Liwayway Marketing Corporation ("Liwayway") is the owner of a trade mark that was registered with the Thai Registrar of Trade Mark in various classes. However, its trade mark was possibly being expunged due to the request of Oishi Group Public Company Limited ("Oishi"), a Thai exporter of products such as aerated water, fruit juices, ready-to-drink green tea and carbonated drinks. Among others, the grounds put forward by Oishi was that there had been non-use of the mark for a period of at least 3 years up to 1 month before the expungement action ("Statutory Period").
To support its request, Oishi submitted a survey report covering the period from 11 August 2011 to 22 August 2011, which was prepared in compliance with all the minimum criteria laid down by case law as follows:
- the interviewees selected must be representative of a relevant cross-section of the public;
- the number of interviewees must be statistically significant;
- the interview must be conducted fairly;
- all the surveys carried out must be disclosed, specifying the number of interviews carried out, how they were conducted, and the total number of persons involved;
- the totality of the answers given in the interviews must also be disclosed and made available to the defendant;
- the questions asked during the survey must not be leading nor should they lead the interviewee into a field of speculation which he or she would never have embarked upon had the question not been put;
- the exact answers must be recorded and the summarized versions are not acceptable;
- the instructions to the interviewers as to how to carry out the survey must be disclosed; and
- where the answers are coded for computer input, the coding instructions must be disclosed.
The High Court and the Court of Appeal accepted the independent survey report as adequate evidence to establish a prima facie case of non-use due to its compliance with the minimum criteria. As a result, the burden of proof was shifted to Liwayway. As Liwayway was unable to prove that there was use of the mark in Malaysia during the Statutory Period, its mark was expunged.
Subsequently, Liwayway obtained permission to refer to the Federal Court on, among other things, the question whether the Statutory Period may be shortened and computed segmentally so that non-use of the registered mark could be sufficiently proved by showing non-use for only a part of the Statutory Period. This question was based on the fact that the survey report of Oishi covered only a period of 12 days (from 11 August 2011 to 22 August 2011) instead of the entire Statutory Period.
The Federal Court judges came to the conclusion that the Statutory Period could not be shortened. As such, Oishi’s survey report, which did not cover the entire Statutory Period, was not sufficient to establish a prima facie case of non-use. The decision to cease use of the mark during that period was a purely a commercial decision.
- Registered trade marks shall be used by the right holder in order to avoid possible actions for non-use leading to deletion of the mark from the registry.
- In addition to complying with the minimum criteria laid down by case law, a person intending to use a survey report to establish a prima facie case of non-use must ensure that the survey report covers the entire Statutory Period.
- A trade mark owner must be aware of the non-use claim of its registered trade mark, so that it can come up with a timely and efficient argument against the claimer.