In Industria De Diseno Textil SA v Edition Concept Sdn Bhd ([2005] 2 CLJ 357) the defendant applied to amend the Trademarks Register to expunge the plaintiff’s ZARA mark on the ground that it had used the Zara mark and made it well-known in Malaysia in respect of clothing well before the plaintiff's trade mark was approved.
The plaintiff owns the mark Zara, which it first used in Spain in July 1975 primarily for clothing and accessories. The plaintiff filed a trade mark application in Malaysia for the Zara mark on August 3 1998 and registration was subsequently granted on February 5 2002.
The defendant is a locally incorporated company in Malaysia that has been using the mark Zara (an abbreviation for Zaman Aneka Reka Asli, which means "the era of diverse local creation" in Malay) in respect of their range of clothing in their own retail stores since September 1999. These followed a similar layout to shops owned by the plaintiff.
In dismissing the grounds, the High Court held that the correct date in determining whether the mark was well known in Malaysia was the date of application for registration of the ZARA mark by the plaintiff (ie, August 3 1998). The defendant failed to adduce any evidence that the ZARA mark was well known in Malaysia on this date. The correct date when calculating whether there had been non-use of the ZARA mark during its registration for a continuous period of three years was the date the mark was actually entered upon the register (ie, February 5 2002) and not the date of application for registration. Therefore, the three-year period should run from February 5 2002 and not August 3 1998. The High Court found that the plaintiff had started using the ZARA mark 10 months before the rectification proceedings were filed by the defendant; hence the defendant failed to satisfy the requirement of non-use for a continuous period of three years.
The High Court recognised the importance of trademark searches to avoid unnecessary litigation and their significance in commercial and business decisions. The High Court remarked that the defendant should have carried out a trademark search at the Registry of Trademarks before it commenced business operations using the ZARA mark, as it could have avoided these legal proceedings.
