On 21 June 2006, Justice Datuk Wahab Bin Patail ruled in favour of UBS AG (a renowned global financial group) in the Kuala Lumpur High Court, with regard to the issue of Trademarks amendments. The Respondents, UBS Corporation Sdn Bhd owned a trademark which consisted of the letters ‘UBS’, the words ‘User Business System’ and a distinctive abstract geometrical device. It was filed in class 9 for goods such as computer softwares. However in 2001, UBS Corporation Sdn Bhd (henceforth “UBS Corp”) applied to have its mark simplified to the letters “UBS” alone, and surprisingly its application was approved by the Malaysian Trademark Registry.
UBS AG, on the other hand, is the proprietor of the mark “UBS” in a stylized font, coupled with a distinctive device consisting of three connected keys (image shown below).Therefore it came as no surprise when UBS AG sought to expunge UBS Corp’s newly amended trademark.
UBS Corporation Sdn Bhd’s UBS Corporation Sdn Bhd’s mark initial mark after alteration compared with
UBS AG’s Mark
UBS AG argued to the courts that it was a ‘person aggrieved’, in that it would in some cohesive manner be damaged or injured if UBS Corp’s registration were allowed to remain on the Trademark Register. UBS AG relied on two factors; firstly, that UBS Corp’s registration was the basis for the Registrar’s objections against several of UBS AG’s applications in Class 9 and secondly, that UBS AG had been also providing computer software to its clients and had invested heavily in IT companies and the creation of software products.
UBS AG also submitted that the alteration made by UBS Corp should not be allowed due to the fact that the alteration made on the mark was significant and affects the identity of the original mark. In addition, UBS AG also argued that it had prior rights over the mark UBS and registration of the altered mark was in contravention of the above-mentioned principles of law, and as a result of the amendment, the altered mark was not distinctive of and/or not capable of distinguishing the goods or services of UBS Corp, the altered mark was identical to or nearly resembled UBS AG’s UBS mark, which is well known in Malaysia, the registration and/or use of the altered mark by UBS Corp or any third party with its consent would be likely to deceive or cause confusion to the public or would be contrary to law, and finally, the use of the altered mark by UBS Corp or any third party with its consent would constitute to the tort of passing off.
The High Court decided to allow UBS AG’s application and the subsequently ordered UBS Corp to restore the altered mark to its original form. The author completely agrees with Justice Datuk Wahab Bin Patail’s stand on this issue as it seems to reflect clearly on the spirit of Section 44(1) of Trade Marks Act 1975 that being, any intended alteration of a mark in any manner must not substantially affect the identity of the mark. UBS Corp has filed an appeal against this decision which is now pending before the Kuala Lumpur Court of Appeal.
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