Trade Marks 2020 Comparisons

Last Updated February 26, 2020

Law and Practice

Authors



Lee Hishammuddin Allen & Gledhill is a full-service law firm housing various practice groups including dispute resolution, arbitration, financial services, Islamic finance, corporate and commercial, employment and industrial relations, insolvency, insurance, IP and TMT, real property, regulatory and compliance and tax. LHAG has more than 125 lawyers with offices in Kuala Lumpur, Penang and Johor Bahru. Clients include top-ranked local conglomerates and multinational companies spanning industries such as IT, e-commerce, telecommunications, biotechnology, healthcare, entertainment and FMCG (fast-moving consumer goods). Its seasoned team of trade mark, industrial design and patent agents, litigators and commercial lawyers work closely with in-house counsel to protect intellectual property, innovation and creativity. The team has experience in a wide range of jurisdictions and commercial sectors, and assists clients to identify and anticipate potential issues or trends in outsourcing. The breadth of its practice includes handling disputes involving IT and communications services, business process outsourcing, finance and accounting and facilities management. The authors would like to thank Fatin Akmal Bin Hassim, POSITION, and Sonali Nadkarni, POSITION, for their contribution to this chapter.

The new Trademarks Act 2019 (“TMA 2019”) came into force on 27 December 2019. 

Different types of trade marks have been introduced in the TMA 2019, including standard trade marks, non-conventional trade marks (such as sound, holograms, product shapes or packages, movement sequences, colours, smells and positions), certification trade marks, well-known trade marks and collective trade marks.

Under the new regime, defensive trade marks and association of trade marks are no longer available. Existing defensive trade marks shall not be subject to non-use revocation within five years from the commencement date of TMA 2019.

The rights in trade marks are based on TMA 2019, while case law supports and explains in greater detail the relevant principles. There are currently no case laws on the TMA 2019. It is presumed that existing case laws under the Trade Marks Act 1976 (“TMA 1976”) which deal with rights, liabilities and obligations maintained under the TMA 2019 will be of persuasive nature in interpreting TMA 2019.

A person can acquire rights merely by using a sign or trade mark, as the first user of a sign or trade mark in the course of trade is considered the owner of the trade mark.

However, registering a trade mark provides the registered proprietor exclusive statutory rights:

  • to use the trade mark in relation to their goods or services,
  • to authorise other persons to use the trade mark; and
  • to institute legal proceedings for trade mark infringement against infringers.

For registration of certification trade marks, it must be shown that the goods or services possess certain standards in relation to their origin, material, quality, accuracy or other characteristics before they can be registered.

Collective marks are essentially trade marks owned by an organisation, used by its members to identify themselves with a level of quality or accuracy, geographical origin or other characteristics of the organisation. In order to apply for a collective mark, an applicant must file rules governing the use of the collective mark with the Registrar.

The Registrar of Trademarks (“Registrar”) keeps and maintains the Register of Trademarks (“Register”), and the Register is available for public inspection.

It is usual practice to search for prior trade marks before applying to register a trade mark. Searches may include a computer search or manual search of all applications filed and registrations as disclosed in the public records available at the Intellectual Property Corporation of Malaysia (“MyIPO”). Based on the results from the search, applicants may have a better view as to the likelihood of their application facing objection during the registration process.

Trade marks can also be searched on the World Intellectual Property Organization (WIPO) website and the Asean TMview website (for marks applied and registered in ASEAN countries).

“Trade mark” is defined to mean any sign that is capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

“Sign” is defined to include any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof.

Any person, who may be an individual, company, corporation, body, society, association or partners, who claims to be the bona fide proprietor of a trade mark may apply to register a trade mark.

The applicant must file the relevant form, detailing:

  • the applicant’s contact details, which includes their name and address;
  • an image of the mark;
  • a description of the goods or services;
  • details of the trade mark agent;
  • a declaration by either the person filing the form or the applicant's trade mark agent declaring, among other things, that the applicant is the bona fide proprietor of the trade mark and that the details furnished in the prescribed form is true to the best of either the person filing the form or the applicant's trade mark agent's knowledge; and
  • payment of the requisite fee.

An application shall be filed with MyIPO. An applicant may file the application using a normal examination process or expedited examination process.

Multi-class applications are now available.

The Registrar will first conduct a formality check to see if the application complies with relevant statutory and procedural requirements. Thereafter, a search for prior existing trade marks and an examination as to the trade mark’s registrability is conducted.

The Registrar may object to the registration based on absolute or relative grounds by a written notice. The applicant shall then have an opportunity to respond to the provisional refusal.

If there is no objection raised by the Registrar or the Registrar is satisfied with the applicant’s response to said grounds for provisional refusal, the acceptance of the application will then be published in the Intellectual Property Official Journal (“Journal”).

Third parties may file opposition proceedings against the registration of the trade mark within two months from the date of publication in the Journal. Where there are no oppositions, the certificate of registration will be issued subject to the payment of the prescribed fee.

A person may make a single application for registration of a number of trade marks in series, if the series comprises of not more than six trade marks, the trade marks resemble each other in material particulars, and differ only in a form which does not substantially affect the identity of the trade marks.

Where an application for registration of a series of trade marks comprises two or more trade marks, the application shall be subject to the payment of the prescribed fee of MYR50 for each trade mark in the series of trade marks.

TMA 2019 provides for absolute and relative grounds for refusal. Absolute grounds for refusal pertain to a defect in the trade mark itself; whilst relative grounds for refusal pertain to comparison of the trade mark application with an earlier trade mark.

Among the examples of absolute grounds for refusal of registration of trade mark are that the trade mark:

  • is devoid of distinctive character;
  • is descriptive of the quality or geographical indication;
  • is likely to deceive or cause confusion to the public or contrary to any written law;
  • is contrary to public interest or morality; and/or
  • has become customary in the current language of the territory

Examples of relative grounds for refusal are:

  • identical with an earlier trade mark for identical goods;
  • identical with an earlier trade mark for similar goods or services, if there exist a likelihood of confusion on the part of the public;
  • similar to an earlier trade mark for identical or similar goods or services, if there exist a likelihood of confusion on the part of the public
  • a subject of passing off of an unregistered trade mark; or
  • subject to an earlier right accorded to a third party, including under the law of copyright or industrial designs.

