Successful Trade Mark Registration: Indefeasibility Of Title?

Upon obtaining the trade mark registration certificate, does the registrant own the registration forever, provided it is renewed every 10 years?

Unfortunately, the answer is: Not necessarily. The success in obtaining the trade mark registration certificate neither includes a guarantee of perpetual ownership nor indefeasibility of title. The validity of the registration is but a rebuttable presumption and even a properly registered trade mark can be removed by a third party.1

There are several ways a trade mark registration may be challenged and removed from the Register of Trade Marks.

Registration without sufficient cause or wrongfully remaining in the Register

On an application by a "person aggrieved", the court may remove or vary any trade mark registration on the grounds that the registration is without sufficient cause or wrongful, erroneous or defective.2

Ponni rice3

Ponni rice is specially processed rice proven to have a low glycaemic index (good for the management and control of diabetes and blood cholesterol). The rice is named after and in tribute to the Kaveri Delta region in India where it is grown.

In Malaysia, several entities were licensed as distributors of imported Ponni rice since the 1990s. Syarikat Faiza Sdn Bhd ("Faiza") proceeded to obtain trade mark registration of the word PONNI in 2000. As Faiza's registration of PONNI would block the use of the name and mark PONNI by others who have trading interests in the Ponni rice, those wishing to use the term Ponni were and could further be negatively affected by Faiza's exclusive claim to the mark. Upon an application to the court, Faiza's registration of PONNI as a trade mark was removed.

Wieland4

In 2001, Industrial Automation (M) Sdn Bhd ("Industrial Automation") was appointed the local sales agent for German company, Wieland Electric GmbH ("Wieland Electric") in Malaysia. In 2005, Industrial Automation filed for registration of the trade mark WIELAND in its own name.

Wieland Electric demanded that Industrial Automation stop the registration which was filed without its authorisation. Industrial Automation admitted to filing the registration but promised to assign the registration of WIELAND to Wieland Electric if the registration was allowed to proceed to completion. However, upon a grant of registration, Industrial Automation refused to assign the trade mark to Wieland Electric, prompting Wieland Electric to terminate the business relationship and file an application to remove the...