With so many traders in the marketplace nowadays, it is inevitable that there will be some traders who will, in good faith and without any prior knowledge, adopt identical or similar trademarks as that of another trader. In such situation, obviously a conflict will arise as to which trader has the right to be registered as the trademark proprietor in such circumstances.
A. HONEST CONCURRENT USE
This issue of competing trademarks resolved through the doctrine of honest concurrent use which is embodied in Section 20(1) of the Trademarks Act 1976. It was provided that in the case of honest concurrent use, the court or the Registrar may permit the registration of more than one proprietor in respect of trademarks which are identical or so nearly resembling each other as are likely to deceive or cause confusion.
Pursuant to Section 40(1)(f), this could be used as a defence which essentially recognises that concurrent proprietors of registered trademarks are equally entitled to use the registered trademarks and neither can sue the other for infringement.
In determining whether the doctrine of honest concurrent user applies, the factors to be taken into account include the following:-
- The extent of use of the marks in time and quantity and the area of the trade;
- The degree of confusion likely to ensue from the resemblance of the marks;
- The honesty of the concurrent use;
- Whether any instance of confusion have in fact been proved; and
- The relative inconvenience which would be caused if the mark were registered
In High Court case Fazaruddin bin Ibrahim v Parkson Corp Sdn Bhd  4 MLJ 360, the applicant was the proprietor of the ‘Zig Zag’ trademark which is authored in 1984 in respect of articles of clothing. The respondent had also used a similar ‘Zig Zag’ mark, also in respect of clothing. The respondent sought protection of its trademark pursuant to Section 20(1) as an honest concurrent user.
However, the court found that the respondent had only started to use the trademark in 1992 and this was many years after the applicant had first used the mark. According to the court, the substantial similarity between the respondent’s mark and that of the applicant gave rise to a prima facie inference that the respondent had copied the applicant’s mark. As such, the court found that the respondent was not an honest concurrent user.
In Pakai Industries Bhd v Chen Yew Industries Sdn Bhd  2 CLJ 1574, it was stated that in order to succeed in proving that the Respondent is an honest concurrent user, it has to prove that the use of the mark was nearly as long as that of the Applicant if not longer.
B. PRIOR AND CONTINUOS USER
According to Section 20(2) of the Trademarks Act 1976, the Registrar shall not refuse to register a trademark which is identical to or so nearly resembling another trademark in the Register if the trademark applicant has continuously used his trademark either:-
a) Before the use of that other trademark by the registered proprietor; or
b) Before the registration of that other trademark
In other word, a person who independently creates a trademark and uses it before the date in which the other trademark is used or is registered can continue to do so because he has been lawfully using it.
The prior and continuous use of a trademark is also provided in Section 40(1)(c) as a defence to an action for trademark infringement in which the Defendant has a prior right to the use of the trademark.
The expression ‘continuously used’ must receive a reasonable business interpretation. In a situation where the Defendant did not use his trademark for a brief period of time but had no intention to abandon the trademark, the defence may still be invoked. For instance, in the case Mouson v Boehm (1884) 26 Ch D 398, the owner of the trademark (Boehm) had adopted a trademark for a particular kind of soap. The soap was manufactured and sent to the United Kingdom in large quantities for about two years. In the next six years, the manufacture and sale of soap fell off until it practically ceased and the existence of the particular mark was forgotten by Boehm.
The same mark was registered in the UK in respect of soaps by Mouson. Boehm later sued Mouson to restrain the infringement of his trademark and for removal of the trademark from the Register. Mouson’s defence was that Boehm had abandoned the trademark.
Where the market is oversupplied with Boehm’s goods, it is a special circumstance which justifies him not putting more goods on the market. Hence, the court held that period of non-use does not deprive Boehm and he has not lost it by abandonment.