The case of Fumakilla Ltd v The Registrar of Trademarks [2023] 11 MLJ 691 reinforces that the registrability of a trademark must be assessed within the context of the local market, while reaffirming the territorial nature of trademark rights.
This article examines the High Court's decision to explore how a foreign word that describes the goods or services can still meet the registrability requirements under Malaysian trademark law.
Background
This was an appeal under the repealed Trade Marks Act 1976 (the "Act") against the decision of the Registrar of Trademarks ("Registrar") to reject Fumakilla Ltd's ("Appellant") trademark application for goods in Class 3, specifically fragrance preparations. Although the appeal was filed after the Trademarks Act 20191 came into force, the Court applied the provisions of the repealed Act as the Registrar's decision was made under that regime.
The mark in question "
" comprised the word "KAORI", a
transliteration of the Japanese characters
"かおり" (pronounced ka-o-ri)
positioned directly below it (the
"Mark"), which means "scent"
or "fragrance" in Japanese. The Registrar rejected the
application on the grounds that the Mark was not registrable as it
failed to meet at least one of the registrability criteria under
the Act.
Grounds of appeal
The issues before the Court were:
- Whether the Registrar erred in law in finding that the Mark did not meet the registrability criteria; and
- Whether the Registrar erred in law by failing to consider, or sufficiently consider, that the Mark had already been registered in multiple foreign jurisdictions.
Registrar's reasons for refusal
The Registrar found that both the word "KAORI" and the accompanying Japanese characters have a known meaning, and therefore, the Mark was not an invented word. Given its meaning, Malaysians fluent in or able to understand Japanese can easily associate the Mark with the character of the goods for which it was registered.
On this basis, the Mark was found to be descriptive and not distinctive. Hence, it was unregistrable.
High Court's decision
The High Court found that the Registrar erred in law in rejecting the Appellant's application and set aside the Registrar's decision, ordering the Mark to be registered.
Firstly, the Court found that the Mark qualifies as an invented word under Section 10(1)(c) of the Act as it is a unique combination of a foreign word and Japanese characters, is not found in local lexicons, and is not generally understood in Malaysia. Evidence was adduced to demonstrate that "KAORI" was not in the English or Malay lexicon and there was no evidence that the word "KAORI" together with the accompanying Japanese characters is well known or understood by the ordinary Malaysian to mean what they do in Japanese. The Court further noted that the probability of an ordinary Malaysian understanding the word's meaning is diminished by the word "KAORI" being paired with Japanese characters.
The Court held that the Registrar had also erred in law by selectively quoting case authorities which do not categorically preclude foreign words from registration merely because they carry meaning in another language to support its conclusion.
Secondly, the Court agreed that the Mark did not have a direct reference to the character or quality of the goods and thus satisfies Section 10(1)(d) of the Act. If Malaysians generally did not understand the meaning of the words in the Mark and had to pause to reflect or inquire about it, then the Mark does not have a direct reference to the character or quality of the goods for which it is registered.
Thirdly, the Mark was found to be distinctive under Section 10(1)(e) of the Act. There is no evidence of other traders using or desiring to use "KAORI", the Japanese characters, or the combination thereof. Since Japanese is not commonly spoken or understood by the general public in Malaysia, it is unlikely that other traders would wish to use the same mark in the course of trade, unless motivated by improper intentions.
Additionally, on the issue of foreign trademark registrations, the Court clarified that while such registrations may be relevant, they are not binding since trademark rights are territorial. Therefore, no error of law arose from the Registrar not adopting the approach taken in other jurisdictions.
Comparative analysis: the Oishi case
It is worth noting that the Registrar cited Oishi Group Public Company Limited v Liwayway Marketing Corporation [2014] MLJU 1154; [2015] 2 CLJ 1121 ("Oishi"), where the term "OISHI" (meaning "delicious" in Japanese) was found to have a direct reference to the character or quality of the goods, namely food and drink items, and thus did not meet the criteria for registration.
The Court in Oishi held that, as Japanese culture, particularly its culinary aspects, is internationally renowned, the Malaysian public had come to recognise "OISHI" as meaning "good taste" in reference to food items.
However, the Court distinguished Oishi, noting that while many Malaysians may indeed be familiar with the meaning of "OISHI" due to the cultural prominence of Japanese cuisine, there was no evidence of a corresponding familiarity with fragrances or scents in relation to the Mark in question. As such, the reasoning in Oishi could not be directly applied.
Application Under the Trademarks Act 2019
Although the Court applied the repealed Act, the principles discussed remain applicable and provide guidance on the registrability of foreign words in trademarks under the Trademarks Act 2019.
Key takeaway
This case reaffirms that foreign words in trademarks should not be rejected merely because they have meaning in another language. The determining factor is whether the meaning is widely recognised or understood in the local context. For brand owners, this highlights the importance of considering not just statutory requirements (i.e., registrability criteria), but also local consumer perception when crafting and defending trademarks, especially when foreign languages are involved.
Footnote
1For an overview of the key changes in the Trademarks Act 2019, please refer to our article titled “Malaysia's new Trademarks Act 2019 – a new dawn arises” published on our website on 8 January 2020, available at https://www.spruson.com/malaysia-update-malaysias-new-trademarks-act-2019-a-new-dawn-arises/.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