The process for seeking to overcome objections raised by the Registrar is as follows:

  • MyIPO will issue a written notice of provisional refusal;
  • the applicant is given the opportunity to respond in one of the following manners:
    1. by making a representation in writing;
    2. by applying to the Registrar for a hearing;
    3. by amending the application to meet the conditions, amendments, modifications or limitations imposed or directed by the Registrar; or
    4. by furnishing additional evidence by way of statutory declaration.
  • in the event the applicant opts for option b), the Registrar shall issue a notice in writing to fix the hearing date before the Registrar, during which the Registrar will hear the applicant’s representation;
  • after considering the applicant’s response, the Registrar shall either accept or refuse the register the trade mark. Where the Registrar refuses to register the trade mark, such refusal shall be a total provisional refusal which shall be notified to the applicant in writing;
  • within two months of the total provisional refusal, the applicant may request for the written grounds by the Registrar, subject to the payment of a prescribed fees;
  • the applicant may subsequently file an appeal to the High Court within one month from the date the Registrar’s written grounds of decision of the total provisional refusal is issued to the applicant.

In the recent case of Merck KGAA v Leno Marketing (M) Sdn Bhd (Registrar of Trade Marks, Interested Party) [2018] 5 MLJ 1, the Federal Court held that the rights of appeal for trade mark matters originating from the Registrar shall cease at the Court of Appeal. 

The general basis may include claiming that the trade mark:

  • consists of invented word(s);
  • has no direct reference to the character or quality of the goods/services;
  • is factually distinctive due to its use in the course of trade;
  • is visually, aurally and conceptually distinctive of an earlier trade mark (if cited by the Registrar); or
  • is affixed onto goods/services of different trade channels and target different consumer demographic of an earlier trade mark (if cited by the Registrar).

Use of trade mark may be produced as evidence to show factual distinctiveness of trade mark (as opposed to inherent distinctiveness) which is relevant in determining whether the trade mark is registrable as a trade mark.

Apart from the grounds of refusal as briefly summarised in the answer to 1.7 Refusal of Registration, the Registrar shall refuse to register a trade mark if its use is prevented under the law of passing off, copyright or industrial designs.

Third parties have the right to participate during the registration procedure by initiating opposition proceedings. Any person may initiate opposition proceedings.

An applicant or opponent aggrieved by the decision of the Registrar may appeal to the High Court within one month from the date when the Registrar’s written grounds of decision is issued to the parties.

A prerequisite to commence a revocation/invalidation proceeding in the High Court is that the third party has to establish that they are an "aggrieved person", see 6.4 Initiating Revocation/Cancellation Proceedings.

An application may be amended before registration. Any amendment shall only be made in relation to:

  • the name or address of the applicant;
  • errors of wording and copying; or
  • obvious mistakes and only where the amendment does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.

Where amendments of applications are made after publication, such applications for amendments shall also be published in the Journal.

It is also possible to alter a registered trade mark to:

  • correct an error or enter any change in the details of the registered proprietor;
  • correct the details of description of goods or services without extending in any way the rights given by the existing registered of trade mark; or
  • enter a disclaimer relating to the trade mark.

Further, a registered trade mark may be:

  • voluntarily cancelled;
  • revoked by the Registrar;
  • revoked by the Court; or
  • invalidated by the Court.

Prior to the registration of trade mark, the proprietor may file an application to register or notify the Registrar of an assignment or grant of license. However, the recordal of such assignment or grant of license may only be reflected in the Register upon registration of the trade marks.

The TMA 2019 does not make a distinction between applications based on use and intent to use.

Please see the answer to 1.8 Objections Raised Under Question 15.

An appeal to the High Court shall begin by filing originating summons (OS) supported by an affidavit.

In the event the applicant is successful in its appeal and an order is granted in its favour, the Registrar shall rectify the register or give effect to the order of the court.

There is no requirement that an applicant uses its mark in commerce before registration is issued.

Tokai Corporation v DKSH Malaysia Sdn Bhd [2016] 1 LNS 1092 discusses the principles in determining "genuine use":

  • it is a qualitative and not a quantitative criterion;
  • the use has to be consistent with the essential function of the trade mark, which is to guarantee the identity of the origin of the goods or services to the customer or end users;
  • the use has to be on the market by the proprietor or an authorised third party and not just internal use by the undertaking concerned;
  • the use has to maintain or create a share in the market for the goods or services protected by the mark;
  • the court has to take into consideration all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark has been real and, in particular, whether such use would be viewed as warranted in the trade sector concerned to maintain or create a share in the market for the relevant goods or services protected by the mark; and
  • the nature of the goods in issue, such as the characteristics of the market concerned, and the scale and frequency of the use of the mark have to be taken into account.

An applicant or registered proprietor may apply for the application or registration to be divided into two or more separate applications or registrations. The application for division shall be in the prescribed form and shall contain the following information:

  • applicant/registered proprietor’s name and address;
  • application/registration number of the trade mark in question;
  • in the case of a division of classes of goods or services, a list of the classes sought to be divided out;
  • in the case of division of goods or services, a list of the classes sought to be divided out;
  • if the trade mark is subject of proceedings filed in the High Court, a statement that the other parties to the proceedings have consented to the request for division.

The term of protection for a registered trade mark is ten years from the date of registration and may be renewed for further periods of ten years.

If the registered proprietor does not renew the trade mark before the registration expires, there is a grace period of six for the renewal of said registration. 

After the grace period, the registration shall be deemed removed. However, a registered proprietor may request for restoration of their removed registration within six months from the date of its removal.

The exhaustion of IP rights constitutes one of the limits of IP rights.

TMA 2019

In Low Chi Yong v Low Chi Hong and another [2018] 1 MLJ 175, a case decided based on TMA 1976, the issue before the Federal Court was whether the proprietor, by giving his consent to the use of his registered trade mark to a company or a firm he is still a shareholder/director or a partner of, can be considered as having abandoned his exclusive right to the trade mark in perpetuity even if he does not derive any benefit therefrom (and has withdrawn from the company).

