Introduction

The recent Court of Appeal decision in Transferwise Ltd v Public Bank Bhd offers valuable insights into Malaysian trademark law, particularly the application of partial revocation of registered trademarks due to non-use under Section 46(1) (read with Section 46(4)) of the Trademarks Act 2019 (“Act”). This case underscores the importance of genuine trademark use and the need for trademark proprietors to align their registrations with actual commercial activities.

Background of the Case

Public Bank Berhad (“PBB”), one of Malaysia’s largest financial institutions, is the registered proprietor of the mark “” (which features a piggy bank device depicting a child wearing a cap emblazoned with the word “wise” and a coin, and the words “AKAUN SIMPANAN”, “SAVINGS ACCOUNT” and “WISE – WISDOM IN SAVING EARLY” beneath it) (“PBB’s Wise Mark”) in respect of the following services in Class 36:

“Banking, financial, insurance and investment services; real estate; securities brokerage; stock brokerage; computerised financial services; issuing letters of credit and travellers cheques; financing of loans; safe deposit and surety services; issuing statements of accounts; mortgage and purchase financing; money exchange services; automatic cash dispensing services; electronic funds transfer and automated payment services; credit and cash card services; trustee services, commodities and futures brokerage, management services for loan related transactions and financial planning services; all included in class 36.”

Since the registration of PBB’s Wise Mark in 1997, the mark has been used by PBB in relation to the provision of children’s savings accounts.

Transferwise Ltd (“Transferwise”) is a UK-based financial technology company specializing in currency exchange and transfer services across multiple jurisdictions, including Malaysia. In Malaysia, these services were initially offered under its “Transferwise” mark through a local third party in 2017, and from 2019 onwards, through its wholly-owned subsidiary, namely Wise Payments Malaysia Sdn Bhd. Following a global rebranding and its name change to “Wise Payments Ltd” in 2021, Transferwise has since provided its services under its “Wise” and “” marks (collectively, “the Wise Marks”).

With plans to expand its services in Malaysia, Transferwise applied to register its “Transferwise” marks and the Wise Marks in Malaysia. Transferwise also sought partial revocation of PBB’s Wise Mark under Section 46(1)(a) (read with Section 46(4)) of the Act, arguing that PBB had only used PBB’s Wise Mark in relation to children’s savings accounts and not for the full range of services covered under its registration.

The High Court dismissed Transferwise’s application, holding that Transferwise was not an “aggrieved person” under Section 46(1) of the Act and that PBB had sufficiently demonstrated use of PBB’s Mark. However, upon appeal, the Court of Appeal overturned the decision, partially revoking PBB’s trademark registration.

Key Issues

The case revolved around three primary issues which are discussed below.

1. Whether Transferwise was an aggrieved person
   Section 46(1) of the Act provides that the registration of a trademark may be revoked by the court upon an application by an aggrieved person based on any of the prescribed grounds.
   
   The Court of Appeal, applying the established principles from Federal Court’s decisions in cases such as McLaren International Ltd v Lim Yat Meen, LB (Lian Bee) Confectionery Sdn Bhd v QAF Ltd and Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia; Pendaftar Cap Dagangan Malaysia (Interested Party), notwithstanding that these cases were decided under the now repealed Trade Marks Act 1976, held that an aggrieved person: (i) is one who has either used or has a genuine and immediate intention to use a mark in a trade that is identical or similar to that of the registered proprietor; and (ii) must have a legal interest, right or legitimate expectation in his own mark and that his interest or rights are substantially impacted by the presence of the registered mark.
   
   Based on these principles, the Court of Appeal found that Transferwise qualified as an aggrieved person under Section 46(1) of the Act as Transferwise had shown: (i) use of the Wise Marks in Malaysia through its subsidiary, with such use accruing to Transferwise; and (ii) a genuine and present intention to continue using the Wise Marks for its expanded services in Malaysia. The Court of Appeal rejected the High Court’s finding that Transferwise was not an aggrieved person merely because it is the Malaysian subsidiary that provides the services in Malaysia and that Transferwise could not have used the Wise Marks as it lacked the required licence from the Central Bank of Malaysia to provide such services.
   
   
2. Whether PBB’s trademark registration ought to be partially revoked due to non-use, except for use in relation to children’s savings accounts
   
   Section 46(1) of the Act provides that the registration of a trademark may be revoked by the court upon an application by an aggrieved person based on any of the prescribed grounds.
   
   The Court of Appeal, applying the established principles from Federal Court’s decisions in cases such as McLaren International Ltd v Lim Yat Meen, LB (Lian Bee) Confectionery Sdn Bhd v QAF Ltd and Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia; Pendaftar Cap Dagangan Malaysia (Interested Party), notwithstanding that these cases were decided under the now repealed Trade Marks Act 1976, held that an aggrieved person: (i) is one who has either used or has a genuine and immediate intention to use a mark in a trade that is identical or similar to that of the registered proprietor; and (ii) must have a legal interest, right or legitimate expectation in his own mark and that his interest or rights are substantially impacted by the presence of the registered mark.
   
