case comment - ITMA

INTERNATIONAL
“... this decision
comes as a relief to
foreign companies
that have yet to
register their
trade marks in
Malaysia. Fret not,
as first users have
better rights to a
mark than the first
party to file the
mark. Importers
and distributors of
a product have no
right in claiming
ownership in the
mark affixed to
the product. “
34 ITMA Review
INTERNATIONAL
Malaysia: first user has
stronger claim to Jost
Geetha K
The JOST mark was registered by Jost
Cranes Sdn Bhd (the respondent) on
22 July 2003, in Class 7 for cranes
including parts and accessories
thereof.
The German company (the applicant)
initiated an expungement action in
2009 on the grounds that the JOST
mark was wrongfully entered into the
Register. The applicant argued that
the respondent could not be the
owner of the mark since the applicant
was the first user of the JOST mark
in Malaysia.
On the other hand, the respondent
contended that Franc Jost, the
inventor of Jost Cranes, entered into
an agreement with the respondent,
one on 21 June 2001 and another
on 28 November 2001. As Franc Jost
sold the rights of the mark to the
respondent through the agreement,
the respondent claimed that the
ownership of the mark never resided
in the applicant. Based on the two
agreements, the respondent had
In the recently decided case
of Jost Cranes Gmbh & Co
KG v Jost Cranes Sdn Bhd,
which was heard in the
Kuala Lumpur IP Court, Judge
Dato’ Azahar bin Mohamed
decided in favour of the
German company,
Jost Cranes GmbH & Co
KG and expunged the
registered trade mark from
the Trade Mark Register.
Geetha K reports.
purchased all rights to the cranes and
the right to use the mark. Due to the
ownership rights it claims to have, the
respondent argued that it is the first
user of the JOST mark.
Before deciding on the ownership
of the JOST mark, the IP Court first
assessed whether the applicant was a
person aggrieved and had the locus
standi to initiate this action. This is
due to the recent decision in a Federal
Court case in Malaysia, which laid out
a stringent test for an “aggrieved
person” – only a person with trading
interest in the mark can apply for a
rectification action. In the current
case, as the applicant had shown a
commercial interest in the JOST mark
even before the respondent had
submitted an application for the
registration of the mark, the court
found that the applicant had the
locus standi, being the ‘person
aggrieved’.
The IP Court then considered whether
the applicant was the first user of the
July/August 2010