The Federal Court held that where the protection given to the registered owner of the trade mark is clearly spelt out, and as consent was never given by him to the respondents after leaving the second respondent, the principles of abandonment, estoppel, acquiescence and laches were never proved, the position of the respondents was therefore untenable.

Prima Facie and Conclusive Evidence of Validity of Registration

In all legal proceedings relating to a registered trade mark, the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration.

The original registration of the trade mark shall, after five years from the date of registration, be taken to be valid in all respects unless it is shown:

  • that the registration was obtained by fraud;
  • that the trade mark offends against the absolute grounds for refusal; or
  • that the trade mark was devoid of distinctiveness of the goods or services of the registered proprietor.

Exhaustion

A trade mark may be expunged when it becomes generic or has lost its distinctiveness.

When a rectification of the Register is made and a trade mark is expunged, the trade mark is deemed to have never been registered, hence exhausting any trade mark rights in regard to that registered trade mark.

Where a mark is assigned from the assignor to the assignee, the assignor loses all legal rights over the trade mark, as an assignment is essentially transferring the ownership in the trade mark to the assignee.

Where the trade mark is not renewed by providing payment of the renewal fee when it is due for renewal and the grace period has expired, trade mark rights are also exhausted.

Parallel Import

In general "parallel importation" is not trade mark infringement for the trade mark is being used to indicate the registered proprietor's own products and on the basis of doctrine of exhaustion: Hai-O Enterprose Bhd v Nguang Chan @ Nguang Chan Liquor Trader [1993] 1 BLJ 53.

In Tien Ying Hong Enterprise Sdn Bhd v Beenion Sdn Bhd [2011] 2 CLJ 469, the Court held that Malaysian laws do not expressly forbid the importation of parallel goods; however, not all parallel imports are permitted, as the registered proprietor of the trade mark has the exclusive right to the use of the trade mark in relation to those goods. Trade mark rights are territorial, and as such, a trade mark proprietor in Malaysia may put a stop to parallel imports of goods bearing a similar trade mark from overseas.

In Re PT Garudafood Putra Putri Jaya TBK [2019] 11 MLJ 396, the High Court clarified the issue surrounding the uncertainty as to whether a Trade Description Order (TDO) can be issued pursuant to section 9(1) of the Trade Descriptions Act 2011 (“TDA 2011”) in respect of an infringement of a registered trademark which is identical to the infringing trade mark, as opposed to infringement of a registered trade mark which is not identical to the infringing mark, but could be passed off as the registered trade mark.

Section 8(3) of TDA 2011 presumes an infringing trade mark to be a false trade description where the infringing trade mark is identical to the registered trade mark. However, Section 9(1) of TDA 2011 necessitates an application to Court for a declaration that an infringing trade mark is a false trade description where the infringing trade mark is not identical but can be passed off as the registered mark. Despite no Court order being required under Section 8(3) TDA 2011, without a Court order, it is much more difficult to have action taken by the Ministry of Domestic Trade and Consumer Affairs where there is an infringement of an identical mark.

The High Court held that a TDO can be granted under Section 9(1) of TDA 2011 “where the infringing trade mark is not only that resemble and can be passed off as the registered trade mark but also those identical with the registered trade mark”.

With the coming into force of the TMA 2019, Malaysia now participates in the Madrid system. Part XII of the TMA 2019 provides for International Matters relating to the Madrid Protocol.

Every person who makes or causes to be made a false entry in the Register may be guilty of an offence and is liable to a fine or to a term of imprisonment, or to both.

The registration of trade mark may be declared invalid by the High Court upon the application by an aggrieved person or the Registrar on the ground of fraud or misrepresentation in the registration.

The representation of a trade mark may be amended or altered, provided that said amendment or alteration does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.

Such an application must be made by the registered proprietor and subject to the Registrar’s discretion.

Trade mark owners may use the symbol ® to denote that the trade mark is registered. The TM symbol may be used to show that the rights in the trade mark are being claimed by the owner.

A person who falsely represents that a trade mark is a registered trade mark or makes a false representation as to the goods or services for which a trade mark is registered, knowing or having reason to believe that the representation is false, commits an offence and shall be liable to a fine not exceeding MYR10,000.

A signed deed of assignment in writing is required to assign ownership of a trade mark. The terms of the deed must provide that the assignment is for valuable consideration and whether the assignment is absolute and with or without goodwill.

Upon the application, the Registrar shall enter in the Register:

  • the name and address of the assignee;
  • the date of the assignment; and
  • where the assignment is in respect of any right in the trade mark, a description of the right assigned.

The procedure for assigning a trade mark is as follows:

  • the assignee shall make an application to register assignment;
  • the application shall contain the full particulars of the trade mark, the assignor and assignee, the agent of the new proprietor, an authorisation to change the register and a declaration and signature by the applicant/registered proprietor;
  • a copy of the deed of assignment shall be filed;
  • the Registrar may require the registered proprietor or applicant to file any documentary evidence to establish the assignment; and
  • if the registered proprietor fails to comply with the Registrar’s request, the application to register or give notice of transaction shall be deemed withdrawn.

An assignment shall be deemed ineffective against a person acquiring a conflicting interest in the registered trade mark in ignorance of the transaction where the assignment is not registered. If the assignment is not recorded in the Register, the assignee may not be able to establish its exclusive rights afforded under TMA 2019. A person who becomes a registered proprietor by virtue of assignment shall not be entitled to damages or an account of profit in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the date of the application for the registration of the assignment in the register.

The TMA 2019 provides that a registered trade mark shall be a personal or moveable property and may be the subject of a security interest in the same way as other personal or moveable property.

A licence to use a registered trade mark may be general or limited. A limited licence may apply in relation to some goods or services for which the trade mark is registered or in relation to use of the trade mark in a particular or locality. A sub-licence may be granted by the licensee where the licence so provides. A licence shall not be effective unless it is in writing and is signed by or on behalf of the grantor. Every person shall be deemed to have notice of a licence if the particulars of the grant of the licence are entered in the Register.

The above-mentioned requirements and restrictions shall apply to an exclusive licence.

