It is not uncommon for businesses to register trademarks for future use. By securing registration early, businesses can protect their rights before initiating actual commercial activities related to the mark. 

The general legal framework in Malaysia 

However, it is essential to note that a trademark registration is not intended to serve as a mere placeholder. A registered trademark may be revoked by an aggrieved party on the basis that it has not been used in good faith for three years consecutively after registration or if its use has ceased for three years consecutively without a valid reason. 

Interestingly, the outcome of the revocation action does not necessarily have to be an all or nothing. Malaysia’s Trademarks Act allows for a registered trademark to be partially revoked where the non-use relates to particular goods or services, while maintaining its validity for those that remain in use. This is so that the trademark register faithfully represents the actual commercial utilization of the mark, and at the same time, safeguards against any unjust obstruction of other traders from using a mark for goods or services that the registered proprietors do not truly offer or plan to offer. 

Case law 

The application of partial revocation was recently examined by the Court of Appeal in the case of Transferwise Ltd v. Public Bank Bhd [2024] MLJU 2866. In this case, Public Bank Berhad (the defendant/respondent) owns the WISE trademark. On the other hand, Transferwise Ltd (the applicant/appellant) sought to apply to register their TransferWise/Wise marks encompassing currency exchange and transfer services in Malaysia. The appellant filed a non-use revocation action against the respondent’s registered trademark except in relation to “children’s savings account”. 

At the first instance, the High Court ruled in favour of the respondent, as it found that it was the appellant’s subsidiary, and not the appellant, who provided the currency exchange and transfer services. As such, the appellant was not an “aggrieved person” under the provisions of the Trademarks Act.  

Furthermore, the court was of the view that banking and financial services cannot be easily separated. Even though the respondent’s trademark currently only applies to children’s banking services, it was held that in light of the highly regulated banking sector, the services listed under the respondent’s trademark are relevant to both its current and future services. 

On appeal, the Court of Appeal overturned the High Court’s decision, finding that the appellant had met the criteria under the relevant provisions of the Trademarks Act. 

First criteria: Whether the appellant is an “aggrieved person” 

An “aggrieved person” is one who has either used their mark as a trademark or has a genuine and immediate intention to do so in a trade that is identical or similar to the trade of the proprietor of the registered trademark that they seek to eliminate from the register. 

In this case, the Court of Appeal found that the use of the appellant’s marks in Malaysia via its subsidiary, accrues to the appellant, who is the holder of the marks. Consequently, the appellant is indeed an “aggrieved person” and possesses the locus standi to apply for a revocation of a registered mark by reason of non-use. 

Since the appellant is the proprietor of the marks, and not its subsidiary, the appellant is considered to have used such marks for currency exchange and transfer services in Malaysia. 

Second criteria: Whether there has been non-use by the respondent 

The onus is on the appellant to establish prima facie evidence that the respondent’s trademark had not been used in good faith in Malaysia for a period of three years. Pursuant to this, the appellant had furnished two investigation reports to show prima facie non-use of the respondent’s trademark. The reports were prepared by two separate private investigation firms, dated November 3, 2020, and April 16, 2021, respectively. Both reports revealed that the respondent’s trademark was only used for children’s savings accounts and not for any other services, thus establishing non-use. 

Decision 

The Court of Appeal granted partial revocation of the respondent’s trademark registration, limiting to “banking” and “financial” services only, in view that “children savings account” falls within these two services.  

Conclusion 

One key takeaway from this case is that it serves as an important reminder for businesses with registered trademarks to ensure genuine and continuous use of their trademarks for all the goods and services they claim. Failure to do so would put their trademarks at risk to non-use challenges, which could result in total or partial loss of protection.