F.I.A.L. Finanziara Industrie Alto Lario SPA v Galperti SRL

Appellant(s): F.I.A.L Finanziara Industrie Alto Lario S.p.A

Respondent(s): Galperti S.R.L.

• YA Dato' Che Mohd Ruzima Bin Ghazali
• YA Dato' Azizul Azmi Bin Adnan
• YA Dato' Azmi Bin Ariffin

• The appellant applied to register the "Galperti" trademark in Malaysia, which was opposed by the respondent, the registered proprietor of the mark in Italy.
• The Registrar of Trademarks dismissed the opposition, accepting the appellant's claim of first use in Malaysia since 1993, supported by invoices from a related company.
• The High Court subsequently allowed the respondent's appeal, finding the appellant's averment regarding its Malaysian subsidiaries' incorporation dates to be inaccurate.

• Whether the appellant, as a holding company, could claim the benefit of first use of a trademark established by a related company without proving a formal transfer or licensing agreement.
• Whether the principle that a Court need not delve into the contractual arrangements between a licensor and licensee when a dispute is with a third party applies in the absence of any evidence of a licensing relationship.
• Whether the appellant was entitled to register the trademark in its name when the right to register, based on first use, was established by a different corporate entity within the same group.

• The Court affirmed that while first use of the trademark in Malaysia was established by a related company, this right did not automatically accrue to the appellant.
• The Court held that in the absence of evidence of a formal transfer or licensing agreement of the trademark rights from the actual first user to the appellant, the appellant was not entitled to register the mark in its name.
• The appeal was dismissed, as the Court found the appellant had not demonstrated its entitlement to the registration of the trademark based on the established legal principles of trademark ownership and transfer.