The registered owner may file an application to record the particulars of the grant of the licence in the Registrar stating the following:

  • the specified classes, goods, and services under the grant;
  • whether the licence is exclusive;
  • any conditions or restrictions imposed on the licence;
  • the names and addresses of the parties; and
  • the period of licence.

The registration of a person as a registered user may be cancelled by the Registrar on the application of the registered owner.

It is not mandatory to register a licensee as a registered user. However, by entry of the details of the licence into the register, every person shall be deemed to have had notice of that licence.

The rights to authorise other persons or licensee to use the trade mark vest exclusively upon the registered proprietor. There is no restriction in law to prevent the registered proprietor dealing with the trade mark like any other personal or moveable property, including the grant of perpetual licence.

Under Section 64(1) of TMA 2019, assignment or transmission of trade mark may be with or without goodwill.

As for licence, the grantor/proprietor is at liberty to authorise the use of trade mark in any way it deems fit.

The grounds for opposition may include:

  • the applicant is not the lawful proprietor of the opposed trade mark;
  • the opposed mark is likely to deceive or cause confusion to the public or would be contrary to law;
  • there is a conflict with the opposed mark and an application pending registration or that the tort of passing off would arise due to the use of the opposed mark;
  • unlawful use of the opposed mark due to its infringement of copyright law and other laws;
  • the opposed mark is scandalous or offensive, or would otherwise not be entitled to protection by any court of law;
  • the opposed mark does not meet the criteria for registration;
  • the opposed mark is identical or so nearly resembles the opponent’s mark; or
  • the opposed mark is identical or so nearly resembles a well-known mark.

Any person may, within two months from the date of any publication in the Journal of the acceptance of a trade mark, file and serve a notice of opposition stating their grounds. 

An extension of time to file a notice of opposition of can be obtained.

Any person may file an opposition. The opponent does not necessarily need representation by an attorney or trade mark agent unless they do not reside in or carry on business in Malaysia.

The average official filing fees for filing notice of opposition is MYR950 for each class. The attorney fees will vary depending on the trade mark agent appointed and the complexity of the opposition.

The opposition procedure is as follows:

  • the opponent shall, following advertisement in the Journal, file and serve a notice of opposition;
  • the applicant shall file and serve a counter statement;
  • the opponent shall file and serve evidence by way of statutory declaration;
  • the applicant shall file and serve evidence by way of statutory declaration;
  • the opponent may file and serve evidence in reply by way of statutory declaration;
  • the Registrar shall give a notice to the opponent and applicant to submit written submissions; and
  • upon filing the parties’ written submission, the Registrar shall communicate their decision and the grounds of their decision in writing.

A decision of the Registrar in opposition proceedings is appealable to the High Court. Such an appeal shall be made by way of OS within one month from the date the Registrar’s written grounds is issued. An extension of time to appeal (not exceeding two months) may be applied to the Registrar accompanied by the payment of the prescribed fee.

For a registered mark, the registered proprietor may initiate an action against the infringer based on trade mark infringement.

Where a mark is not registered, the proprietor may initiate an action against the infringer based on tort of passing off.

Trade Mark Infringement

The TMA 2019 provides for acts amounting to infringement of registered trade mark as follows:

  • a person who uses a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor; and
  • a person who, without the consent of the registered proprietor of the trade mark uses in the course of trade a sign:
    1. that is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
    2. that is similar to the trade mark and is used in relation to goods or services identical or similar to those for which the trade mark is registered resulting in the likelihood of confusion on the part of the public.

Tort of Passing Off

The test of passing off as set out in Reckitt & Colman Products Ltd v Borden Inc & Ors [1990] 1 All ER 873, is as follows:

  • the plaintiff has goodwill or reputation attached to the goods or services that the plaintiff supplies in the mind of the purchasing public by association with the brand name, labelling or packaging;
  • the defendant has misrepresented to the public, which leads or is likely to lead the public to believe that the defendant's goods or services are the goods or services of the plaintiff; and
  • the plaintiff must prove that he suffers damage by reason of the defendant's misrepresentation.

A trade mark owner may initiate infringement proceedings in the High Court.

MyIPO does not determine infringement actions. The decision of MyIPO is limited to registration of the trade mark.

Any person may seek declaratory relief if they are entitled to any legal character or to any right as to any property. The court's jurisdiction to make a declaratory order is unlimited, subject only to its own discretion, unless the person is able to seek other relief.

The court has power to grant a declaration irrespective of whether an application has a cause of action or not.

Any aggrieved person may bring proceedings for declaratory relief for remedy based on groundless threats of infringement proceedings. However, such rights may not be available where the demand relating to threats of infringement involves: 

  • application of trade mark to goods or to material used or intended to be used for labelling or packaging of goods;
  • importation of goods where the trade mark has been applied; and/or
  • supply of services under the trade mark.

Registrar’s Decision

Pursuant to the case of Merck KGAA, supra, an aggrieved party to the Registrar’s decision may appeal to the High Court and subsequently to the Court of Appeal. The Court of Appeal shall be the final appellate court for matters that originated from the Registrar.

Trade Mark Infringement, Passing Off, Revocation and Invalidation of Registered Trade Marks

The High Court has jurisdiction to hear trade mark matters, such as trade mark infringement, passing off, revocation and invalidation of registered trade marks.

An appeal may be made to the Court of Appeal. Subsequently, parties may appeal to the Federal Court against the decision of the Court of Appeal.

There is no prerequisite to filing a lawsuit. Parties may issue a letter of demand or cease and desist letter for the infringer to cease their act of infringement.

The TMA 2019 codifies the remedies available to a plaintiff in an infringement action as follows: 

  • mandatory or restraining injunctions;
  • damages;
  • an account of profit;
  • additional damages, in an appropriate case, where infringement involves a counterfeit trade mark;
  • order for erasure;
  • order for delivery up of infringing goods, materials or articles; or
  • order for disposal of infringing goods, material or articles.

A successful plaintiff in an infringement action may now be awarded both damages and an account of profits (attributable to the infringement that have not been taken into account in computing the damages).

Subject to the following, parties may sue or carry on proceedings in court by a solicitor or in person.

A body corporate or company may not begin or carry on any proceedings otherwise than by a solicitor.

