Service on Local Agent Sufficient Service on Foreign Trade Mark Owner


In a recent judgement in Louis Vuitton Malletier v Renown Incorporated (24IP–15–09/2016), the IP High Court of Malaysia recognized that a plaintiff commencing proceedings under the Trade Marks Act 1976 may take the straightforward route of effecting service of court papers on a foreign trade mark owner by serving on the local address for service of the owner recorded on the Register. In almost all cases, the local address for service would be the address of the owner’s trade mark agent that had been appointed to handle the registration of the owner’s mark in question.

Background Facts

The plaintiff, Louis Vuitton Malletier (“LV”), is an international fashion house well known for its high-end luxury goods under the brand “Louis Vuitton”.  It applied to expunge for non-use, the registered trade mark “ZEPHYR” in class 25 belonging to Renown Incorporated (“Renown”).

Renown is a Japanese entity with no business or office in Malaysia. As is the usual practice, a local trade mark agent had been appointed to handle Renown’s registration of the ZEPHYR mark and in accordance with regulatory requirement, the agent’s address was entered in the Register as Renown’s local address for service.

LV had initially served the court papers on Renown’s trade mark agent in Malaysia. Justice KK Wong of the IP Court however disagreed, taking the view that LV could not circumvent the provisions of the Rules of Court 2012 which require service on Renown in Japan. This entails having to obtain leave to serve out of jurisdiction and thereafter, embark on the tedious affair of effecting service outside Malaysia in accordance with the Rules, with the option of service through the judicial authority of Japan, the Malaysian consular authority in Japan or by LV, as the plaintiff or its authorized agents in Japan.

After Renown had been served by LV in Japan in accordance with the Rules, it wrote to LV stating that it had not used the ZEPHYR mark in Malaysia and does not intend to oppose.  LV’s application for non-use cancellation was thus allowed.

Although the issue of service was not contested, the learned Judge nevertheless saw it opportune to address it in his written judgement, albeit obiter. Having re-considered the matter, the Judge said that he accepts LV’s position that the court papers may properly be served on Renown, residing out of jurisdiction, on its local address for service recorded on the Register.

Service on the Local Address for Service is Sufficient Service on a Foreign Trade Mark Owner

In coming to his decision, the learned Judge relied on the provisions of the Trade Marks Act 1976 (“TMA”) and its Regulations (“TMR”).  Specifically, s. 79(5) TMA which states that “the address of the registered proprietor of a trade mark as appearing for the time being in the Register shall for all purpose under this Act be deemed to be the address of the registered proprietor.  Additionally, the provisions in the TMR (Regulations 10(1) and 10(5)) provide that a foreign registered owner must give an address for service in Malaysia and such an address may be treated as the owner’s actual address for all purposes connected with the matter in question and that all written communication to that address is deemed to be properly addressed.  The Judge further recognized that the Rules of Court (Order 1 rule 2) provide that where rules have been made under any written law for the specific purpose of proceedings under that law, the Rules do not have effect in relation to such proceedings.  As the TMA and TMR have already made provisions with regard the address for service on a foreign registered owner, the Judge conceded that compliance with the Rules is not necessary.

The decision is a pragmatic one and is a welcomed interpretation of the provisions for those seeking rectification of a foreign owner’s registration, dispensing with the previous burden of having to undertake the cumbersome, time consuming and possibly costly task of service in a foreign jurisdiction.  However, for the foreign registered owner, the interpretation may result in injustice if it was not made aware of the service on the local agents. As service on the local agents is sufficient service, the court is not obliged to enquire further if the owner has actually been notified. Thus, there is risk that the owner’s mark may be cancelled without it being represented in court or being aware of the proceedings.

While the Judge’s judgement is in obiter and it remains to be seen if this approach will be followed or upheld if there’s opportunity for it to be considered on appeal in future, it is nevertheless prudent for the foreign owner to leave standing instruction with its local trade mark agent to promptly give notice of court service that may be effected on it, as well as to furnish the agent with up to date details for the communication of any service of court process.

If you would like to learn more about IP matters, please contact Linda Wang, Kimberly Tey or any of our ZICO IP team members.