Pirelli loses appeal to deregister children’s clothing trademark

The Court of Appeal rules that the High Court did not err in finding that the tyre company had slept on its rights for a long period of time.

The Court of Appeal dismissed Pirelli’s appeal to deregister a trademark registered with MyIPO and used for a children’s clothing line by an Alor Setar firm.

PUTRAJAYA:

 Italian tyre multinational Pirelli has once again failed in its attempt to deregister a trademark held by an Alor Setar children’s clothing manufacturer that incorporates its brand name.

A three‑member Court of Appeal panel, chaired by Justice Choo Kah Sing, dismissed Pirelli & C. S.p.A’s appeal against the High Court’s 2023 ruling that had rejected its application.

“Our decision is unanimous. We are not satisfied that the High Court judge had erred in law. There are no merits in the appeal,” said Choo.

The panel, which included Justices Meor Hashimi Abdul Hamid and Amarjeet Singh, also awarded Chip Hwa Sdn Bhd RM30,000 in costs.

Lawyer Alyshea Low acted for Pirelli & C. S.p.A, while Karin Lim and Nicholas Lim appeared for Chip Hwa.

In November 2020, the tyre company filed a suit in the High Court against Chip Hwa, alleging passing off, or wrongfully taking advantage of, and seeking a declaration that the local firm had infringed its world-famous “Pirelli” brand and trademark, along with consequential relief.

It sought to revoke Chip Hwa’s mark for non-use under Section 46 and invalidate it under Section 47 of the Trademark Act 2019.

Pirelli also sought damages, including aggravated and exemplary damages.

Chip Hwa disputed the claim, arguing that it should be dismissed on grounds of limitation and inordinate delay.

It further argued that its statutory rights as a registered trademark proprietor could not be displaced by the common law tort of passing off.

Chip Hwa said it had in 1986 registered with the Malaysian Intellectual Property Corporation (MyIPO) its clothing line trademark featuring the word “Pirelli” with an elongated “P”, together with a horse and knight, and was, therefore, entitled to protection under the Trademark Act.

The company said it was notified of Pirelli’s claim in 1993, when its then solicitors wrote to the trademarks registrar requesting time to challenge Chip Hwa’s intended registration of its mark.

In 1994, the registrar informed the parties that Pirelli’s proposed opposition proceedings had been dropped because of its failure to pursue the application, and that the mark would proceed to registration.

In 2003, Pirelli, through its solicitors at the time, asked Chip Hwa to assign to them its registered trademark, but received no reply.

Pirelli eventually filed its lawsuit at the Kuala Lumpur High Court in 2020.

Three years later, the High Court found that Pirelli was aware of Chip Hwa’s use of its mark in 1993, but did nothing to object or apply to invalidate it for 27 years.

The court held that Pirelli had “slept on its rights” and acquiesced to Chip Hwa’s continued use of the mark, and was, therefore, barred by laches (inordinate delay) in bringing the proceedings. - FMT