In the recent case of Merck KGaA v Leno Merketing Sdn Bhd (“Merck”), the Federal Court (“FC”) decided on the question on whether the High Court, in exercising its power to hear appeals emanating from the Registrar of trade mark under the Trade Marks Act 1976 (“TMA”) is acting in its original jurisdiction or appellate jurisdiction, and bearing such jurisdictions, can an appeal emanating from the Registrar be appealed to the FC?

The Respondent sought to register their trade mark “Bionel” in class 5. The Appellant as the registered owner of “BION” and “BION 3” trade marks objected to the said registration. The Registrar dismissed the Appellant’s objection at first instance and the Appellant subsequently appealed to the High Court and Court of Appeal where both courts upheld the decision of the Registrar.

In summary, the FC stated that: Under section 96 the Court of Judicature Act 1964 (“CJA”), The power of the FC to hear appeals is limited to matters decided in the High Court in the exercise of its original jurisdiction, which means the case must originate or commence from the High Court.

The meaning of original jurisdiction has always been defined to mean ‘jurisdiction to consider a case in the first instance’. A court exercises its appellate jurisdiction when a court is hearing an appeal and exercises the jurisdiction of the court below. The FC ruled that a High Court in hearing an appeal from the Registrar exercises its appellate jurisdiction and the original jurisdiction of such matter lies with the Registrar.

Hence the FC will not be able to hear any appeals emanating from the Registrar of Trade Marks as such appeals does not originate from the High Court at first instance.

An appeal from the Registrar of Trade Marks can only reach the Court of Appeal as the final appellate court and such matters cannot be appealed to the Federal Court.