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BRT Bintang Racing Team
BRT Bintang Racing Team
No. 29-1, Jln 46A /26, Taman Sri Rampai, 53300 Kuala Lumpur, Malaysia.
OPPOSITION
Registrar of Trade Marks, Intellectual Property Corporation of Malaysia Unit 1 - 7, Ground Floor, Tower B, Menara UOA Bangsar, No.5, Jalan Bangsar Utama 1, 59000 Kuala Lumpur. (Attn : Cik Faezah bt. Mohamad Saman) 18th August 2011
Dear Sirs,
Re : OPPOSITION AGAINST TRADE MARK APPLICATION NO. 07005735 FOR TRADE MARK IN CLASS 12 IN MALAYSIA APPLICANT :
We act on behalf of the applicant. We would like to oppose the registration of the Trade Mark
under the Trade Mark application No, 07005735 in Class 12 which was published in the Government Gazette Volume 55, No. 9, Tambahan No. 16, Page 2641, dated on 28th April 2011.
In accordance with Regulation 37 of the Malaysian Trade Marks Regulations 1997, we enclosed herewith the following documents for the above referenced matter:
(a) Form TM. 7 (Notice of Opposition) (b) Grounds of Opposition. (c) Our check RM450.00 as the prescribed fees for the above mentioned form. (d) A copy of page 2641 of the Malaysian Government Gazette Volume 55, No. 9, Tambahan No. 16, dated on 28th April 2011.(Appendix A).
Please be informed that pursuant to the requirement of the Trade Marks Regulations 1997, a copy of the said Notice of Opposition (TM.7) and Grounds of Opposition has been sent by Courier to the Applicant of the mark.
Yours faithfully,
Encls.
c.c
(1)
RIDE IT FOREVER SDN. BHD., No.9, Jalan Tasik 12, Lake Fields, Sungai Besi, 57000 Kuala Lumpur.
(We enclosed herewith a copy of Form TM.7 and Grounds of Opposition for your attention).
(2)
Client Y-TEQ AUTO PARTS (M) SDN.BHD., No. 50, Jalan Sungai Bilah 1, 42100 Klang, Selangor.
BY COURIER
(Regulation 37, Subregulation 50(1) and 51(1) ) IN THE MATTER OF Trade Mark Application No. 07005735 for
in Class 12 by RIDE IT
FOREVER SDN. BHD., of No.9, Jalan Tasik 12, Lake Fields, Sungai Besi, 57000 Kuala Lumpur, Malaysia
an Opposition thereto by Y-TEQ AUTO PARTS (M) SDN. BHD., a company organized under the of Malaysia of No. 50, Jalan Sungai Bilah 1, 42100 Klang,
We, Y-TEQ AUTO PARTS (M) SDN. BHD., a company organised under the laws of Malaysia of No. 50, Jalan Sungai Bilah 1, 42100 Klang, Selangor, Malaysia (the Opponents) hereby give notice of our intention to oppose the registration of the Trade Mark advised under the Trade Mark number 07005735 in Class 12 in the Trade Mark Government Gazette Volume 55, No. 9, Tambahan TMA No. 16, Page 2641, dated on 28th April 2011. Our Grounds of Opposition are as follows:-
GROUNDS OF OPPOSITION
1. The Opponents are the proprietor and merchant of the mark BRT BINTANG RACING TEAM and the device of star under Trade Mark application No. 2010012908 bearing the goods of clutches for and vehicles, vehicles shock absorber, vehicle wheel rims, brake discs for vehicles, land vehicles, tires for vehicles wheels and vehicles bodies; all included in Class 12.
GOODS : Clutches for land vehicles, vehicles shock absorber, vehicle wheel
rims, brake discs for vehicles, land vehicles, tires for vehicles wheels and vehicles bodies; all included in Class 12.
2. The Applicant RIDE IT FOREVER SDN.BHD., of No.9, Jalan Tasik 12, Lake Fields, Sungai Besi, 57000 Kuala Lumpur has applying to register the similar trade mark in respect of the goods in Class 12 which is identical to the Opponents goods. The representation of the Applicants mark is set out below:
Trade Marks
Goods
Class
07005735
MOTORCYCLES SPARE PARTS; MOTORCYCLES PARTS AND FITTINGS; FAIRINGS; MUDGARDS, INNERTUBES, RIMS FOR WHEELS OF MOTORCYCLES; MOTORCYCLES ACCESSORIES AND ALL RELATED ITEMS; ALL INCLUDED IN CLASS 12.
12
Even though, the Applicant has applied the mark in the year 2007, it does not mean that the Applicant has used or sold the goods bearing the mark in the same year. The Applicant may be just filed in the trade mark application, but no such evidence existing in the market.
