The Court of Appeal has dismissed an appeal by Pirelli & C. S.p.A against a High Court decision refusing to revoke and invalidate a trademark registered in Malaysia by Alor Setar-based Chip Hwa Sdn Bhd.

In a unanimous decision, a three-member panel chaired by Justice Choo Kah Sing, together with Justices Meor Hashimi Abdul Hamid and Amarjeet Singh, held that there was no error in the High Court’s findings and that the appeal lacked merit. The Court also awarded RM30,000 in costs to Chip Hwa.

The dispute concerned Chip Hwa’s registered trademark for its children’s clothing line, which features the word “Pirelli” with an elongated “P” and a device of a horse and knight. The mark was registered in 1986 with the Malaysian Intellectual Property Corporation (MyIPO).

In 2020, Pirelli filed suit in the Kuala Lumpur High Court alleging passing off and trademark infringement, and sought revocation under Section 46 (non-use) and invalidation under Section 47 of the Trademarks Act 2019. Pirelli also sought damages, including aggravated and exemplary damages.

Chip Hwa resisted the claim, arguing that the action was barred by limitation and inordinate delay. It contended that Pirelli had been aware of its use of the mark since 1993 but failed to take timely action. Although Pirelli had initially indicated an intention to oppose the registration, the opposition proceedings were not pursued and were eventually dropped in 1994, allowing the mark to proceed to registration. In 2003, Pirelli sought an assignment of the trademark, but no transfer took place.

In 2023, the High Court found that Pirelli had “slept on its rights” for 27 years and had acquiesced to Chip Hwa’s continued use of the mark. The court held that the claim was barred by laches and dismissed the suit.

The Court of Appeal has now affirmed that decision, reinforcing the principle that prolonged inaction may defeat even claims involving well-known international brands.

Chip Hwa Sdn Bhd was represented by Ms. Karin Lim and Mr. Nicholas Lim.