A person under disability may not bring, make a claim in, defend, make a counterclaim in or appear in any proceedings except by their litigation representative.

Interlocutory injunctions are available where the plaintiff is establishes the following:

  • there is a bona fide serious issue to be tried;
  • the balance of convenience tilts in favour of the grant of the interlocutory injunction; and
  • damages are not an adequate remedy if they succeed at the trial: Keet Gerald Francis Noel John v Mohd Noor bin Abdullah & Ors [1995] 1 MLJ 193.

The TMA 2019 provides that upon the application of the plaintiff for an interim injunction, when the Court is satisfied that the infringement involves the use of a counterfeit trade mark, the Court may order:

  • the seizure or taking into custody of suspected infringing goods, materials or articles relevant to the infringement; and
  • the supply of documentary evidence relevant to the infringement.

The court may also consider the following:

  • where the justice of the case lies;
  • the practical realities of the case;
  • the plaintiff's ability to meet their undertaking in damages should the suit fail;
  • whether there is any delay in the making of the application; and/or
  • public interest in appropriate cases.

The validity of the plaintiff’s trade mark registration may be challenged by a potential defendant, such as asserting that the trade mark should not have been registered. See 1.17 Exhaustion of Trade Mark Rights.

For a potential defendant to revoke a registered mark based on non-use, the defendant must first establish that it is an "aggrieved person".

However, an infringer of a mark cannot be a bona fide "aggrieved person": LB (Lian Bee) Confectionary Sdn Bhd v QAF Ltd [2012] 3 CLJ 661.

Discovery applications are made after the close of pleadings but before the trial starts. There are three stages in which discovery would apply: disclosure of a list of documents, production of the documents and inspection.

The Assistant Controller may additionally require provision of information including evidence if they have a reason to believe that the information is relevant for them to investigate the case or matter before them.

A lawsuit is initiated by filing a writ and statement of claim or OS in which the defendant is informed of the plaintiff’s claim. The remedy or relief being sought must be specifically payed for.

In brief:

  • the particulars of the plaintiff(s) and defendant(s) shall be pleaded;
  • every pleading shall contain a summary of the material facts, documents, or conversations referred to, but not the evidence;
  • a party shall, in any pleading subsequent to a statement of claim plead, specifically any matter showing illegality including:
    1. alleging that any claim or defence of the opposite party not maintainable;
    2. that any issue, if not specifically pleaded, might take the opposite party by surprise; or
    3. any issues of fact not arising out of the preceding pleading;
  • a party may plead any matter that has arisen at any time, whether before or since the issue of the writ;
  • a party shall not, in any pleading, make an allegation of fact or raise any new ground or claim inconsistent with a previous pleading;
  • a party may, by their pleading, raise any point of law;
  • every pleading shall contain the necessary particulars, including:
    1. the particulars of any misrepresentation, fraud, breach of trust, wilful default or undue influence on which the party pleading relies; and
    2. where a party alleges any condition of the mind of any person, whether any disorder or disability of mind or any malice, fraudulent intention or other condition of mind except knowledge, particulars of the facts on which the party relies;
  • no party shall quantify any claim or counterclaim for general damages; and
  • a statement of claim shall state specifically the relief or remedy that the plaintiff claims, but costs need not be specifically claimed.

Pleadings can be amended at any stage; however, they should be made as early as possible and should not cause injustice to the other party. After the close of pleadings, amendments may be made with leave of court if:

  • the application for amendment is bona fide;
  • there is no prejudice caused to the other side that cannot be compensated by costs; and
  • the amendments would not in effect turn the suit from one character into a suit of another and inconsistent character: Yamaha Motor Co Ltd v Yamaha (M) Sdn Bhd & Ors [1983] 1 MLJ 213, Federal Court.

In Hong Leong Finance Bhd v Low Thiam Hoe [2015] 8 CLJ 1, the Court held:

  • when an application to amend the pleadings introduces a new case in the claim or defence, on the eve of the trial, the principles in Yamaha Motor are not the sole considerations;
  • the principles in Yamaha Motor apply to where the application to amend the pleadings is made at an early stage;
  • there has to be a cogent and reasonable explanation in the applicant's affidavit as to why the application was filed late;
  • the application to amend the pleadings cannot be a tactical manoeuvre;
  • that the proposed amendment must disclose full particulars for the court to ascertain if there is a real prospect of success; and
  • that lateness in the application to amend the pleadings cannot necessarily be compensated by payment of costs.

A defendant in a trade mark action can initiate a lawsuit in response by way of a counterclaim. Rather than initiating a separate action, the defendant can make a counterclaim in addition to their defence. A Counterclaim is treated as if it is a statement of claim.

A representative action for trade mark proceedings is possible provided the requirements below are met:

  • the plaintiff and those represented by them are members of a class and they have a common interest;
  • they must have a common grievance; and
  • the nature of relief sought is beneficial to all.

After action is initiated by a trade mark owner, the other party may apply to strike out the claim on the grounds:

  • it discloses no reasonable cause of action;
  • it is scandalous, frivolous or vexatious;
  • it may prejudice, embarrass or delay the fair trial of the action; or
  • it is otherwise an abuse of the process of the court.

The court may also strike out a claim when the purpose for initiating the claim was for some purpose other than to obtain genuine redress that the process offers: Malaysia Building Society Bhd v Tan Sri General Ungku Nazaruddin Ungku Mohamed [1998] 2 CLJ 340.

An action for infringement is prohibited if the infringing act was committed during the gap after the expiry or removal of the registration of the trade mark and before it was renewed or restored.

Further, the TMA 2019 provides remedy for groundless threats of infringement proceedings. The relief that may be applied for by a person receiving a groundless threat are any of the following:

  • a declaration that the threats are unjustifiable;
  • an injunction against the continuance of the threats; or
  • damages in respect of any loss he has sustained by the threats.

The necessary parties to an action for infringement are the registered proprietor and the alleged infringer.

Joint proprietors can bring a proceeding in their own names. However, one may not, without the leave of the Court, proceed with the action unless the other co-proprietors are joined as plaintiffs.

An exclusive licensee or a licensee shall be entitled to bring infringement proceedings against the infringer as described in 4.1 Actions Available to a Trade Mark Owner.

