2-day delay doesn’t kill trademark application, says High Court

 Judge rules that the 'same time' requirement for serving counterstatement is only directory, not mandatory.

The Kuala Lumpur High Court ruled that Regulation 24(2) of the Trade Marks Regulations 2019 was to ensure that the opponent received timely notice rather than to create a technical hurdle that could deprive an applicant of valuable trademark rights.

KUALA LUMPUR:

A two-day delay in filing a counterstatement to a trademark opposition does not automatically result in the withdrawal of a trademark application, the High Court has ruled.

Judicial commissioner Edwin Paramjothy Michael Muniandy said the Registrar of Trademarks (RoT) had erred in treating Regulation 24(2) of the Trade Marks Regulations 2019 as requiring an applicant to serve its response on the opponent on the same day it is filed.

The case involved Chinese automotive parts manufacturer GSP Automotive Group Wenzhou Co Ltd and Japanese battery maker GS Yuasa Corporation.

GS Yuasa had opposed GSP Automotive’s trademark application, which the RoT deemed withdrawn when GSP served its counterstatement two days after filing it with the registrar.

Regulation 24(2) requires the counterstatement to be filed with the registrar and served on the opponent “at the same time”.

However, Muniandy held that the requirement for simultaneity was directory rather than mandatory.

He said the regulation imposed a duty to serve the counterstatement but did not expressly state that a failure to do so at the same time would result in the automatic withdrawal of an application.

The judge, in his 33-page judgment, noted that Regulations 24(3) and 24(4), in contrast, expressly set out consequences for non-compliance.

This showed that where the legislature intended to impose a specific consequence, it had done so expressly, he said.

Muniandy also stressed that the purpose of Regulation 24(2) was to ensure the opponent received timely notice and had an opportunity to respond, rather than to create a technical hurdle that could deprive an applicant of valuable trademark rights.

In this case, GS Yuasa suffered no prejudice from the two-day delay and was able to respond promptly after receiving the counterstatement.

The judge said it would be disproportionate to treat such a minor procedural lapse as automatically fatal to the trademark application.

He also found that the RoT failed to properly exercise the discretion available under Regulation 24(4) to prevent an unjust outcome.

The High Court set aside the RoT’s decision and reinstated GSP Automotive’s trademark application.

M Timothy Joseph Dass appeared for GSP Automotive while Sukumar Karuppiah and Sarita Menon Mohan and George Mark Amirtharaj represented GS Yuasa. - FMT