Oatly AB

688 [2023] 2 MLRH

v. Pahang Pharmacy Sdn Bhd

OATLY AB
v.
PAHANG PHARMACY SDN BHD

High Court Malaya, Kuala Lumpur

Azlan Sulaiman JC
[Originating Summons No: WA-24IP-10-05-2022]
29 November 2022

Intellectual Property: Trade Marks — Registered trade mark — Expungement —

Application to expunge from Register — Whether applicant an aggrieved person —
Whether applicant proved defendant’s continuous non-use of defendant’s selected (in
contention) trademark — Whether plaintiff must first exhaust remedies under s 29 of
Trademarks Act 2019

The defendant had three trademarks for “OATLEY”, registered in Classes

5, 16 and 29 (defendant’s marks). The plaintiff on the other hand, was a
manufacturer of oat-based dairy products and substitutes. These products
were manufactured and sold under the brand names “OATLY” and OAT-
LY. Between 27 December 2019 and 3 June 2020, the plaintiff filed seven
new trademark applications with MyIPO. However, these were provisionally
refused by the Registrar, either partly or fully, because of two of the
defendant’s marks, namely TM No: 2012055705 in Class 5 and TM No:
2012055707 in Class 29. These provisional rejections prompted the plaintiff
to conduct an investigation and market survey to see whether the defendants’
marks were actually being used. On 27 May 2022, the plaintiff filed this
Originating Summons to expunge them from the register for non-use under s
46(1) of the Trademarks Act 2019 (the Act) (the plaintiff ’s application). The
issues that arose for determination were, (i) whether the plaintiff must first
exhaust the remedies under s 29 before commencing the present originating
summons; (ii) whether the plaintiff was an aggrieved person; (iii) whether the
use of the goods or services in respect of which the defendant’s trademark
No. 2012055705 in Class 5 and the defendant’s trademark No. 2012055707
in Class 29 were registered had been suspended for an uninterrupted period
of three years.

Held (allowing plaintiff ’s application in part):

(1) Although the plaintiff did not pursue the route prescribed by s 29(6), this
did not prevent the plaintiff from pursuing the remedy prescribed by s 46. The
words “the applicant shall have an opportunity” in s 29(5) connoted that it was
not mandatory for the applicant to pursue that route. If it were mandatory, then
the words “have an opportunity to” would not be there, and it would simply
read “the applicant shall”. Further, the Notices issued by the Registrar for the
provisional refusal of the plaintiff ’s seven applications were dated between 12
May 2021 and 30 March 2022. Each and every Notice required the plaintiff
 Oatly AB
[2023] 2 MLRH 689
v. Pahang Pharmacy Sdn Bhd

to make representations within two months. As the plaintiff did not take up
the opportunity under ss (5), then under ss 6(a), the plaintiff ’s applications
“shall be deemed withdrawn”. This meant that that process under s 29(5) had
ended by the time the plaintiff ’s application was filed on 27 May 2022. Thus,
at the time the plaintiff filed the plaintiff ’s application, there were no pending,
parallel or duplicate proceedings before the Registrar under the Act to render
it as an abuse of the process of the court. In the premises, the defendant’s
contention that the plaintiff was compelled to have exhausted the remedies
prescribed in s 29 before coming to court was rejected. (paras 23, 24, 26 & 30)
(2) The plaintiff had during the subsistence of the defendant’s trademarks
successfully registered four trademarks and that its Application TM No:
2020001903 in respect of Classes 25, 29, 30, 32, 43 was refused for only
Classes 29, 30 and 32 (and therefore not refused for Classes 25 and 43). This
meant that the defendant’s trademark No: 2012055706 in Class 16 (which the
plaintiff was also applying to remove) was not a ground for hindering any of
the plaintiff ’s seven applications. Furthermore, there was no evidence of the
plaintiff having ever applied to register any of its trademarks in that Class
16. In these circumstances, although the plaintiff may have been an aggrieved
person in respect to the defendant’s Trademark No: 2012055705 in Class 5 and
the defendant’s Trademark No: 2012055707 in Class 29, it was not an aggrieved
person in respect to the defendant’s trademark No: 2012055706 in Class 16.
Accordingly, the plaintiff ’s originating summons in regard to the defendant’s
trademark No. 2012055706 in Class 16 was dismissed. (paras 42-44)
(3) In respect of the defendant’s trademark no. 2012055705 in Class 5 and
the defendant’s trademark no. 2012055707 in Class 29, having considered
both the Investigation Report and the Market Survey, the plaintiff had
established a prima facie case of non­use for three years. The defendant’s
suggestion that the plaintiff purposely targeted retail outlets which did not
sell the defendant’s products and left out outlets which did was flatly rejected.
Further, if the defendant was able to produce hundreds of invoices between
July 2013 and February 2016, then there was no reason why it could not
have adduced its invoices thereafter (i.e. three years before the plaintiff’s
application was filed). A single invoice dated 27 May 2019 or any time after
that date would have wholly defeated the plaintiff’s application. That meant
a period of non­-use for over 6 years until the plaintiff’s application was filed.
In the circumstances, the plaintiff’s application was allowed for the removal
of the defendants’ marks No. 2012055705 in Class 5 and No. 2012055707 in
Class 29. (paras 60, 61 & 63)
Case(s) referred to:
Daimler AG v. Sany Grup Ltd [2009] All ER (D) 37 (refd)
Essity Hygiene and Health Ab v. Praba’s Vcare Health Clinic Privited Limited
[2019] MLRHU 804 (refd)
E-Toyo Global Stationery Sdn Bhd v. Toyo Ink Sdn Bhd & Anor [2004] 2 MLRH
184 (refd)
 Oatly AB
690 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