3.The Opponents, Y-TEQ AUTO PARTS (M) SDN. BHD. of No. No. 50, Jalan Sungai Bilah 1, 42100 Klang, Selangor, Malaysia is applying to register under Trade Mark No. 2010012908 in respect for the goods in Class 12. The Opponents
mark
goods ( i.e; motorcycles spare parts; motorcycles parts and fittings; fairings; mudguards, inner tubes, rims for wheels of motorcycles; motorcycles accessories and all related items ; all included in Class 12), which are closely related to the Opponents goods (i.e; clutches for land vehicles, vehicle shock absorber, vehicle wheel rims, brake disc for vehicles, land vehicles, tires for vehicle wheels, vehicle bodies; all included in Class 12). The Applicants goods is likely to lead to the Opponents goods might be passed off or mistaken for the goods of the Opponents mark. In other word, its will confuse or deceive the public into thinking that the Applicant is connected to or associated with the Opponents. Therefore, the registration thereof will be contrary to Section 14(1)(a) and Section 19(1)/19(2) of the Trade Marks Act 1976 (Act 1975) hereinafter referred to as the Act).
bearing the
goods of clutches for land vehicles, vehicles shock absorber, vehicle wheel rims, brake discs for vehicles, land vehicles, tires for vehicles wheels and vehicles bodies; all included in Class 12. The above mark has been applied on 16 July 2010 in a good faith
goods of clutches for land vehicles, vehicles shock absorber, vehicle wheel rims,
brake discs for vehicles, land vehicles, tires for vehicles wheels and vehicles bodies; all included in Class 12 since before the year 2010.
which belongs to Y-TEQ AUTO PARTS (M) SDN. BHD. visually, phonetically and conceptually . It is undeniably similar to the Opponents mark. The mark has been applied for in respect of identical or similar goods. There are exists a likelihood of confusing between the Applicants mark and the Opponents mark on the part of the Malaysia public.
strong likelihood of deception and/or confusion caused to the relevant trade and public as to the origin of the Applicants goods. Hence, the use and/or registration of the applicants mark would cause confusion amongst the trade and public who would believe that the Applicant is in some way associated with the Opponent in the course of trade.
8. Further or in the alternative, if registration and use of the mark applied for is allowed, purchasers of the applicants goods are likely to believe or to be confused that the Applicants mark intended to describe the Opponent as the source of the Applicants goods and therefore believe that the goods of the applicant has the same source or origin as the Opponents goods or that there is some connection in the course of trade between the Applicant and the Opponents when in fact no such connection exists. Therefore, registration of the Applicants mark would be contrary to Section 14(1)(a) of the Act.
evidence of use. They may be just taking advantage by copying the idea of the mark which belongs to the Opponent Y-TEQ AUTO PARTS (M) SDN. BHD. as the right
for which is exactly same or very similar to the Trade Marks. The Applicant for sure is not a bona fide proprietor of the mark and registration thereof in the exercise of the Registrars discretion ought to be refused.
19(1)/19(2) of the Trade Mark Act 1976 since the Applicants mark, Is identical with or nearly resembles and is confusingly similar to the Opponent
11. Further, the registration of the Applicants mark would also contradict Section 14(1)(a) of the Trade Mark Act 1976 in that the use of the Applicants mark would indicate a connection between their goods and the Opponents as proprietors and
merchant of the
mark and the Opponents interests are likely to be mark by the Applicant.
12. In addition, through their application, it is apparent that the Applicant intends to
use their
consumables market within which the Opponents are the bona fide proprietor of the
mark. Through the Applicants claims for registration, his trade and business as identifiable in his application, the Applicant is therefore likely to :-
12.1
offer or intend to offer for sale similar products to consumers and end users who purchase products sold by us, either directly or indirectly; and/or
12.2
offer its products through trade channels to which the Opponents accede; and
12.3
be in direct competition with the Opponent company for the same end users of its products.
mark would
contradict Section 14(1) (a) and Section 19(1)/Section 19(2) of the Trade Marks Act 1976 in that the Applicants use of their mark BRT BINTANG RACING TEAM and the device of star would likely lead to a situation where the trade, industry and public would be confused or deceived into assuming :-
mark and
13.2
13.3
that there is a connection and/or an association between the Opponents business and that in which the Applicant uses/proposed to be used its mark; particularly because of the exactly similar and /or substantially similarity between the marks in question.
14. By virtue of the Opponents being used of the mark, the Opponent strongly
denied that the Applicant is not a bona fide proprietor of the mark
Accordingly the Applicants attempted registration of the mark is applying in bad faith as it cannot rightly claim to be the proprietor of the mark pursuant to Section 25(1) of the Trade Marks Act 1976.
15. Further, in other word, the Opponents verily state that the Applicants instant
application was filed in bad faith and therefore the Applicant cannot legitimately claim under Section 25(1) of the Trade Marks Act 1976 to be the proprietor of the trade mark.
16. The Applicants mark is therefore not capable of distinguishing the goods of the Applicant and therefore the applicants mark does not qualify for registration under Section 10(1)(e) of the Trade mark Act 1976.
17. By reason of the matters aforesaid, the application for registration of the Applicants trade mark should be refused by virtue of the law and/or the Registrar in the exercise of the Registrars discretion under the provision of the Act.
18. In view of all the above cumulative grounds; we respectfully request the Learned Registrar to refuse the Trade Mark Application No. 07005735 and lets to allow this Opposition with an award of costs in the Opponents favour.
.................................... (LEE SWEE YONG ) PROLEGEND MANAGEMENT SERVICES Trade Mark Agent for the Opponent To : 1. The Registrar of Trade Marks PERBADANAN HARTA INTELEK MALAYSIA, (Intellectual Property Corporation of Malaysia) Unit 1- 7, Ground Floor, Tower B, Menara UOA Bangsar, No. 5, Jalan Bangsar Utama 1, 59000 Kuala Lumpur.
2. RIDE IT FOREVER SDN. BHD., NO. 9, Jalan Tasik 12, Lake Fields, Sungai Besi, 57000 Kuala Lumpur.
BY COURIER
APPENDIX A
APPENDIX B