A trade mark owner of an unregistered trade mark may only commence an action based on tort of passing off.

Considering that the TMA 2019 is at its infancy stage, it may be argued that relevant factors would include those that were deemed relevant by the Courts under the TMA 1976, which may be summarised as follows:

  • the idea of the mark is to be regarded;
  • the elements of the mark must be taken as a whole;
  • the marks as a whole must be compared;
  • imperfect recollection of the mark by customers or purchasers should be taken into account;
  • the first syllable of the trade marks is of importance;
  • the aural as well as the visual aspect of a customer towards the mark is relevant; and
  • the essential features of the trade marks must also be compared (Consitex SA v TCL Marketing Sdn Bhd [2008] 8 CLJ 444);
  • all the circumstances of the trade to be considered (Bata Ltd v Sim Ah Ba [2006] 3 CLJ 393, Court of Appeal).

A person uses a sign if they:

  • applies it to goods or their packaging;
  • offers or exposes goods for sale under the sign;
  • puts goods on the market under the sign;
  • stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market;
  • offers or supplies services under the sign;
  • imports or exports goods under the sign;
  • uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or
  • uses the sign in advertising.

In Mesuma Sports Sdn Bhd v Majlis Sukan Negara, Malaysia (Pendaftar Cap Dagangan, Malaysia, interested party) [2015] 2 MLJ 176 and Mesuma Sports Sdn Bhd [2015] 6 MLJ 465, supra, the Court of Appeal and Federal Court agreed that under the TMA 1976, the term "trade" encompasses activities that range far beyond commercial. As such, although the plaintiff was not a profit-making organisation it still used its mark "in the course of the trade". The respondent, by using the design, owned the goodwill generated thereby in relation to the mark.

In Philip Morris Brands Sarl v Goodness for Import and Export & Ors [2017] 10 CLJ 337, the scope of "use in the course of trade" was expanded to include the transhipment of the defendant’s cigarettes itself.

The TMA 2019 provides for the defences against infringement:

  • the use in good faith by a person of his own name, or the name of his or his predecessor’s business;
  • the use in good faith a sign to indicate the kind, quality, quantity, intended purposes, value, geographical origin or other characters of the goods or services in accordance with honest practices in industrial or commercial matters;
  • the use in good faith a sign to indicate the time of production of goods or the rendering of the services in accordance with honest practices in industrial or commercial matters;
  • the use in good faith by a person to indicate the intended purpose of goods including accessories or spare parts or service in accordance with honest practices in industrial or commercial matters;
  • the owner or their predecessors in business have continuously used the mark from a date before the use of the registered trade mark by the registered proprietor, their predecessor in business, or a registered user of the mark or before registration of the trade mark, whichever is earlier;
  • a person uses a trade mark in relation to goods or services where the registered proprietor or registered user has expressly or impliedly consented to;
  • the use for a non-commercial purpose;
  • the use for the purpose of news reporting or news commentary;
  • the use of a trade mark, which is one of two or more registered trade marks which are substantially identical, in the exercise of the right to the use of that trade mark given by registration; and
  • the registered trade mark is used by concurrent proprietors.

Section 45(1) of Evidence Act 1950 provides, inter alia, expert opinion upon a point of foreign law, science or art. “Expert” means a person who is specially skilled in any particular art or trade or profession.

The role of an expert is merely to assist the Court in forming an opinion and not to conclude or to bind the Court with its opinions. A third party applying to expunge the mark based on non-use must prove a prima facie case. The most common way of doing this is via a survey or market research report. Courts are more inclined to accept and attach weight to a survey if it complies with the Whitford guidelines as follows:

  • a relevant cross-section of the public is interviewed;
  • any survey must be of a size which is sufficient to produce some relevant result viewed on a statistical basis;
  • the party relying on the survey must disclose how many surveys they have carried out, how those surveys were conducted and the number of persons involved;
  • the questions must not be leading, and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put;
  • exact answers and not some sort abbreviation of the exact answer must be recorded;
  • the totality of all answers given to all surveys should be disclosed; and
  • the instruction given to interviewers must also be disclosed.

The following infringing acts may be a criminal offence:

  • counterfeiting a trade mark;
  • falsely applying a registered trade mark to goods or services;
  • making or possessing an article which is designed or adapted for making copies of a registered trade mark; and
  • importing or selling goods with a falsely applied registered trade mark.

Under TMA 2019, the relevant procedure on investigation and enforcement of the criminal offences are provided in Part XVI.

Criminal charges in respect of false application of trade marks to goods and services are further provided under TDA 2011.

Under these Acts, certain government-appointed officers (“Controllers”) are conferred powers of investigation, search, seizure and arrest. An investigation may be launched upon receiving a complaint or when the Assistant Controller has reasonable grounds to suspect that an offence will be committed.

Such a complaint must specify details such as the person against whom the complaint is made or the premises where the alleged offence is committed. If the trade mark in question is not identical to a registered trade mark, the registered proprietor or licensee must obtain the Registrar’s verification.

The Public Prosecutor has the discretion whether should be prosecuted, based on what is found during the investigation stage.

For parallel imports, see 1.17 Exhaustion of Trade Mark Rights.

Part XIII TMA 2019 specifically provides for border measures:

  • a registered proprietor or licensee may file an application with the Registrar if they believe that infringing goods are to be imported;
  • the Registrar will notify the applicant whether the application has been approved; if it has, the applicant must pay a security deposit with the Registrar;
  • the Registrar will notify authorised officers of the particulars of the application, who will then prohibit importation of the infringing goods identified in the application; any such goods will be seized and detained; and
  • following seizure, the authorised officer will notify the Registrar, importer, and applicant of the seizure and specify a period within which the applicant must institute an action for infringement, failing which the infringing goods will be released to the importer.

Please refer to 1.11 Revocation, Change, Amendment or Correction of an Application.

Voluntary Cancellation

The registered proprietor may request the Registrar to cancel the registered trade mark.

Revocation by Registrar

The Registrar shall revoke the registration of a trade mark:

  • where a notice of opposition to the registration was filed, and the Registrar failed to take into account the opposition; or
  • where any person had applied for an extension of time for filing a notice of opposition, and the Registrar failed to take this into account.

