Trademark

Introduction


The registration of trade marks in Malaysia is governed by the Trade Marks Act 1976 (the “TMA”) and Trade Marks Regulations 1997. With effect from 1 December 1997, service marks are also registrable. For convenience, the term "trade mark" when used herein also includes "service mark" unless indicated otherwise. Any mark used/proposed to be used in relation to goods or services to indicate a connection in the course of trade between the goods or services and the person having the right to use the mark can be registered. In this regard "mark" includes any device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these elements. Marks in other than English or Malay are also prima facie registrable although certified translation and transliteration of the marks
will be required to be furnished.


Applicant for registration of a trade mark


Any person (an individual, corporation or business) who claims to be the bona fide proprietor of the mark may apply for trade mark registration.

 

Reasons for registering a trade mark


Registration of a trade mark conveys exclusive rights to the registered proprietor to use the mark on the goods/services for which the mark is registered. The proprietor of a registered mark has, prima facie, the right to take legal action against wrongful use of the registered mark or any confusingly similar mark in relation to the goods/services in respect of which the mark is registered. If the trade mark is not registered, the proprietor of the mark will have to rely on the common law remedy of passing off, which can be more difficult and expensive to establish.

 

Criteria for registration as a trade mark


A mark must be sufficiently distinctive in order to be registrable, in that the mark must be able to distinguish the goods/services bearing the mark from goods/services which do not. Generally, marks which have direct reference to the character or quality of the goods/services, geographical names and surnames may not be considered distinctive and therefore may not be registrable. Also, marks which are confusingly similar to a prior mark or which are deceptive or contrary to law or morality may not be registrable.

By virtue of amendments to the TMA which came into force on 1 August 2001, a mark shall not be registered if it is identical with or so nearly resembles a mark wellknown in Malaysia for the same goods or services of another proprietor or if it is well-known and registered in Malaysia for goods or services not the same as those of the subject application provided that use of the mark in relation those goods or services would indicate a connection between the goods and services of the proprietor of the well-known mark and the interests of the proprietor are likely to be damaged by such use.

There is no express definition of a well-known mark in the Act. However, it is provided that Article 6bis of the Paris Convention and Article 16 of the TRIPs Agreement shall apply for the purpose of determining whether a mark is well-known.

Likewise, a mark shall also not be registered if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication for such goods in Malaysia will mislead the public as to the true place of origin of the goods.

A similar prohibition of registration is also provided in respect of a mark for wines or spirits which contains or consists of a geographical indication identifying wines or spirits, not originating in the place indicated by the geographical indication in question.

However, a mark shall not be refused registration by reason of it containing or consisting of a  geographical indication as expressed above if the application was made in good faith, or if the mark had been continuously used in good faith in the course of trade by the applicant or his predecessor in title either before the commencement of the Geographical Indications Act 2000 (which came into force at the same time as the relevant amendments to the TMA, that is, 1 August 2001) or before the protection of the geographical indication in its country of origin.

 

Application for registration


An application for registration of a trade mark may be made by any person claiming to be the proprietor of the mark. In brief, an application shall be filed with the Intellectual Property Corporation of Malaysia (MyIPO) and includes:

• a completed Form TM5, signed by the applicant or his agent;

• where an agent is appointed, Form TM1 in respect of the address for service;

• a representation of the mark;

• a list of goods or services; and

• the prescribed filing fee(s).

Upon filing and if the documents are in order, an application number and filing date are allocated. The applicant is also required to file a Statutory Declaration affirming that the applicant is the bona fide proprietor of the mark and that the application is made in good faith. This Declaration can be filed either with the initial application or subsequently. Thereafter, the application awaits its turn to be examined.

Examination of an application serves to check whether the mark applied for meets the requirements for registration as provided in the TMA. If the examination is successful, the mark is advertised in the Government Gazette. The filing of Form TM29 and payment of an official fee are required at this point. There is a two month period after advertisement during which the mark may be opposed. If the mark is not opposed, it will then proceed to registration and a Certificate of Registration will be issued. If an opposition is filed, registration of the mark will depend upon how the opposition is decided.

In the event any objections are raised at the examination stage, the applicant will receive an official letter setting out the objections and will be given a period of two months to respond with submissions. The response period can be extended, if necessary. Following the filing of a response to the objections, the application will either be accepted for advertisement, or the objections maintained. In the latter case, the applicant may request a hearing.

The necessary forms, including those mentioned above, are available from http://www.myipo.gov.my.

The above summary of the trade mark registration process is necessarily simplified. Numerous detailed requirements that must be met either at the outset, or before an application can proceed to registration, are set out in the TMA and Regulations. For this reason, it is strongly recommended to engage a registered trade mark agent to advise you on the protection of an invention and to represent you before the Registrar of Trade Marks when your application is filed and examined. Many members of MIPA are registered trade mark agents.


Expedited examination


For applications filed after 15 February 2011, there are formal provisions for requesting expedition of examination, provided the request is filed within four (4) months from the application filing date. The request must be reasoned and an official fee is payable. The grounds on which expedited examination may be considered are:

• national or public interest;

• evidence of potential infringement or ongoing infringement proceedings;

• registration is a condition to obtaining monetary benefits from the Government or institutions recognized by the Registrar; or

• other reasonable grounds.