Imperial Group Plc v. Philip Morris Ltd [1984] RPC 293 (refd)
Invermont Trade Mark [1997] RPC 125 (refd)
Jost Cranes GmbH & Co KG v. Jost Cranes Sdn Bhd [2010] 5 MLRH 793 (refd)
Lam Soon Edible Sdn Bhd v. Hup Seng Perusahaan Makanan (M) Sdn Bhd [2010] 1
MLRH 193 (refd)
Liwayway Marketing Corporation v. Oishi Group Public Company Ltd [2016] 5
MLRA 657 (refd)
Magic Ball Trade Mark [2000] RPC 439 (refd)
Marks and Spencer Pic v. Interflora Inc & Anor [2012] EWCA (refd)
McLaren International Ltd v. Lim Yat Meen [2009] 1 MLRA 742 (refd)
Mesuma Sports Sdn Bhd v. Majlis Sukan Negara Malaysia [2015] 6 MLRA 331 (refd)
Nation Fittings (M) Sdn Bhd v. Oystertec Pic [2006] FSR 40 (refd)
Philosophy Inc. v. Ferretti Studio SRL [2003] ETMR, 8 p 97 (refd)
Re Arnold D Palmer In The Matter of Trade Mark Registration No 63249 [1986] 2
MLRH 142 (refd)
Legislation referred to:
Trade Marks Act 1976, s 46(1)(b)
Trade Marks Act 1994, (UK), s 46(1)(a), (b)
Trade Marks Act 1998, (Sing), s 22(1)(a), (b)
Trademarks Act 2019, ss 6(a), 17, 18, 19, 20, 21, 22, 29(1), (5), (6), (8), 36(2),
(3), 45, 46(1)(a)(b), 47, 163(a)
Counsel:
For the plaintiff: Raghuram Supramanium (Chong Jun-Xin with him); M/s Shearn
Delamore & Co
For the defendant: Kok Pok Chin (Ng Pau Chze with him); M/s PC Kok & Co

JUDGMENT
Azlan Sulaiman JC:
Use It Or Lose It!
[1] If you don’t actively use a trademark you have registered, then you can lose
it after a period of non-use. Indeed, the application here under s 46(1) of the
Trademarks Act, 2019 (“the Act”) was to revoke the registration of a trademark
for non-use. I partially allowed it. This Judgment sets out my reasons.
[2] Some of the issues that this Judgment will cover include the period on non-
use under limbs (a) and (b) of s 46(1); whether an applicant must first exhaust
the remedies under s 29 of the Act where the application is based on the
provisional refusal of its application to register its own trademark; the stages of
inquiry in an application under s 46(1); and the meaning of “no proper reasons
for non-use” in s 46(1) first introduced by the Act.
 Oatly AB
[2023] 2 MLRH 691
v. Pahang Pharmacy Sdn Bhd

The Basic Facts

[3] The Defendant has three trademarks for “OATLEY”, registered in Classes
5, 16 and 29 (collectively, “Defendant’s Marks”). The Certificate of Registration
for them was issued on 15 July 2013 and 18 July 2013, as set out in Table A
below:

[4] The Plaintiff, a Swedish company, is a manufacturer of oat-based dairy

products and substitutes. These include milk-substitutes, fruit- flavoured drinks,
ice-cream, coffee-based drinks and beverages, yoghurt and cooking cream,
cream and crème fraiche substitutes, oat-based spreads and oat-based custard.
These products are manufactured and sold under the brand-names “OATLY”
and OAT- LY.

[5] The Plaintiff has successfully registered four trademarks in Malaysia for
those, under classes 29, 30 and 32, as set out in Table B below:

The last two were registered in spite of the fact that the Defendant’s trademark
TM No: 2012055707 registered on 18 July 2013, was also under the same Class
29
 Oatly AB
692 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

[6] To expand its business in Malaysia, between 27 December 2019 and 3 June
2020 the Plaintiff filed seven new trademark applications with MyiPO for
classes 5, 9, 14, 18, 21, 25, 29, 30, 31, 32, 35, 39, 41 and 43. However, these
were provisionally refused by the Registrar, either partly or fully, because of
two of the Defendant’s Marks, namely TM No: 2012055705 in Class 5 and TM
No: 2012055707 in Class 29, as set out in Table C below:
 Oatly AB
[2023] 2 MLRH 693
v. Pahang Pharmacy Sdn Bhd

[7] These provisional rejections prompted the Plaintiff to conduct an

investigation and market survey to see whether the Defendants’ Marks were
actually being used. On 27 May 2022, it filed this Originating Summons to
expunge them from the register for non-use under s 46(1) of the Act (“the
Plaintiff ’s Application”).

The Period Of Non-Use Under Limbs (A) And (B) Of Section 46(1) Of The
Act

[8] Section 46(1) of the Act, under the heading “Revocation of registration by
Court as to non-use of trademark”, provides:
(1) The registration of a trademark may be revoked by the Court on an
application by an aggrieved person on any of the grounds as follows:

(a) where within a period of three years following the date of issuance
of the notification of registration, the trademark has not been put to
use in good faith in Malaysia, by the registered proprietor or with his
consent, in relation to the goods or services for which the trademark
is registered, and there are no proper reasons for non-use;

(b) where the use of the goods or services under paragraph (a) has been
suspended for an uninterrupted period of three years, and there are
no proper reasons for non-use;
 Oatly AB
694 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

Limb (a)

[9] Under limb (a), the three-year period is pegged to the “notification of
registration”, which under s 36(2) of the Act the Registrar issues to the successful
applicant/proprietor. Under s 36(3) of the Act, a certificate of registration is
equivalent to a notification of registration issued under s 36(2). In this case, the
certificates of registration for the Defendant’s Marks were dated 15 July 2013
and 18 July 2013 (see Table A, supra).

[10] Consequently, for the purpose of limb (a), the Plaintiff would have to
show non-use of the Defendant’s Marks for a period of three years from those
dates, ie up to 15 July 2016 and 18 July 2016.

[11] At the hearing of the Plaintiff ’s Application, Learned Counsel for the
Plaintiff pragmatically informed the Court that the Plaintiff would only pursue
it in respect of limb (b). This was because the Defendant had adduced evidence
by affidavit of the use by the Defendant in Malaysia of the Defendant’s Marks
in relation to the goods or services for which they were registered between 2013
and 2016, being within three years of the notification of registration.

Limb (b)

[12] For limb (b), the Plaintiff takes the position that the use of the goods
or services under limb (a) has been suspended from 27 May 2019 to 27 May
2022, being the three-year period leading up to the date the Plaintiff filed the
Plaintiff ’s Application.

[13] The Defendant, however, contends that the three-year period under limb
(b) is the same as under limb (a). The Defendant’s argument runs along the
following lines.

[14] Firstly, limb (b) refers to the use “under paragraph (a)” which has been
suspended for an uninterrupted period of 3 years. Under limb (a), “use” is
“three years following the date of issuance of the notification of registration”
(or three years following the date of issuance of the certificate of registration).
Likewise, the Defendant says, should it be for limb (b).