Alternatively, the Registrar shall revoke the registration of a trade mark in the event the Registrar is satisfied that it is reasonable to do so, considering:

  • any relevant obligations under an international agreement or convention; or
  • any special circumstances making it appropriate:
    1. not to register the trade mark; or
    2. to register the trade mark only if the registration were subject to disclaimer, conditions, amendments, modifications or limitations to which the registration was not made subject.

Where the Registrar wishes only to revoke some of the classes for which the trade mark is registered, a registered proprietor may file a divisional application.

Upon the decision of a Registrar to revoke a registration, the registered proprietor may request the Registrar to send him the grounds of the decision, upon which he may appeal to the Court.

Revocation by Court

The Court may revoke a registration upon application by an aggrieved person:

  • where the trade mark has not been used in good faith within a period of three years following its registration, and there are no proper reasons for non-use;
  • where the use of the goods or services for which the trade mark is registered has been suspended for three years, and there are no proper reasons for non-use;
  • where the trade mark has become diluted in the market because of acts of inactivity; or
  • where the trade mark is liable to mislead the public, including in respect of the nature, quality or geographical origin of the goods or services for which it is registered.

Invalidation by Court

The Court may invalidate a registration upon application by an aggrieved person on the ground that the registered trade mark was registered in breach of Section 23 (ie, absolute grounds for refusal).

Both the Courts and the Registrar are empowered with the discretion to revoke a registration, as described in 6.1 Remedies and Reasons for Revocation/Cancellation.

With regards to cancellation, the only cancellation specifically provided for in the TMA 2019 is voluntary cancellation. For this, a registered proprietor may request that the Registrar cancel their trade mark in respect of some or all of the classes for which it is registered.

Where a notice of opposition has been filed and the Registrar failed to take it into account, the revocation shall be subject to the Registrar becoming aware of their own failure within two months. The Registrar shall revoke the registration within one month from becoming aware of their failure.

If the Registrar only becomes aware of such a failure after the expiry of this period, they may only revoke the registration under special circumstances or international obligations. For revocation under the ground of special circumstances, the Registrar may revoke the registration within 12 months from the date of registration of the trade mark.

TMA 2019 does not provide any time line within which a voluntary cancellation must be made.

Cancellation

A registered proprietor may voluntarily cancel some or all of the goods or services for which their trade mark is registered by request to the Registrar.

Revocation by the Registrar

The following persons may initiate revocation proceedings at MyIPO:

  • an opponent to the application of the registration; or
  • the Registrar on their own motion, as described in 6.1 Remedies and Reasons for Revocation/Cancellation.

Revocation or Invalidation by Court

Only a "person aggrieved" may apply for revocation based on non-use of trade marks or the invalidation of the registration.

In McLaren International Ltd v Lim Yat Meen [2009] 5 MLJ 741, a "person aggrieved" was described as a person who has used their mark as a trade mark, or has a genuine and present intention to use their mark as a trade mark in the course of trade that is the same or similar to a registered mark. It cannot be a third party who is a "mere busybody".

It was decided by the Federal Court in Mesuma Sports Sdn Bhd [2015] 6 MLJ 465, supra, that the person must have a legal interest, right, or legitimate expectation which is substantially affected by the presence of the registered mark.

Although these cases were decided based on TMA 1976, the principles are likely to be applicable under TMA 2019.

Under the voluntary cancellation scheme, a registered proprietor may request the cancellation of the registration of a trade mark with respect to some of the goods or services for which it is registered.

In proceedings for revocation before a Court, where grounds for revocation exist in respect of some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only. Similarly, in the case of invalidation by the Court under Section 47, partial invalidation is possible.

There are no specific provisions as to amendment during revocation/cancellation proceedings. TMA 2019 confines alterations and amendments to limited situations, where there has been a change or an error in the proprietor’s or licensee’s details or in the details of description of the goods or services in respect of which the trade mark is registered, or where a disclaimer is to be entered into the register.

The Registrar is empowered to make any consequential correction pursuant to the application or correct any clerical error or omission at their discretion.

Any party may apply to consolidate infringement and revocation matters so that both proceedings may be heard together. A court has the discretion and power to direct if the court is to hear the revocation proceedings first, or simultaneously.

In proceedings for trade mark infringement, grounds for revocation may be raised as a defence.

Section 140(1) of TMA 2019 requires that a copy of every application to the High Court, including appeals, shall be filed with the Registrar. This ensures that all the necessary information is recorded by the Registrar.

Where the validity of a registered trade mark is the subject of proceedings, and the proceedings are decided in favour of the registered proprietor, the Court may certify the validity of that trade mark. Consequently, in any subsequent proceedings in which the validity of the registration comes into question, the registered proprietor on obtaining a final order or judgment in their favour shall have their full costs, charges and expenses as between solicitor and client, subject to the discretion of the Court.

There is a specialised Intellectual Property High Court in the High Court of Malaya in Kuala Lumpur that hears all IP disputes. Malaysian Courts do not conduct trial by jury.

A defendant can make an offer to settle the matter at any time, after the commencement of action and before the court disposes of the matter.

A defendant may file a counterclaim for revocation when being sued for infringement. A party may apply to consolidate both matters so that they will be heard together.

Injunction

An injunction may be granted to prevent the infringing goods from entering the channels of commerce.

Upon application for an interim injunction, where the Court is satisfied that the infringement involves the use of a counterfeit trade mark, the Court may order:

  • the seizure or taking into custody of suspected infringing goods or materials; and
  • the supply of documentary evidence.

Mandatory Orders

In relation to offending signs, the Court may make:

  • an order for erasure, removal or obliteration of the offending sign from any infringing goods or materials;
  • if the sign alone cannot be removed from the goods or materials, then the goods and materials themselves must be destroyed;
  • an order that the infringing goods, material or articles be delivered up to the registered proprietor, in addition to the orders for erasure or destruction described above; and
  • if a person has in their possession, custody or control any counterfeit goods, to order the counterfeit goods be delivered up for destruction.

