F.I.A.L Finanziara Industrie Alto Lario S.p.A v GALPERTI S.R.L.

Case Significance

Holds that in trademark opposition proceedings the only question is whether the applicant has established its own right to register: first use of the mark by a related or associated company does not automatically confer that right on the applicant, and the court dismissed the appeal without deciding whether the opponent had the better right.

This Court of Appeal decision at Putrajaya, delivered in a judgment by Azizul Azmi Adnan JCA, concerns an opposition to the registration of a trademark and the question whether prior use of a mark by a related or associated company can found a right in the applicant to register the mark in its own name in Malaysia. The appellant, F.I.A.L. Finanziara Industrie Alto Lario S.p.A, had applied to register the trademark "GALPERTI" in Malaysia, and the respondent, Galperti S.R.L., had opposed that application. The appellant's case depended in part on establishing first use of the mark in Malaysia, including reliance on use said to have been made by a company related or associated to it. The appeal was against the High Court's decision on the opposition.

The court dismissed the appeal. The narrow issue before it was confined to the appellant's own right to register the trademark in the light of the opposition raised, and the court held that the appellant had not established that right — in particular, use of the mark by a related or associated company did not, on the facts and the applicable principles, confer on the appellant itself the right to register the mark in Malaysia. Importantly, the court was careful to delimit what it was deciding: it expressed no view as to whether the respondent had the better right to registration of the mark, holding that this question must await the outcome of the respondent's own application for registration. It accordingly dismissed the appeal with costs of RM20,000, subject to allocatur. The court's careful confinement of the issue matters in practice, because it means the dismissal of the appellant's application does not itself resolve who is ultimately entitled to the mark; it decides only that this appellant, on this record, has not shown the right it asserted. The judgment is a useful illustration that opposition proceedings decide only whether the applicant before the court has established its right to register, and that first use of a mark by an associated company does not automatically enure to the applicant's benefit so as to found a right of registration in its own name.