[15] Secondly, there is no overlap between limbs (a) and (b) because the former
deals with use or non-use in “good faith” whereas the latter does not refer to
any requirement of “good faith”. Thus, limb (b) does not require the Court
to ascertain whether there is good faith, and is only concerned with non-
continuous use for three years.

[16] Thirdly, under the revocation of trademarks provision in s 46(1) of the

predecessor Act, namely the Trade Marks Act, 1976 (“TMA 1976”), the three-
year period was pegged to “the date of the application”. By excluding this
from s 46(1) of the Act, Parliament had decided that would no longer be the
case. For completeness, limbs (a) and (b) of s 46(1) of TMA 1976 provided as
follows:
 Oatly AB
[2023] 2 MLRH 695
v. Pahang Pharmacy Sdn Bhd

(1) Subject to this section and to s 57, the Court may, on application by a
person aggrieved, order a trade mark to be removed from the Register in
respect of any of the goods or services in respect of which it is registered
on the ground:

(a) that the trade mark was registered without an intention in good
faith, on the part of the applicant for registration or, if it was
registered under subsection 26(1), on the part of the body corporate
or registered user concerned, to use the trade mark in relation to
those goods or services and that there has in fact been no use in good
faith of the trade mark in relation to those goods or services by the
registered proprietor or registered user of the trade mark for the time
being up to the date one month before the date of the application; or

(b) that up to one month before the date of the application a continuous
period of not less than three years had elapsed during which the
trade mark was a registered trade mark and during which there was
no use in good faith of the trade mark in relation to those goods or
services by the registered proprietor or registered user of the trade
mark for the time being.”

[17] I do not agree. In my view, though there may be an overlap between the
time-period under limbs (a) and (b), the time-periods cannot be exactly the
same. Given that the underlying intention of the registration of trademarks
and s 46 of the Act is for trademarks to be actively and continuously used, then
accepting the Defendant’s contention would mean that a registered proprietor
need only ensure that it used its registered trademark for the first three years
after registration, following which it could allow it to fall into dis-use for as
long as it wanted and never be under threat of losing it. That would mean a
permanent, indefinite monopoly for just three years of use. That cannot be.

Whether The Plaintiff Must First Exhaust The Remedies Under Section 29

[18] As I mentioned earlier, the Plaintiff ’s application here was prompted

by the rejection of its seven new trademark applications. That was by the
Registrar under s 29(5) of the Act.

[19] The Defendant also contends that the Plaintiff was therefore compelled
to have exhausted the remedies prescribed in s 29 following on from that
provisional refusal under subsection (5) before coming to Court.

[20] Section 29 is under the fifth chapter 5 of Part IV of the Act, entitled
“Registration of Trademarks”. If the Defendant is correct in its assertion,
then the Plaintiff ’s Application would be premature, or even an abuse
of the Court’s process, and would deliver a knockout blow to it. In these
circumstances, I should deal with it first.

[21] The subsections of s 29 of the Act relevant to this issue are (1), (5), (6)
and (8). They provide:
 Oatly AB
696 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

“Examination of application

(1) The Registrar shall examine whether an application for registration of

trademark fulfils the requirements for registration under this Act.

(5) If the application for registration of trademark does not fulfil any
requirements for registration of trademark, the Registrar shall inform the
grounds of provisional refusal to the applicant by a written notice and the
applicant shall have an opportunity to:

(a) make representations;

(b) amend the application so as to meet the conditions, amendments,

modifications or limitations, as the Registrar deems fit to impose.; or

(c) furnish additional or any other information or evidence within such

period as the Registrar may specify in the written notice.

(6) For the purpose of subsection (5):

(a) the application shall be deemed withdrawn if the applicant does

not respond within such period as specified by the Registrar in the
written notice; and

(b) the Registrar shall refuse the application if the applicant’s response
does not satisfy the Registrar that those requirements are fulfilled and
the Registrar shall. If required by the applicant; state in writing the
grounds of the total provisional refusal.

(8) Where an appeal lies to the Court against the decision of the Registrar
relating to total provisional refusal under para 6(b):

(a) The appeal shall be made in the prescribed manner;

(b) The Court shall, where necessary, hear the applicant and the
Registrar; and

(c) The appeal shall be heard on the material stated by the Registrar
to have been used by the Registrar in arriving at his decision and
no further grounds of provisional refusal to the acceptance of the
application shall be allowed to be taken by the Registrar other than
those stated except by leave of the Court.”

[22] The appeal process under ss (8) is further augmented by s 163(a) of the
Act, which provides:
“Appeal from Registrar

Notwithstanding any provision in any written law in relation to judicial

review, any person aggrieved by the decision of the Registrar in relation to the
following matters may appeal to the Court:

(a) Decision of the Registrar relating to examination of application under

subsection 29(8);”
 Oatly AB
[2023] 2 MLRH 697
v. Pahang Pharmacy Sdn Bhd

[23] Whilst it is indeed true that the Plaintiff did not pursue that route prescribed
by s 29(6), in my view this does not prevent the Plaintiff from pursuing the
remedy prescribed by s 46.
[24] Firstly, the words “the applicant shall have an opportunity” in s 29(5)
connote that it is not mandatory for the applicant to pursue that route. If it
were mandatory, then the words “have an opportunity to” would not be there,
and it would simply read “the applicant shall...”.
[25] Secondly, as Table C above shows, the Notices issued by the Registrar for
the provisional refusal of the Plaintiff ’s seven applications were dated between
12 May 2021 and 30 March 2022. Each and every Notice required the Plaintiff
to make representations within two months. As the Plaintiff did not take up the
opportunity under ss (5), then under ss 6(a), the Plaintiff ’s applications “shall
be deemed withdrawn.”. This means that that process under s 29 (5) had ended
by the time the Plaintiff ’s Application was filed on 27 May 2022.
[26] Thus, at the time the Plaintiff filed the Plaintiff ’s Application, there were
no pending, parallel or duplicate proceedings before the Registrar under the
Act to render it as an abuse of the process of the Court.
[27] Thirdly, the provisional refusal under s 29 of the Act can be for a host
of reasons, not just the one for which the Plaintiff ’s seven applications were
refused. Under s 29, the Registrar examines all applications for registration of
trademark to ensure that they fulfil the various and multiple requirements for
registration as set out under ss 17-22 of the Act. That the Registrar’s task is to
ensure that the applications fulfil these requirements suggests that, for this part
of the Act, the Registrar undertakes an administrative role and exercises an
administrative function. This is evident from the fact that, if the Registrar still
refuses the registration after that representation under (5), then the unsuccessful
applicant may pursue an adjudicative course, namely judicial review of the
Registrar’s decision by appealing to the Court.
[28] Where the provisional refusal is, like here, based on the existence of an
existing registered trademark, and the applicant is desirous of removing that
trademark from the register in order to register its own in its place, then that
would involve an entirely different scenario that that envisaged by the processes
under s 29. That alternative scenario by a competitor would commonly
be under ss 45-47 of the Act, aptly entitled “Revocation of registration by
Registrar”, "Revocation of registration by Court as to non-use of trademark”
and “Invalidation of registration by Court.” In those scenarios, the party whose
trademark has been registered would be heard.
[29] In contrast, s 29 does not envisage the Registrar playing any adjudicative
role, to decide between competing trademarks. It does not even provide for
the Registrar to call upon the existing trademark owner to make its own
representations so as to fulfil the basic requirements of natural justice. Indeed,
the process under subsections (1) to (7) of s 29 envisage interactions solely
between the Registrar and the applicant.
 Oatly AB
698 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

