07005735 (brt Bintang Racing Team) 1k4vn

Prolegend Management Services No. 29-1, Jln 46A /26, Taman Sri Rampai, 53300 Kuala Lumpur, Malaysia.

Your Ref : 07005735 Class 12 Our Ref :

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)

Dear Sirs,

Re : OPPOSITION AGAINST TRADE MARK APPLICATION NO. 07005735 FOR TRADE MARK IN CLASS 12 IN MALAYSIA APPLICANT :

RIDE IT FOREVER SDN. BHD.

OPPONENT : Y-TEQ AUTO PARTS (M) SDN. BHD.

We refer to the above trade mark application.

18th August 2011

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.

Thank you for your kind attention and co-operation.

Kindly acknowledge receipt of the above.

Yours faithfully,

……………………………………. Lee Swee Yong The Agent of the Opponent

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

THE TRADE MARK ACT 1976 TRADE MARKS REGULATIONS 1997 GROUNDS OF OPPOSITION ---------------------------------

(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

(hereinafter referred to as “ the Applicant”). AND

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,

Selangor, Malaysia (hereinafter referred to as “ the Opponent”)

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.

Below is our representation of the mark;

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.

(Kindly refer to Appendix B).

2. The Applicant RIDE IT FOREVER SDN.BHD., of No.9, Jalan Tasik 12, Lake Fields, Sungai Besi, 57000 Kuala Lumpur has applying to the similar trade mark in respect of the goods in Class 12 which is identical to the Opponent‟s goods. The representation of the Applicant‟s mark is set out below:

Trade Marks No.

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 under Trade Mark No. 2010012908 in respect for the goods in Class 12. The Opponent‟s

mark consists the mark “

” which is totally similar to the Applicant‟s

mark “

”. The Applicant‟s mark when used in relation to the Applicant‟s

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 Opponent‟s 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 Applicant‟s goods is likely to lead to the Opponent‟s goods might be ed 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”).

4. The Opponent is the bona fide proprietor of the mark

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

5. The Opponents is being used the mark “

” in Malaysia for 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 since before the year 2010.

6. The Applicant‟s mark “

” is totally similar to the Opponent‟s mark

which belongs to Y-TEQ AUTO PARTS (M) SDN. BHD. visually, phonetically and conceptually . It is undeniably similar to the Opponent‟s mark. The mark has been applied for in respect of identical or similar goods. There are exists a likelihood of confusing between the Applicant‟s mark and the Opponent‟s mark on the part of the Malaysia public.

7. The applicant‟s mark “

similar to the Opponent‟s mark

is visually, orally and phonetically totally

, such that there is and will be a

strong likelihood of deception and/or confusion caused to the relevant trade and public as to the origin of the Applicant‟s goods. Hence, the use and/or registration of the applicant‟s 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 applicant‟s goods are likely to believe or to be confused that the Applicant‟s mark intended to describe the Opponent as the source of the Applicant‟s goods and therefore believe that the goods of the applicant has the same source or origin as the Opponent‟s 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 Applicant‟s mark would be contrary to Section 14(1)(a) of the Act.

9. The Applicant under the mark

applied for is might be does not has any

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

owner of the mark

over so many years and as such the mark applied

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 Registrar‟s discretion ought to be refused.

10. Registration of the Applicant‟s mark would contradict Section 14(1)(a)/Section

19(1)/19(2) of the Trade Mark Act 1976 since the Applicant‟s mark, “

”

Is identical with or nearly resembles and is confusingly similar to the Opponent‟

“

” mark bearing for the said goods.

11. Further, the registration of the Applicant‟s mark would also contradict Section 14(1)(a) of the Trade Mark Act 1976 in that the use of the Applicant‟s 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

damaged by such use of the “

” mark by the Applicant.

12. In addition, through their application, it is apparent that the Applicant intends to

use their “

” mark in relation to products residents in the same class in a

consumables market within which the Opponents are the bona fide proprietor of the

mark. Through the Applicant‟s 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 s 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 s of its products.

13. Pursuant to the above, registration of the Applicant‟s “

” mark would

contradict Section 14(1) (a) and Section 19(1)/Section 19(2) of the Trade Marks Act 1976 in that the Applicant‟s 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 :-

13. 1 a common trade origin of the products bearing their “

” mark and

in particular our products bearing the Opponents‟ mark; and/or,

13.2

that the Applicant‟s “

” mark has got the consent of using the

marks from the Opponents; and/or

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 Opponent‟s being used of the mark, the Opponent strongly

denied that the Applicant is not a bona fide proprietor of the mark

.

Accordingly the Applicant‟s 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 Applicant‟s 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 Applicant‟s mark is therefore not capable of distinguishing the goods of the Applicant and therefore the applicant‟s 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 Applicant‟s trade mark should be refused by virtue of the law and/or the Registrar in the exercise of the Registrar‟s 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 Opponent‟s favour.

Dated this 06th June 2011

.................................... (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