WISE PAYMENTS LIMITED PUBLIC BANK BERHAD

WISE PAYMENTS LIMITED PUBLIC BANK BERHAD

The Court of Appeal held that the appellant is an aggrieved person because use of the Wise marks by its Malaysian subsidiary and prior use through a third party accrues to the proprietor; the appellant established a prima facie case of non-use of the respondent’s registered Wise mark except for children’s savings accounts and the respondent failed to show use for the other listed services; under s46(4) TMA 2019 partial revocation is mandatory for services not genuinely used, and the proper remedy is to limit the respondent’s registration to banking and financial services (which encompass children’s savings accounts) and to direct the Registrar to rectify the Register.

Citation
W-02(IPCv)(A)-1095-06/2022 (Mahkamah Rayuan)
Parties
Appellant: TransferWise Ltd (Wise Payments Ltd); Respondent: Public Bank Berhad
Court
IPCv
Jurisdiction
Malaysia
Judgment Date
4 October 2024
Case Number
W-02(IPCv)(A)-1095-06/2022 (Mahkamah Rayuan)
Procedural Posture
Civil Appeal Trademark Revocation (non Use) / Court of Appeal Judgment
Legal Topics
Revocation for Non Use, Aggrieved Person (locus Standi), Partial Revocation Under S46(4), Use by Subsidiary, Scope of Registered Services, Regulatory Licensing Impact on Trademark Use
Source Language
Malay/English
Intellectual Property Trade Marks Civil Procedure Banking Regulation Revocation for Non Use Aggrieved Person (locus Standi) Partial Revocation Under S46(4) Use by Subsidiary +2 more

Case Brief

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Parties

TransferWise Ltd (Wise Payments Ltd)

Appellant

Public Bank Berhad

Respondent

Procedural Posture

Civil Appeal Trademark Revocation (non Use) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether the appellant is an aggrieved person under s46 TMA 2019
  2. 2 Whether the registered mark was not used in Malaysia for a continuous three-year period (non-use)
  3. 3 Whether use by a subsidiary constitutes use by the proprietor for s46 purposes

Ratio Decidendi

The Court of Appeal held that the appellant is an aggrieved person because use of the Wise marks by its Malaysian subsidiary and prior use through a third party accrues to the proprietor; the appellant established a prima facie case of non-use of the respondent’s registered Wise mark except for children’s savings accounts and the respondent failed to show use for the other listed services; under s46(4) TMA 2019 partial revocation is mandatory for services not genuinely used, and the proper remedy is to limit the respondent’s registration to banking and financial services (which encompass children’s savings accounts) and to direct the Registrar to rectify the Register.