[30] In the premises, I would reject the Defendant’s contention that the Plaintiff
was compelled to have exhausted the remedies prescribed in s 29 before coming
to Court.

[31] I will now deal with the Plaintiff ’s Application on its merits.

The Three Stages Of Inquiry For An Application Under Section 46

[32] Section 46(1) envisages a three-stage inquiry process. The first stage is
to inquire and determine whether the applicant is an aggrieved person. The
applicant bears the burden of proving that. If it is not, then it would end there
without moving onto the second stage and the application would be dismissed.

[33] If the applicant is an aggrieved person, then the second stage would be to
inquire whether the use of the goods or services in respect of which the Marks
were registered had been suspended for an uninterrupted period of three years.
Again, the applicant bears the burden of proving that. If it fails to do so, then
the registered proprietor of the Marks is not even called upon to establish use.
Authority for this are the cases of E-Toyo Global Stationery Sdn Bhd v. Toyo Ink
Sdn Bhd & Anor [2004] 2 MLRH 184, Lam Soon Edible Sdn Bhd v. Hup Seng
Perusahaan Makanan (M) Sdn Bhd [2010] 1 MLRH 193 and Liwayway Marketing
Corporation v. Oishi Group Public Company Limited [2016] 5 MLRA 657.

[34] If the applicant is able to navigate through the second stage by establishing,
prima facie, that the use of the goods or services in respect of which the
Defendant’s Marks were registered had been suspended for an uninterrupted
period of three years, then we would move on to the third stage. The burden
would shift to the proprietor to either show use during that period of three
years or proper reasons for non-use. If he does, then his Mark would remain
intact and the application to remove it dismissed.

[35] Conversely, if the proprietor is unable to show use during that period of
three years or no proper reasons for non-use, then the application would be
allowed and the registration of his Mark would be removed from the Register.

First Stage: Whether The Plaintiff Is An Aggrieved Person

[36] In Re Arnold D Palmer In The Matter Of Trade Mark Registration No 63249

[1986] 2 MLRH 142, after reviewing several English authorities, Chan Sek
Keong J (as His Lordship then was) said:
“On the basis of these decisions, it is plain that the applicant will fail in this
appeal unless he can show that he has used his trade mark in the course of a
trade which is the same as or similar to that of the respondents or that he has
a genuine and present intention to use the mark as a trade mark.”

[37] In approving of that passage, Abdul Azizi Mohamad FCJ said in in

McLaren International Ltd v. Lim Yat Meen [2009] 1 MLRA 742:
 Oatly AB
[2023] 2 MLRH 699
v. Pahang Pharmacy Sdn Bhd

“We understand that passage as laying down the principle that a person
aggrieved is a person who has used his mark as a trade mark - or who has a
genuine and present intention to use his mark as a trade mark - in the course
of a trade which is the same as or similar to the trade of the owner of the
registered trade mark that the person wants to have removed from the register.”

[38] Then, in Mesuma Sports Sdn Bhd v. Majlis Sukan Negara Malaysia; Pendaftar
Cap Dagangan Malaysia (Intervener) [2015] 6 MLRA 331, Azahar Mohamed
FCJ (later CM (Malaya) said:
“A person aggrieved is a person who has used his mark as a trade mark or who
has a genuine and present intention to use his mark as trade mark in the course
of a trade which is the same as or similar to the registered trade mark that the
person wants to be removed from the register. The person must be someone
who has some element of legal interest, right or legitimate expectation in
its own mark which is being substantially affected by the presence of the
registered trade mark. The interest and right must be legal or lawful. ”

[39] As the Plaintiff is applying to remove all three of the Defendant’s Marks,
it must show that it is an aggrieved person in respect of each of them. As they
were registered separately, they cannot be considered en bloc.

[40] The Plaintiff ’s contentions for being an aggrieved person under s 46(1) of
the Act include the following:
(1) Sometime in or around the year 2000, the Plaintiff and/or its predecessor
in title coined/conceived the word mark “OATLY”. Upon successfully
applying to register the OATLY trademarks in the European Union,
it launched the first oat-based dairy products bearing those marks in
Sweden, Finland and United Kingdom. Sometime in the year 2013, the
Plaintiff coined, amongst others, the OAT-LY! Trademark, which it also
registered in the European Union.

(2) In 2013, it successfully registered the OATLY trademark in Malaysia

in Classes 30 and 32, and in 2019 successfully registered the OAT-LY
trademark in Malaysia, in Class 29.

(3) Since 2001, the Plaintiff has invested substantial time, money and
effort in its branding, advertising and marketing of its goods bearing
these marks, including on social media platforms, with followers in the
thousands. By December 2020, it had over 6,500 retailers, importers,
distributors and/or sellers around the world, with its goods bearing the
Plaintiff ’s Trademarks being sold and/or offered for sale by over 60,000
retailers, importers, distributors and/or sellers and over 32,200 cafes and
restaurants worldwide.

