO” and fortunately, the FIRST USER rule prevailed once again in Malaysia – this time for goods in other related classes!
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