FERRARI S.p.A v SUNRISE-MARK SDN BHD

Case Significance

Illustrates the appellate approach to a Registrar's decision on a trademark opposition: the likelihood-of-deception test under section 14(1)(a) of the Trade Marks Act 1976 is assessed on the whole of the evidence and by comparison of the marks as a whole, and a Registrar's finding of no confusing similarity will not be disturbed absent error.

This High Court decision, in the Commercial (Intellectual Property) Division at Kuala Lumpur, concerns a trademark opposition appeal. The plaintiff, an Italian company, had opposed the defendant company's application to register a trademark, and the Registrar of Trade Marks had dismissed that opposition and allowed the mark to proceed to registration. The plaintiff appealed to the High Court under the appeal provisions of the Trade Marks Act 1976 and the corresponding provisions of the Trademarks Act 2019, bringing the matter before the court by way of originating summons. The central question was whether the defendant's mark was likely to deceive or cause confusion to the public within the meaning of section 14(1)(a) of the Trade Marks Act 1976, and, as part of that inquiry, whether a word that had been disclaimed should be taken into account in assessing the likelihood of deception or confusion. Having considered the totality of the evidence, the court found that the use of the defendant's mark was not likely to deceive or cause confusion, because it was not confusingly similar to the plaintiff's mark. It followed that the Registrar had not erred in dismissing the opposition and in allowing the defendant's mark to proceed to registration. The court accordingly dismissed the originating summons with costs. Delivered by Adlin Abdul Majid J, the judgment is a useful illustration of the approach an appellate court takes to a Registrar's decision on a trademark opposition: the test under section 14(1)(a) turns on the likelihood of deception or confusion assessed on the whole of the evidence and by comparison of the marks as a whole, and the court will not disturb the Registrar's finding where the marks are not confusingly similar, even where a well-known brand opposes a later application by a local trader. The decision also confirms that the effect of a disclaimer must be factored into the comparison, and that the court weighs the marks in their entirety, including any disclaimed element, rather than dissecting them into isolated components when judging the likelihood of deception or confusion.