(4) The Plaintiff ’s Trademarks are registered, used and/or continued to

be used in over 42 jurisdictions around the world, some from as early
as 2000, which precedes the registration of the Defendant’s Registered
Trademarks.
 Oatly AB
700 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

(5) Its plans to expand its presence in Asia is demonstrated by:

(i) The establishment of a subsidiary company, Oatly APAC Ptd Ltd In

Singapore in 2020 followed by the launching if its goods there;

(ii) The entering into a commercial arrangement with Berjaya Starbucks

Coffee Company Sdn Bhd, who use the Plaintiff ’s goods bearing the
Plaintiffs Trademarks as dairy alternatives;

(iii) The filing of the seven trademark applications sometime from 27

December 2019 to 3 June 2020 in Malaysia, which were provisionally
refused, between May 2021 to March 2022.

[41] The details of the seven “Notification of Provisional Refusal of An

International Registration Designating Malaysia” issued by the Registrar were
set out in Table C earlier. They reveal the classes the Plaintiff applied for and
that the Registrar’s refusal was because of the similarity or identical to two
of the Defendant’s Marks registered earlier in time, namely Trademark No:
2012055705 in Class 5 and Trademark No: 2012055707 in Class 29.

[42] Bearing in mind that the Plaintiff had during the subsistence of the
Defendant’s Trademarks, successfully registered four trademarks (see Table B,
supra) and that its Application TM No: 2020001903 in respect of Classes 25,
29, 30, 32, 43 was refused for only Classes 29, 30 and 32 (and therefore not
refused for Classes 25 and 43), this means that the Defendant’s Trademark No:
2012055706 in Class 16 (which the Plaintiff is also applying to remove) was not
a ground for hindering any of the Plaintiff ’s seven applications.

[43] Furthermore, there is no evidence of the Plaintiff having ever applied to

register any of its trademarks in that Class 16.

[44] in these circumstances, while I am prepared to hold that the Plaintiff

may be an aggrieved person in respect to the Defendant’s Trademark No:
2012055705 in Class 5 and the Defendant’s Trademark No: 2012055707 in
Class 29, it is not an aggrieved person in respect to the Defendant’s Trademark
No: 2012055706 in Class 16.

[45] I would accordingly dismiss the Plaintiff ’s Originating Summons in regard

to the Defendant’s Trademark No: 2012055706 in Class 16, and only move to
the next stage(s) in respect of the Defendant’s Trademark No: 2012055705 in
Class 5 and the Defendant’s Trademark No: 2012055707 in Class 29.

Second Stage: Whether The Use Of The Goods Or Services In Respect Of

Which The Defendant’s Trademark No: 2012055705 In Class 5 And The
Defendant’s Trademark No: 2012055707 In Class 29 Were Registered Had
Been Suspended For An Uninterrupted Period Of Three Years

[46] The goods or services in respect of which the Defendant’s Trademark No:
2012055705 in Class 5 and the Defendant’s Trademark No: 2012055707 in
Class 29 are set out in the Table D below.
 Oatly AB
[2023] 2 MLRH 701
v. Pahang Pharmacy Sdn Bhd

[47] For establishing suspension for an uninterrupted period of three years, the
Plaintiff relied on:
(i) An Investigation Report dated 26 October 2021 by UC Security Sdn Bhd
(“the Investigation Report”); and
 Oatly AB
702 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

(ii) A Market Survey Report dated 28 February 2022 (“the Market Survey”).

[48] The Investigation Report disclosed, inter alia,:

(i) That the investigator met one Ms Viki Lam, the Defendant’s Area Sales
Manager, at the Defendant’s premises on 13 October 2021, who had been
working with the Defendant for around 10 years, and said she had never heard
of the name “OATLEY” and that the Defendant did not have any products
under that name.

(ii) A survey of 20 outlets (16 pharmacies, 3 supermarkets and 1 hypermarket)

in which none except one in which the person asked had heard or seen of the
of or seen the OATLEY brand of products before. That sole exception was a
supervisor at Big Pharmacy in Sg. Buloh who had worked with the company
for 8 years. Upon checking his computer system, he discovered that it had
been sold before but had been discontinued, most likely for more than four
years previously.

[49] The Market Survey disclosed, inter alia:

(i) That it was conducted at over 300 business and/or retail outlets in or
around Klang Valley, Perak, Penang, Melaka, Johor, Pahang, Terengganu,
Sabah and Sarawak based on the nature of goods for which the Defendant’s
Registered Trademarks were registered;

(ii) That in none of those business and/or retail outlets were goods bearing
the Defendant’s Registered Trademarks sighted on the display shelves;

(iii) That the persons conducting the survey had been given a set-list of
questions to ask of a shop employees or individuals present thereat, who
had been working there for at least 3 years. Indeed, some of them had been
working there for more than 10.

(iv) First up on that list of questions was showing them the Defendant’s
OATLEY trade mark and asking them whether they had heard of or seen
the OATLEY brand of products before. Save for one, none of them had. The
one who had was a pharmacist at Caring Pharmacy in Pandan Jaya who had
worked for 12 years with Caring Pharmacy and said that he had seen it in
other pharmacies in 2018/2019, knew it was an oats product, but did not
know the manufacturer.

[50] The Defendant contended that both the Investigation Report and the
Market Survey were not conclusive as to non-use, for, inter alia, the following
reasons:
(i) Ms Viki Lam was the Defendant’s Area Sales Manager for Sterline,
the Defendant’s pharmaceutical products and was not involved with
the Defendant’s products sold under the trademark OATLEY. Thus, the
investigator spoken to the wrong person and had asked confusing questions
of Ms Viki Lam.

(ii) The statement by the Big Pharmacy supervisor who checked his computer
system and discovered that it had been sold before but had been discontinued,
 Oatly AB
[2023] 2 MLRH 703
v. Pahang Pharmacy Sdn Bhd

most likely for more than four years previously, resulted from a leading
question. Applying the Whitford Guidelines (which I explain shortly), that
statement as to the four years should be ignored.

(iii) The pharmacist at Caring Pharmacy in Pandan Jaya said that he had
seen the Defendant’s products in other pharmacies in 2018/2019, which was
within three years of the Plaintiff ’s Application.

(iv) The survey in the Investigation Report and the Market Survey was only
for a limited period (for 2 days and 20 days respectively) and there was no
survey for the entire three-year period of the alleged non-use.

(v) The Plaintiff purposely targeted retail outlets which did not sell the
Defendant’s products and left out outlets which did.