Upon approval of the request by MyIPO a further, substantial official fee is immediately payable to commence expedited examination. It should be noted that what is expedited is the timeframe within which the mark gets examined. The application is still subject to the normal and remaining stages leading up to registration.


Classification of goods and services


In respect of goods, the Malaysian Registry of Trade Marks generally follows the International Classification of Goods and Services ("ICGS") published by the World Intellectually Property Organisation ("WIPO") which sets out 34 classes of goods and 10 classes of services. As of the time of this write-up, the Registry adopts the 8th Edition of the ICGS although it is anticipated that the 9th Edition will be adopted in the near future.


Priority claim


The applicant may claim the priority of an earlier corresponding application filed in a Paris Convention country within the 6-month period immediately preceding the filing of the Malaysian application.

 

Period of registration


A mark once registered is valid for 10 years from the date of filing and may be renewed every 10 years thereafter.


Effect of registration and expungement for non use


Once a mark is registered, registration is deemed to date back from the date of application and the registration is valid for 10 years from the date of application.

The registered proprietor has exclusive rights to use the mark in respect of the goods/services for which it is registered. Any person who uses the registered mark in respect of the goods/services for which it is registered without the consent of the proprietor would be infringing the trade mark and the proprietor has the right to take action for such infringement.

Upon registration, the proprietor should ensure that the mark continues to be used. This is because the TMA provides that upon the application of an aggrieved person, a mark may be expunged from the Register if it has not been used in good faith for a continuous period of three years or more up to a month before the date of the application for expungement.


Licensing and transfer of trade marks


In cases where the proprietor of a trade mark licenses or authorises another to use his trade mark, the other person should be recorded in the Register as the Registered User of the trade mark. The effect of this is so that use by the Registered User will enure to the proprietor, thereby protecting the mark from expungement for non-use. This is because “permitted use” under the TMA refers only to use by the registered user.

The TMA provides for trade marks to be assigned/transmitted with or without the goodwill of the business concerned and requires any person who becomes entitled by assignment/transmission to a trade mark to register such an assignment/title in the Register. Unless directed by the Court, no document of title shall be admissible in Court to prove title to a registered trade mark if the assignment has not been recorded and entered in the Register.

Assignment of a trade mark that has not been used in good faith in Malaysia without the goodwill of the business is deemed invalid, save in limited circumstances (where the mark was registered with the intention of it being assigned to a body corporate yet to be formed, or in respect of permitted use where the user has been registered within 6 months from registration of the mark and the mark has been used during that period).

In respect of an assignment without goodwill of the business, the assignment shall not be deemed to have taken effect unless the assignment has been advertised in the prescribed manner and the application for assignment accompanied by the advertisement has been sent to the Registrar.


Protection of well-known trade marks


Other than the provisions prohibiting the registration of a trade mark that is similar or identical to a well-known trade mark as expressed earlier, well-known trade marks are given further protection under the TMA. The proprietor of a well-known trade mark is entitled to restrain by injunction the use in Malaysia in the course of trade and without the proprietor’s consent of the trade mark which is identical with or nearly resembles the proprietor’s mark in respect of the same goods or services where the use is likely to deceive or cause confusion.

A mark may be well-known in Malaysia irrespective of whether the proprietor carries on business or has any goodwill in Malaysia.


Search


Any person may conduct a search of prior marks, either in person at the Trade Marks Office in Kuala Lumpur, or via online access to MyIPO’s PANTAS database. Official fees are payable. A search serves to check on the registrability of a proposed mark, as well its availability to be used without infringing third party rights acquired through registration.


Passing off


Unregistered trade marks, trade names, get-up and trade dress may be protected in Malaysia by an action for passing off. The TMA expressly preserves the action of passing off and remedies that may be claimed in respect thereof. Malaysian law in this area is generally similar to that of other common law jurisdictions. It has been established by local case law that the essential elements for a cause of action for passing off are goodwill, misrepresentation and damage (or the likelihood of damage).


Border measures


Another new feature of the amendments that came into force on 1st August 2001 is that on border measures. Essentially, the proprietor of a registered trade mark who objects to the importation of counterfeit trade mark goods may apply to the Registrar to impose prohibition on the importation of such goods for a period of sixty days. The proprietor must state in the application, among other things, the time and place in which the counterfeit trade mark goods are expected to be imported for the purpose of trade.

Counterfeit trade mark goods is defined to mean any goods, including packaging, bearing without authorization a trade mark which is identical with or so nearly resembles the trade mark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trade mark, and which infringes the rights of the proprietor of the trade mark under the TMA.

The provision does not extend to goods in transit.

The proprietor is required to furnish a security deposit to the Registrar sufficient to reimburse the Government for any liability or expense to be incurred in respect of the seizure of such goods, prevent abuse and protect the importer or pay such compensation as may be directed by the Court.

The proprietor must also institute an action in court for trade mark infringement within the period specified by the authorized officer (being a customs officer), failing which the goods seized shall be released to the importer and the proprietor may be subject to claims for compensation by the importer.