Analysis of “Aggrieved Person” from the Court of Appeal’s Decision in TransferWise Ltd. v Public Bank Berhad

Analysis of “Aggrieved Person” from the Court of Appeal’s Decision in TransferWise Ltd. v Public Bank Berhad

INTRODUCTION

The legal concept of an “aggrieved person” plays a crucial role in trademark law, particularly in matters concerning the revocation of a registered trademark due to non-use. Consider the following scenario:

You intend to use a mark as a trademark for your business. After conducting preliminary market research, you find that no similar mark is in use for the same products or services that you intend to trade. However, upon searching the trademark register, you discover that a similar or identical mark has already been registered by another party.

In such cases, Section 46(1) of the Trademarks Act 2019 provides statutory grounds for seeking the revocation of a registered trademark due to non-use. Under this provision, an aggrieved person may apply for revocation based on one or more of the following grounds:

  1. the registered trademark has not been used in good faith in Malaysia within three (3) years from the issuance of the notification of registration, and there are no proper reasons for non-use;
  2. the use of the trademark for the registered goods and services has been suspended for an uninterrupted period of three (3) years, with no valid justification for the non-use;
  3. due to the acts or inactivity of the registered proprietor, the trademark has become a common name in the trade for the goods or services for which it was registered;
  4. the use of the trademark in relation to its registered goods or services is likely to mislead the public, including regarding the nature, quality, or geographical origin of those goods or services.

Particularly concerning subsection (a) and in relation to the example mentioned above, if a registered trademark has not been used by its proprietor or its licensee for three years following the issuance of the notification of registration, an aggrieved person may apply to the Court for revocation due to non-use.

But who qualifies as an “aggrieved person”? This article examines the recent Court of Appeal decision in TransferWise Ltd v Public Bank Bhd [2024] MLJU 2866, specifically regarding the definition of an aggrieved person.

FACTS OF THE CASE

The Appellant, TransferWise Ltd, applied to the High Court under Sections 46(1)(a) and 46(4) of the Trademarks Act 2019 for an order to partially revoke the Respondent’s registered trademark (“Respondent’s Trademark”) due to non-use. The Respondent’s Trademark consists of:

  1. A graphic depicting a piggy bank in the form of a child wearing a cap emblazoned with the word “WISE”, alongside a coin;
  2. The words “Akaun Simpanan”, “Savings Account”, and “WISE – wisdom in saving early”;
  3. Registered under Class 36, encompassing multiple financial services.

Conversely, the Appellant is a UK-based financial technology company that provides international money transfer and currency exchange services. The Appellant had filed for registration of its own trademarks (“Wise Marks”) in Malaysia, covering Class 9 and Class 36.

However, the Appellant did not directly operate in Malaysia; instead, it provided services through its wholly owned subsidiary, Wise Payments Malaysia Sdn Bhd. This subsidiary is licensed by Bank Negara Malaysia under the Money Services Business Act 2011 to conduct financial services in Malaysia.

HIGH COURT’S DECISION

The High Court dismissed the Appellant’s application and, among others, ruled that:

  1. The Appellant is not an aggrieved person since the Wise Marks were used by its subsidiary, not the Appellant itself.
  2. The Appellant cannot use the Wise Marks in Malaysia as it had not obtained the necessary license from Bank Negara Malaysia to conduct financial services in Malaysia.

FINDINGS BY THE COURT OF APPEAL

On appeal, the Court of Appeal reversed the High Court’s decision and held that the Appellant qualifies as an “aggrieved person” under Section 46(1) of the Trademarks Act 2019.

The Court of Appeal refer to various legal authorities and established that an aggrieved person is someone who (a) has used their mark as a trademark in the course of trade, or (b) has a genuine and immediate intention to use the mark in a trade identical or similar to that of the registered trademark owner whose mark they seek to revoke. The Court further emphasized that an applicant must demonstrate a legal interest, right, or legitimate expectation in their own mark and that their interests or rights are substantially impacted by the presence of the registered mark.

Further, other key issues that was determined was whether the use of the Wise Marks by the Appellant’s subsidiary, Wise Payments Malaysia, could be attributed to the Appellant. The Court of Appeal held that:

  1. permitted use of a trademark by a subsidiary or licensee accrues to the proprietor of the trademark;
  2. any legal impact on the trademark affects the proprietor, regardless of whether the mark is used directly by the proprietor or through a licensed entity; and
  3. the Appellant’s subsidiary was operating under the Wise Marks with the Appellant’s consent, reinforcing the Appellant’s legitimate interest in the mark.

The Court of Appeal also referred to the High Court’s decision in Essity Hygiene and Health AB v Praba VCare Clinic [2019] 1 LNS 1124, which involved a Swedish company seeking non-use revocation under Section 46 of the Trade Marks Act 1976. Despite the fact that the Swedish company’s business and operations in Malaysia were conducted through its Malaysian subsidiary, the High Court still recognized it as an “aggrieved person”. The Court of Appeal reaffirmed this principle, concluding that a trademark owner remains an aggrieved person even if its business is conducted via a subsidiary.

KEY TAKEAWAYS:

  1. Foreign companies can qualify as “aggrieved persons” for trademark revocation, even if their Malaysian operations are conducted through subsidiaries.
  2. Permitted use of a trademark by a subsidiary or licensee accrues to the proprietor, strengthening the trademark owner’s ability to challenge conflicting marks.
  3. Businesses should ensure proper trademark licensing structures to maintain legal control and enforcement rights over their brands.
  4. Trademark proprietors must actively use their marks to avoid potential revocation under Section 46(1) of the Trademarks Act 2019.

This decision clarifies the definition of an “aggrieved person” in trademark revocation proceedings and confirms that a trademark owner can establish use of a mark through permitted use by a subsidiary or licensee. It also serves as an important precedent for businesses seeking to challenge non-use trademarks and reinforces the necessity of proving genuine commercial use to maintain trademark rights. Therefore, it is important to maintain a clear trademark strategy and portfolio management to protect valuable brand assets in Malaysia.

If you have any questions, please contact our Senior Legal Associate, Mr. Azrul Haziq (azrul@nzchambers.com)

Author:

  1. Azrul Haziq

Published on 27 February 2025