Whitford Guidelines
[51] In Imperial Group Plc v. Philip Morris Ltd [1984] RPC 293, Whitford J set out
guidelines for the conduct of surveys for trade mark matters, which then came
to be commonly known as the “Whitford Guidelines”. In Marks and Spencer
Pic v. Interflora Inc & Anor [2012] EWCA, the Court of Appeal summarized the
“Whitford Guidelines”, which our High Court and Court of Appeal applied in
the Liwayway Marketing Corporation case, supra. The summary of the Whitford
guidelines is:
(i) If a survey is to have any validity at all, the way in which the interviewees
are selected must be established as being done by a method such that a
relevant cross-section of the public is interviewed;

(ii) any survey must be of a size which is sufficient to produce some relevant
result viewed on a statistical basis;

(iii) the party relying on the survey must give the fullest possible disclosure
of exactly how many surveys they have carried out, exactly how those
surveys were conducted and the totality of the number of persons
involved, because otherwise it is impossible to draw any reliable inference
from answers given by a few respondents;

(iv) the questions asked must not be leading; and must not direct the person
answering the question into a field of speculation upon which that person
would never have embarked had the question not been put;

(v) exact answers and not some sort of abbreviation or digest of the exact
answer must be recorded;

(vi) the totality of all answers given to all surveys should be disclosed; and

(vii) the instructions given to interviewers must also be disclosed.

[52] Having considered both the Investigation Report and the Market Survey, I
would hold that they establish a prima facie case of non-use for three years and
would thereby reject the Defendant’s contention to the contrary.
 Oatly AB
704 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

[53] Firstly, if the Defendant wanted to debunk and refute what Vicki Lam is
alleged to have told the investigator, then she should have been called upon to
affirm an affidavit as to that. She did not. There was none.

[54] Secondly, the results of the survey under the Market Survey (be it on
its own or collectively with the initial limited survey under the Investigation
Report), complied with the Whitford Guidelines. A whole variety of retails
outlets representing a relevant cross-section of the public in several high
population cities spanning several States, namely the Klang Valley, Kota
Kinabalu, Melaka, Seremban, Kuching, Penang, Johor Bahru and Kuantan
were visited, with questions asked of those who had worked for the outlet/
company for at least three years. The results of those surveys, that showed the
questions that interviewers were instructed to ask, were all produced.

[55] In Essity Hygiene and Health Ab v. Praba’s Vcare Health Clinic Privited Limited
[2019] MLRHU 804, Lim Chong Fong J said:
“... I accept that the Klang Valley has the highest concentration of shops
and consumers and thus any survey doen therein would be considered as
statistically representative of the relevant cross section of the trade and public
consumers.”

The fact that the Market Survey extended beyond the Klang Valley to Kota Kinabalu,
Melaka, Seremban, Kuching, Penang, Johor Bahru and Kuantan means even more that
it was “statistically representative of the relevant cross section of the trade and public
consumers.”

[56] Thirdly, the statement by the Big Pharmacy supervisor (who checked
his computer system and discovered that it had been sold before but had
been discontinued, most likely for more than four years previously) and the
pharmacist at Caring Pharmacy in Pandan Jaya (who said that he had seen
the Defendant’s products in other pharmacies in 2018/2019) were vague and
unspecific, and insufficient, in my view, to debunk all the statements by the
other hundreds of interviewees who said they had personally never heard of or
seen the Defendant’s products.

[57] As for there being no market survey for the entire three-year period of the
alleged non-use, I would concur with the view of Lim Chong Fong J in Essity
Hygiene, supra, that:
“... it is unnecessary if not oppressive that the survey must be monitored
continuously for the entire 3 years... ”

I would respectfully add that it is further illogical and unreasonable to require an

applicant to produce a survey conducted over three years. If that were the case,
then the Plaintiff here would have to commence its survey upon discovering
the Defendants’ Marks, and apply for their removal only after that three year
survey is completed. If they was already non-use well before that, then surely
that should count.
 Oatly AB
[2023] 2 MLRH 705
v. Pahang Pharmacy Sdn Bhd

[58] Under limb (b), all the applicant is required to show is that the use of the
goods for which the trademark has been registered has been suspended for an
uninterrupted period of three years. That is not necessarily established just by a
three-year survey. The Market Survey here, in which the interviewers who had
been in the service of the company and/or respective outlet for three years or
more positively stated that they had never even heard of the Defendant’s goods,
does strongly suggest non-use for an uninterrupted period of three years.

[59] The Defendant’s reliance on Uwayway Marketing Corporation, supra, to

suggest that a survey over the three-year period is requisite, is misplaced. In that
case, the alleged period of non-use was from 19 January 2010 to 19 January
2013, whereas the market survey was for alleged non-use for the period of 11
August 2011 to 22 August 2011. Clearly, that market survey up to 22 August
2011 could not have established non-use after that date for a further period of
more than two and a half years until 22 August 2013. That was the reason for
that Court’s rejection of it.

[60] As for the Defendant’s suggestion that the Plaintiff purposely targeted
retail outlets which did not sell the Defendant’s products and left out outlets
which did, I would flatly reject it. How could the Plaintiff be said to have
purposely targeted retail outlets when it’s survey covered a variety of outlets
in several States and it would not have known which outlets did sell the
Defendant’s products?

[61] I accordingly hold that the Plaintiff has therefore established a prima facie
case of non-use by the Defendant as the registered proprietor of the Defendant’s
Marks under the Defendant’s Trademark No: 2012055705 in Class 5 and the
Defendant’s Trademark No: 2012055707 in Class 29. The evidentiary burden
then shifted onto the Defendant to either show use or proper reasons for non-
use.

Third Stage: Whether The Defendant Had Used The Defendant’s Trademark
No: 2012055705 In Class 5 And The Defendant’s Trademark No: 2012055707
In Class 29 Or Had Proper Reasons For Non-Use

[62] The Defendant attempted to show use by the evidence adduced in its
Affidavit. Having examined that evidence, I would hold that there was no use
of the Defendant’s goods in respect of which those trademarks were registered
after 25 February 2016.

[63] The reason I am able to pinpoint that date is that the hundreds of invoices
the Defendant adduced for product sold to its customers and retail outlets bear
dates from between 18 July 2013 and 25 February 2016. If the Defendant was
able to produce hundreds of invoices from between July 2013 to February 2016,
then there is no reason why it could not have adduced its invoices thereafter,
even up to 27 May 2019 (ie three years before the Plaintiff ’s Application was
filed). A single invoice dated 27 May 2019 or any time after that date would
have wholly defeated the Plaintiff ’s Application. Thus, I take the date of the
 Oatly AB
706 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

last invoice, 25 February 2016, as the date of the last sale of the Defendant’s
goods using the Defendant’s Marks.

