Industry: Elevator
Matter Type: Trademark Prosecution, Opposition & Cancellation Proceedings
Status: Completed – Client Victory
Background and Challenge
Intermet Holdings Sdn. Bhd. and Dover Elevators (M) Sdn. Bhd. faced simultaneous legal pressures: a formal opposition against their trademark applications and a cease-and-desist letter issued by the Opponent.
Further investigation showed that the Opponent had not used their trademarks in Malaysia, as their global elevator business had been transferred to a third-party company. This finding opened a strategic pathway to challenge the Opponent’s rights.
Key Takeaways
- Identifying the Opponent’s non-use in Malaysia created a decisive strategic advantage.
- Filing a cancellation action shifted the dispute in favor of the client by undermining the Opponent’s rights.
- The deferral of Opposition proceedings granted the client procedural control and reduced legal pressure.
- KASS International’s proactive approach ensured strong protection of the client’s trademarks.
- The case demonstrates KASS International’s expertise in navigating complex trademark disputes with technical precision and strategic foresight.
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Pain Points
Threat to brand identity and market positioning
Potential loss of trademark rights and commercial investment
Facing well-resourced opposition from established brand
Extended legal uncertainty affecting business planning
KASS International’s Approach
We mounted a comprehensive defense strategy:
Counter Statement Filing: Crafted detailed legal response refuting similarity claims with technical trademark analysis
Evidence Compilation: Prepared meticulous Statutory Declaration establishing the client’s trademark rights and distinctiveness
Legal Advocacy: Developed persuasive Written Submission demonstrating lack of confusing similarity through comparative analysis
Resolution Strategy
Throughout the 12-year legal battle, KASS International provided:
Consistent strategic guidance and case management
Technical expertise in trademark law and practice
Robust documentation and evidence preparation
Coordination with legal proceedings
Key Outcomes
After persistent advocacy, the decision was rendered entirely in our client’s favor. Significantly, the opponent chose not to appeal, confirming the strength of our arguments and securing our client’s trademark rights permanently.
This victory demonstrates KASS International’s tenacity in protecting clients’ brand assets, even against major industry players, through meticulous preparation and strategic legal advocacy.