Additional Damages

In assessing whether additional damages ought to be granted, the Court may take into account the flagrancy of the infringement, whether the defendant has obtained any benefit as a result of the infringement, and whether the defendant ought to be punished for infringing the trade mark.

Account of Profits

The Court further has the discretion to award as an additional remedy an account of profits attributable to the infringement that have not been considered in computing the damages: Section 56(5) of TMA 2019.

Generally, the remedies which are available to a plaintiff are also available to a defendant, depending on the circumstances of the case and the defendant’s counterclaim.

Besides the costs that may be awarded in favour of a prevailing defendant in usual proceedings, in the case of seizure of goods under border measures, the Court may order the applicant to pay compensation to the defendant or a person aggrieved by such seizure if the applicant fails to institute an infringement proceeding. In such a situation, the alleged infringing goods may also be released back to the person aggrieved.

The Court may also order the applicant to pay compensation to the defendant if:

  • the action is dismissed or discontinued, or if the Court decides that the relevant registered trade mark was not infringed by the importation of the seized goods; and
  • the defendant to the action for infringement satisfies the Court that he has suffered loss or damage as a result of the seizure of the goods.

Where a counterclaim for revocation of the plaintiff’s mark from the register is successful, and the elements for revocation are proved, the plaintiff’s mark may be expunged from the register.

The type of remedy sought would depend on the facts of each case. There are no specific remedies which are assigned to particular types of trade marks.

The registered proprietor may claim for additional damages where the infringement involves the use of a counterfeit trade mark.

The appellate procedure for trade mark proceedings is the same as all appellate civil disputes.

Appeals to the Court of Appeal involve a re-hearing of the case, which involves a review of facts and law. Appeals to the Federal Court are limited to a review of questions of law involved in the case.

The trial court may dispose the disputes within nine months from the date of commencement of the action. An appeal from a trial court may be disposed within six to nine months.

Malaysian Courts recognise the principle of trade mark dilution as a matter of common law. Further, TMA 2019 provides that trade marks which have become customary in the current language of the territory or the established practices of traders cannot be registered. However, currently, the concept of dilution is more often used to make a claim against an alleged infringer, rather than as a defence.

“Well-known trade mark” is defined to mean any trade mark which is well-known in Malaysia and that belongs to a person who:

  • is a national of a country which is a party to a multilateral trade mark treaty to which Malaysia is also a party; or
  • is domiciled, or has a real and effective industrial or commercial establishment in a Convention country, whether or not that person carries on business, or has any goodwill, in Malaysia.

Under section 76(1) TMA 2019, a well-known trade mark is entitled to protection:

  • whether or not the trade mark has been registered in Malaysia, or an application for the registration of trade mark has been made to the Registrar; and
  • whether or not the proprietor of the trade mark carries on business, or has any goodwill, in Malaysia.

Based on Section 5(1) of the Geographical Indications Act 2000, the court may grant an injunction to prevent any unlawful use of the geographical indication and award any damages and any other legal remedy or relief as it deems fit, where an interested person institutes proceedings in the court to prevent:

  • the use in the course of trade of any means in the designation or presentation of any goods that indicates or suggests that the goods in question originate in a geographical area other than the true place of origin;
  • any use in the course of trade that constitutes an act of unfair competition;
  • any use in the course of trade of a geographical indication that, although literally true as to the locality in which the goods originate, falsely represents to the public that the goods originate in another locality; or
  • any use in the course of trade of a geographical indication identifying wines or spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the wines or spirits is indicated.

A certification mark shall be a sign indicating that the goods or services in connection with which it shall be used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

Second Schedule of TMA 2019 provides for further regulations governing certification marks.

Under Section 55(1), the use in good faith of one’s own name or that of their predecessor in business will not be considered infringement of a registered trade mark so long as it is in accordance with honest practices.

The costs that typically arise before filing a lawsuit include a "getting up fee", which considers whether the advocate and solicitor has acted reasonably and properly in getting up their client’s case in preparation for the trial. In this case, work done before action is initiated may be considered. The estimated costs may start from MYR1,500.

Further, there are costs involved where the parties choose to engage in pre-trial correspondence, such as cease and desist letters, or if the parties elect to attempt ADR before bringing proceedings to Court. The typical costs may start from MYR500.

Costs are not fixed and are dependent on the enforcement type and manner.

It is generally the losing party that must pay costs to the winning party; however, whether costs are awarded depends on the court exercising its discretion.

ADR is available to resolve trade mark disputes, however, it is not generally required. Often, disputes involving domain names are resolved by way of arbitration. Which arbitration centre deals with the dispute depends on the domain name in question.

A trade mark may also be protected under copyright law, provided that it is one of the categories of work eligible for copyright protection. For example, logos are a form of "graphic work", which are considered artistic works under the Copyright Act 1987.

Lee Hishammuddin Allen & Gledhill

Level 6
Menara 1 Dutamas
Solaris Dutamas
No. 1
Jalan Dutamas 1
50480 Kuala Lumpur
Malaysia

+603 6208 5888

+603 6201 0122

yth@lh-ag.com www.lh-ag.com
Author Business Card

Law and Practice in Malaysia

Authors



Lee Hishammuddin Allen & Gledhill is a full-service law firm housing various practice groups including dispute resolution, arbitration, financial services, Islamic finance, corporate and commercial, employment and industrial relations, insolvency, insurance, IP and TMT, real property, regulatory and compliance and tax. LHAG has more than 125 lawyers with offices in Kuala Lumpur, Penang and Johor Bahru. Clients include top-ranked local conglomerates and multinational companies spanning industries such as IT, e-commerce, telecommunications, biotechnology, healthcare, entertainment and FMCG (fast-moving consumer goods). Its seasoned team of trade mark, industrial design and patent agents, litigators and commercial lawyers work closely with in-house counsel to protect intellectual property, innovation and creativity. The team has experience in a wide range of jurisdictions and commercial sectors, and assists clients to identify and anticipate potential issues or trends in outsourcing. The breadth of its practice includes handling disputes involving IT and communications services, business process outsourcing, finance and accounting and facilities management. The authors would like to thank Fatin Akmal Bin Hassim, POSITION, and Sonali Nadkarni, POSITION, for their contribution to this chapter.