Model Answer [Element (b)]

The definition of trade mark under section 3(1) provides that “trade mark” means “a mark used or proposed to be used in relation to goods or services...”. By implication, at the application stage for registration, a mark does not have to be in use and that mere intention to use it as trade mark is sufficient. Further, it does not necessarily follows that the applicant has to strictly provide evidence that the mark has in fact been used by the applicant at the date of the application except where it is necessary for him to establish that the mark had acquired distinctiveness through such use.

Case: Yong Sze Fan &  Anor v Sharifah bt Mohd Tamin & Others [2008] 5 AMR 163.

The Applicants claimed that they were the first users of the trade mark TAMIN and claimed that the first respondent’s trade mark TAMIN was an entry wrongfully entered or remaining in the register. In support for their claims, the Appellant brought forward evidence upon which they asserted that they had used the mark since 1990 and evidence as to the sales and promotion of products bearing the mark concerned.

However, the court held, inter alia, that the respondent had adduced unrebutted evidence of extensive sales and promotion of the products using the mark since 1951.

The same principle also goes to services mark. In addition to such principle, section 3(2)(c) provides the requirement of use for service mark that “references to the use of a mark in relation to services shall be construed as references to the use thereof as a statement or as part of a statement about the availability or performance of services”.

It is not necessary for a trade mark to be used on the goods or services themselves. This is by virtue of section 3(2)(b) that provides “references to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods”. For example, a mark attached in advertising purposes is not use on the goods themselves but it is use in relation to the goods.