Contributed By Lee Hishammuddin Allen & Gledhill
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:
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:
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:
Examples of relative grounds for refusal are:
The process for seeking to overcome objections raised by the Registrar is as follows:
In the recent case of Merck KGAA v Leno Marketing (M) Sdn Bhd (Registrar of Trade Marks, Interested Party)  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:
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:
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:
Further, a registered trade mark may be:
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  1 LNS 1092 discusses the principles in determining "genuine use":
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:
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.
In Low Chi Yong v Low Chi Hong and another  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:
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.
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  1 BLJ 53.
In Tien Ying Hong Enterprise Sdn Bhd v Beenion Sdn Bhd  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  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 procedure for assigning a trade mark is as follows:
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 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:
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:
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:
Tort of Passing Off
The test of passing off as set out in Reckitt & Colman Products Ltd v Borden Inc & Ors  1 All ER 873, is as follows:
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:
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:
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:
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 court may also consider the following:
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  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.
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:
In Hong Leong Finance Bhd v Low Thiam Hoe  8 CLJ 1, the Court held:
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:
After action is initiated by a trade mark owner, the other party may apply to strike out the claim on the grounds:
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  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:
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:
A person uses a sign if they:
In Mesuma Sports Sdn Bhd v Majlis Sukan Negara, Malaysia (Pendaftar Cap Dagangan, Malaysia, interested party)  2 MLJ 176 and Mesuma Sports Sdn Bhd  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  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:
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:
The following infringing acts may be a criminal offence:
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:
Please refer to 1.11 Revocation, Change, Amendment or Correction of an Application.
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:
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:
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:
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.
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:
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  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  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.
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:
In relation to offending signs, the Court may make:
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:
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:
Under section 76(1) TMA 2019, a well-known trade mark is entitled to protection:
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:
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.