   
3. Whether banking and financial services can be severed and compartmentalized and revoked in part?
   
   Section 46(4) of the Act allows for partial revocation of a trademark registration where the ground(s) of revocation applies only to certain goods or services covered by the trademark registration.
   
   The Court of Appeal recognized the court’s authority to remove specific goods or services from a trademark registration under this provision if the trademark is only used for a narrower range of goods or services. Consequently, it found that the High Court had erred in ruling that banking and financial services could not be easily severed or compartmentalized and that all the services registered under PBB’s Wise Mark were inherently relevant.
   
   Given the clear evidence that PBB’s Wise Mark had only been used for children’s savings accounts, the Court of Appeal found that PBB’s trademark registration should have been partially revoked and limited to “banking” and “financial” services only given that “children’s savings accounts” fell within these services. However, the Court of Appeal was reluctant to further limit the services to “children’s savings accounts” as such a limitation would be unnecessarily confusing and restrictive, and not in the interest of the public or the trade.
   
   The above view finds support in the Singapore High Court’s decision in Weir Warman Ltd v Research & Development Pty Ltd, where the court, in considering Section 22(6) of the Singapore Trade Marks Act (which is in pari materia with Section 46(4) of the Act), similarly declined to narrow the specification of “pump parts” into specific types of pumps for which the defendant’s “Warman” mark was used, although it found that the defendant’s registration should have been partially revoked and limited to “pump parts”. In delivering its judgment, the Singapore High Court in Weir Warman Ltd (supra) tacitly approved the reasoning in Bluestar Exchange (Singapore) Pte Ltd v Teoh Keng Long that narrowing the specification of “knitwear” to the specific categories of clothes for which the respondent’s mark was in fact used was not in the interest of the public or trade as it would result in confusion and invite litigation. The court further elaborated that the task of the court in partial revocation was to limit the specification so that it reflected the circumstances of the particular trade and the way the public would perceive the trademark’s use.
   
   It is interesting to note the Singapore High Court’s observation in Weir Warman Ltd (supra) regarding the contrary position of the UK courts on partial revocation under Section 46(5) of the UK Trade Marks Act 1994 (which is also in pari materia with Section 46(4) of the Act). In the UK, the court and the Registrar have the discretion to re-write the specification of goods or services to achieve the required degree of revocation such that the courts may “dig deeper” into certain wider specification and insert words of limitation into the specification.
   
   In Mercury Communications Limited v Mercury Interactive (UK) Limited, although the case was decided under the old (repealed) UK Trade Marks Act 1938, the court opined that an overly wide specification such as “computer programs”, could be partially cancelled. Additionally, the court was of the view that it was, in appropriate circumstances, necessary to “dig deeper” into the meaning of the description to assess its scope in relation to the actual use of the mark, particularly where non-use in respect of a significant subset of a wide general description was established.
   
   In Minerva Trade Mark, the court found that while the registered mark “Minerva” had been use for printed stationery, there was no use for printed literary matter. As a result, the court took the view that the broad specification of “printed matter” could be narrowed, leading to the revocation of the trademark registration for all other printed materials except for stationery.
   
   The extent to which it was appropriate to “dig” into a specification of trademark registrations was critically examined in Decon Laboratories Limited v Fred Baker Scientific Ltd. The court held that the key consideration is what constitutes a fair specification of goods or services, taking into account the actual use of the trademark by the proprietor and the expectation that such use would continue. The court emphasized that there was no pressing need to confer on the proprietor of a wider protection than warranted by actual use. Instead, a balance must be struck between the interests of the proprietor, other traders and the public considering that the trademark registration reflects the extent to which the mark has genuinely been used. In that case, the court restricted the specification of cleaning products for “general purpose” to “all for non-domestic use” given its actual industrial use.

Conclusion

This Court of Appeal case highlights the importance of partial revocation in ensuring that trademark registrations align with actual and genuine use, preventing businesses from monopolizing broad categories of goods and services without genuine commercial activity. Therefore, trademark proprietors should exercise caution when applying for broad specifications, ensuring that their trademark registrations accurately reflect actual and intended use. Failure to use a registered trademark may leave proprietors vulnerable to revocation challenges, which could result in the limitation or complete loss of their registered trademark rights.

It is noteworthy that in determining the issue of partial revocation, Singapore appears to have adopted a more cautious stance with a focus on preventing consumer confusion and unnecessary disputes. In contrast, the UK has taken a more interventionist approach, actively modifying and rewriting specification of goods and services to ensure that protection is limited to actual use, thereby preventing overly broad claim that could restrict market competition. While the Court of Appeal in the present case leaned toward Singapore’s approach, it remains to be seen how the Malaysian courts will continue to address partial revocation given these differing approaches.

This article is authored by our Partner, Mr Ng Kim Poh and Senior Associate, Ms Chong Kah Yee. The information in this article is intended only to provide general information and does not constitute any legal opinion or professional advice.

Ng Kim Poh
Partner
T: +603 2050 1870
kimpoh.ng@taypartners.com.my

Chong Kah Yee
Senior Associate
T: +603 2050 1831
kahyee.chong@taypartners.com.my