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Case Update: Use It or Lose It - Appellate Court Highlights Importance of Trademark Use

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15 November 2024

INTELLECTUAL PROPERTY
Trademark – Partial Revocation – Active Use – Trade Marks Act 2019

TransferWise Ltd. v Public Bank Berhad
Civil Appeal No. W-02(IPvC)(A)-1095-06/2022 | Court of Appeal
- see the grounds of judgment here

Facts TransferWise Ltd (the ‘Appellant’) (now Wise Payments Ltd), is a company that provides currency exchange and transfer services. Public Bank Berhad (the ‘Respondent’), one of Malaysia’s largest banking institutions, holds the trademark registration for the "PBB Registered Wise Mark" used for children's savings accounts under Class 36 (banking and financial services). The Appellant, filed for the partial revocation of the Respondent’s trademark arguing that the Respondent had only used the mark for children's savings accounts since its registration in 1997 and had not utilized it for other services listed under the registration, such as insurance, investment services, securities brokerage, and stock brokerage. The Appellant sought to have the trademark partially revoked, allowing it to remain valid only for the services that were in active use, specifically children's savings accounts. The Respondent countered by arguing that the mark was actively used for banking and financial services, and that children's savings accounts fell within this broader category, making the trademark's registration valid for all listed services. The Learned High Court Judge dismissed the Appellant’s application on the grounds that the Appellant was not an "aggrieved person" under Section 46 of the Trade Marks Act 2019[1] and that the Respondent had sufficiently used the "PBB Registered Wise Mark," particularly for its children's savings accounts. Hence, this appeal.

Issues 1. Whether TransferWise Ltd qualifies as an "aggrieved person" under Section 46 of the Trade Marks Act 2019?
2. Whether Public Bank’s trademark registration should be partially revoked on the grounds of non-use for services other than children's savings accounts?
3.  Whether banking and financial services can be compartmentalized and revoked in part, while maintaining registration for the services that are actively used?

Held In allowing the appeal, YA Datuk Hajjah Azizah Binti Haji Nawawi held that the Appellant was an "aggrieved person" under Section 46 of the Trade Marks Act 2019, as the use of the mark by its Malaysian subsidiary (Wise Payments Malaysia) could be attributed to the Appellant. The Court of Appeal agreed with the argument put forth by the Appellant whereby the Respondent had only used the trademark for children's savings accounts and had not used it for the other services listed under the registration. As a result, the Court of Appeal partially revoked the Respondent’s trademark registration, limiting it to “banking” and “financial” services, specifically children's savings accounts, under Section 46(4) of the Trade Marks Act 2019[2]. This decision highlighted the need for trademarks to be actively used for all services they are registered under, or else face partial revocation.

Zul Rafique & Partners
{15 November 2024}
[1] Revocation of registration by Courts as to non-use of trademark
[2] Where grounds for revocation exist in respect of only some of the goods or services for which the trademark is registered, revocation shall relate to those goods or services only.

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