[64] The copies of the newspaper advertisements the Defendant adduced also
date from between 29 September 2014 and 28 September 2014, which was
within the timelines of its invoices. As for the many, many photographs of the
Defendant’s products on display as well as of taste-sampling, none of them
bear any dates. Though pictures do speak thousands of words, none of them
here speak of having been taken at any time after 25 February 2016.

[65] Furthermore, because the photographs were all of the Defendant’s

promotional activities of its product, surely the ultimate purpose and goal was
to generate sales. Sales would necessarily involve invoices, as evidenced by the
Defendant’s invoices from 2013 to 2016. It stands to reason that all of those
photographs were taken before 25 February 2016. As a probable certainty,
none would have been taken at any time after March 2020 because in none of
those photographs is anyone wearing a face-mask mandated by Government
after the outbreak of the COVID-19 pandemic.

[66] I would accordingly hold that the Defendant has not shown use by the
Defendant as the registered proprietor of the Defendant’s Marks under the
Defendant’s Trademark No: 2012055705 in Class 5 and the Defendant’s
Trademark No: 2012055707 in Class 29 after 25 February 2016, and in any
event certainly not up to 27 May 2019 (three years before the Plaintiff ’s
Application). That means a period of non-use for over 6 years until the
Plaintiff ’s Application was filed.

[67] I am aware that the Plaintiff ’s initial position that there was non-use from
27 May 2019, ie three years before the Plaintiffs’ Application. Whilst s 46(1)
(b) of TMA 1976 employed the words, “up to one month before the date of the
application a continuous period of not less than three years had elapsed”, the
new limb (b) of the Act does not have those words. Now, an aggrieved person
would just have to show that the use of the goods “has been suspended for an
uninterrupted period of three years. ”

[68] It is neither surprising nor unreasonable that an applicant under limb (b)
would take the initial position that the non-use was for an uninterrupted period
of three years up to the date of the filing of the application, simply because
that would be fixing the three-year period at a minimum. If there was indeed
non-use for an uninterrupted period of three years, the applicant would
not know exactly when non-use actually started. It is only when the burden
shifted to the registered owner to prove use that the applicant would discover if
the period of non-use had begun much earlier than that.

[69] Like here. In this case, the Defendant’s evidence shows non-use not only
from three years before the Plaintiff ’s Application, ie 27 May 2019, but from 25
February 2016. Once revealed, surely the Plaintiff is also entitled to make use
of that additional period too.
 Oatly AB
[2023] 2 MLRH 707
v. Pahang Pharmacy Sdn Bhd

[70] As for “no proper reasons for non-use”, those words did not exist in
limb (b) of s 46 of the Trade Marks Act, 1976, but was one of the changes
introduced in the Act.

[71] Apparently, there is no local case law on “no proper reasons for non-
use” here. However, case law from the United Kingdom and Singapore offer
guidance as to what constitutes “no proper reasons for use” as their equivalent
provisions of trade mark legislation use those words.

[72] Section 46(1)(a) and (b) of the Trade Marks Act 1994 (UK) provides:
“The registration of a trade mark may be revoked on any of the following
grounds:

(a) that within the period of five years following the date of completion of
the registration procedure it has not been put to genuine use in the United
Kingdom, by the proprietor or with his consent, in relation to the goods
or services for which it is registered, and there are no proper reasons for
non-use;

(b) that such use has been suspended for an uninterrupted period of five
years, and there is no proper reason for non-use”.

[73] In Invermont Trade Mark [1997] RPC 125, MJ Tuck of the Trade Mark
Registry said of the words “no proper reasons for use”:
“Moreover, the word “proper” appears, rather than the slightly more
restrictive word “special”, The reasons do not have to be “special”, it seems,
merely “proper”. As can be seen in any English dictionary, “proper” is a word
with many meanings. But bearing in mind the need to judge these things in
a business sense, and also bearing in mind the emphasis which is, and has
always been placed on the requirement to use a trade mark or lose it, I think
the word proper, in the context of s 46 means:- apt, acceptable, reasonable,
justifiable in all the circumstances.

“... I do not think the term ‘proper’ was intended to cover normal situations
or routine difficulties. I think it much more likely that it is intended to cover
abnormal situations in the industry or the market, or even perhaps some
temporary but serious disruption affecting the registered proprietor’s business.
Normal delays occasioned by some unavoidable regulatory requirement,
such as the approval of a medicine, might be acceptable but not, I think, the
normal delays found in the marketing function. These are matters within the
businessman’s own control and I think he should plan accordingly.”

[74] MJ Tuck’s words in Invermont were picked up by Park J in Magic Ball

Trade Mark [2000] RPC 439. He held that the proprietor had established
proper reasons for non-use, inter alia, by adducing evidence that it had invested
time and money in developing the products to be sold under the mark, but
had been thwarted by technical difficulties from placing them in the market
place, including a satisfactory manufacturing system set up; that if produced
on unsatisfactory machinery, the production and marketing of them would
 Oatly AB
708 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

have caused large commercial losses; that the development of new products
can take time and in this case it had taken longer than expected; and that,
though not used, the marks had never been abandoned. Park J concluded that,
although the reasons for non-use of the mark are within the proprietor’s own
control, when judged in a business sense and consideration and given to all the
circumstances, there were proper reasons for non-use of the mark.

[75] By contrast, the Court of Appeal in Philosophy Inc. v. Ferretti Studio SRL
[2003] ETMR, 8 p 97, did not find any proper reasons for non-use. That case
involved an appeal against the dismissal of an application to revoke a registered
trade mark for non-use. The proprietor had apparently done nothing with its
trademark for around five years and then started a process of re-using it. Peter
Gibson LJ said:
“A proprietor who does nothing for most of the five-year period and then
embarks on a procedure known to be lengthy but intended to lead to goods
bearing the mark being produced for sale cannot in my judgment say that the
ordinary commercial delays in producing a new product bearing the mark
amounted to proper reasons for non-use for the five-year period.”

[76] In Singapore, s 22(1)(a) and (b) of the Trade Marks Act 1998 is identical to
the UK’s s 46(1)(a) and (b) of the Trade Marks Act 1994 with the exception, of
course, with the words “United Kingdom” being exchanged with “Singapore”.

[77] In Nation Fittings (M) Sdn Bhd v. Oystertec Pic [2006] FSR 40, Andrew Phang
Boon Leong J said:
“Were there, however, “proper reasons” within the meaning of s 22(1) for
the non-use of the respective trade marks by the plaintiff ? The applicable
principles of law here seem to me to be clear.

The onus to show that it had proper reasons for not using the trade marks
concerned during the relevant period is on the proprietor of the mark. If
obstacles to use existed, these must have arisen independently of the will of the
said proprietor and ordinary commercial delays in producing a new product
bearing the trade mark in question would not constitute a valid excuse.”

[78] To support its contention that it did have proper reasons for nonuse, the
Defendant relied on, firstly, the Covid-19 pandemic and secondly, its Business
Proposal dated 16 November 2021, a Layout Brief dated 2 December 2021,
and mark-ups of the packaging of the Defendant’s intended product apparently
made in December 2021 and January 2021.

[79] In its Written Submissions, the Defendant said, inter alia:

(i) Between end of 2019 to middle of 2021, Malaysia and other countries
in the world experienced the Covid-19 pandemic. This is a well-known
fact and worldwide phenomenon. World economies and businesses
including those in Malaysia were affected and many have to close
down. Government imposed lockdowns are common. In Malaysia,
we have several Government imposed lockdowns or MCOs (Movement
 Oatly AB
[2023] 2 MLRH 709
v. Pahang Pharmacy Sdn Bhd

Controlled Orders), In Malaysia, a state of Emergency was declared until

1 August 2021.

(ii) When the market in Malaysia started to reopen gradually after the
COVID-19 lockdowns, in November 2021, the Defendant decided to
introduce new variants and new flavours for its “OATLEY” trademarked
products.

(iii) During this time, the Defendant’s OATLEY trademarked products were
being sold in e-commerce platforms such as Shopee, Lazada and others.

(iv) The time-table for the new variants and new flavours was as follows:

November 2021: Planning and approval

Dec 2021-Mar 2022: Development of formulation and label design

April - May 2022: Finalising formulation & pricing with OEM and
ordering

Jun-July 2022: Manufacture and delivery

September 2022: Officially launch & market placement

[80] Nevertheless, in my view, the Defendant failed to establish any proper

reasons for non-use.

[81] Firstly, as I held earlier, the documentary evidence as a whole showed

that there was non-use by the Defendant not only for the period of three years
before the Plaintiff ’s Application, ie from 27 May 2019, but from over three
years earlier on 25 February 2016. However, the Defendant proffered no
reasons whatsoever for the non-use between then and the onset of the Covid-19
pandemic and the lockdown that began in March 2020.

[82] Parallels can be drawn with the facts in the English Court of Appeal’s
decision in Philosophy Inc, supra, where the registered proprietor had done
nothing for five years.

[83] Secondly, in respect of the COVID-19 pandemic, Learned Counsel for

the Plaintiff adduced a recent United Kingdom case of Trade Mark Inter Partes
Decision 0/350/22 in which the UK Trademark Registry had considered
Covid-19 as a reason for non-use:
“[51] The Covid-19 pandemic started circulating in the UK in January 2020
with the first national lockdown occurring in March 2020.

[52] In relation to providing reasons for non-use in Armin Haupl v. Lidl Stiftung
& Co KG, Case C-246/05, the Court of Justice of the European Union held:

“54. It follows that only obstacles having a sufficiently direct relationship

with a trade mark making its use impossible or unreasonable, and which arise
independently of the will of the proprietor of that mark, may be described as
“proper reasons for non-use” of that mark.”
 Oatly AB
710 [2023] 2 MLRH
v. Pahang Pharmacy Sdn Bhd

...

[54]...A passing reference to these events, in isolation, without further

clarification, as to how these events impacted upon the Proprietors businesses
(especially given that it is not clear what the Proprietors’ businesses are), are
insufficient in themselves, without further explanation, to demonstrate non-
use of the marks for the goods and services in question. ”

[84] In our case, not only had the Defendant failed to even mention the
pandemic in its Affidavit opposing the Plaintiff ’s Application, also absent were
any details of how it was affected. Adding on to that the fact that the period of
non-use began years before the pandemic means that the Covid-19 pandemic is
not an excuse or a proper reason for non-use for this Defendant.

[85] Thirdly, the Business Proposal does not extend as far as the Defendant
submits; and was clearly with an eye on the future and not the state of its
current business;
(i) It depicted the creation of an entirely new halal-certified product that
would be “specifically formulated and adapted to Malaysians’ taste buds”
and market-targeted to a specific demographic, and that this new product
would be a “strategic addition to the PPSB’s portfolio of products” that
“will be in line with the company’s longer-term plans to venture into the
nutritional food business”; and

(ii) There was no evidence that the Defendant’s existing OATLEY

trademarked products were being sold in e-commerce platforms such
as Shopee, Lazada and others. Instead, the Business Proposal spoke of
that commercial route for the new product “besides the retail pharmacy
channel”.

[86] Fourthly, despite that time-table I mentioned earlier, with the exception of
sample labels, there was no evidence of any of that actually being carried into
effect, even partially. The Business Proposal was approved by the Defendant’s
Managing Director who also affirmed the Defendant’s sole affidavit opposing
the Plaintiff ’s Application. Given that he affirmed it on 14 July 2022, if there
had been any development in any of those steps up to then, he would have been
in the perfect position to attest to it. The absence of any such evidence suggests
that none of those other steps that were supposed to have taken place between
November 2021 and mid-July 2022 had actually occurred.

[87] Fifthly, I would hold that the Business Proposal was an internal proposal
and was not evidence of use. In Jost Cranes GmbH & Co KG v. Jost Cranes Sdn Bhd
[2010] 5 MLRH 793, Azahar Mohamed J (as His Lordship then was) referred
to and applied the decision of Daimler AG v. Sany Grup Ltd [2009] All ER (D)
37 in which Geoffrey Hobbs QC sitting as a deputy judge of the High Court
said, inter alia:
“The use has to be on the market by the proprietor or an authorised third party
and not just internal use by the undertaking concerned.”
 Oatly AB
[2023] 2 MLRH 711
v. Pahang Pharmacy Sdn Bhd

Conclusion

[88] Based on the foregoing, I allowed only prayers 1 and 2 of the Plaintiff ’s
Application, not for all three of the Defendant’s Marks, but only for the removal
of the Defendant’s Marks No: 2012055705 in Class 5 and No: 2012055707 in
Class 29.