Trade Marks 2022 Comparisons

Effective 27 December 2019, the new Trademarks Act 2019 (TMA) and the Trademarks Regulations 2019 (TMR) govern the rights in trade marks. Case law provides further guidance and relevant principles.

In “Malaysia Specialist Intellectual Property and Construction Courts: Practice and Procedure”, Lim Chong Fong J said, "The new TMA only came into force on December 27, 2019 and thus it is likely that the TMA 1976 will still be relevant for a while. That notwithstanding, the statutory and underlying jurisprudence of the repealed TMA 1976 provisions should still be cogent, save where the new equivalent provisions in TMA are substantially worded differently".

A member of the World Trade Organization (WTO), Malaysia has followed the Agreement on Trade-Related Aspects of Intellectual Property Rights including Trade in Counterfeit Goods (“TRIPS Agreement”) since 1 January 1989. Additionally, Malaysia is a signatory to the following international treaties (“Conventions”) related to intellectual property:

• the Paris Convention for the Protection of Industrial Property;
• the Convention Establishing the World Intellectual Property Organization;
• the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
• the Protocol Relating to the Madrid Agreement.

Different types of trade marks are recognised in the TMA, 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.

Malaysia recognises unregistered/common law trade mark rights. Such recognition is also embedded in the provisions of the TMA, eg, Section 24(4).

There are specific marks protected by a statute. The Registrar of Trademarks ("Registrar") shall refuse to register trade marks consisting of a flag of a country, national emblem, emblem, insignia or royal arms unless the applicant furnishes the Registrar with the authorisation of the competent authorities or international intergovernmental organisation.

Famous, foreign marks are protected in Malaysia. A “well-known trade mark” means 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, see Section 5 of the TMA.

In determining whether a trade mark is well-known in Malaysia, the Registrar or the court shall have regard to the following criteria:

• the extent of knowledge or recognition of the mark in the relevant sector of the public;
• the duration and extent, and geographical area of any use of the mark;
• the duration and extent of any promotion of the goods or services where the mark applies and the geographical area where the promotion is carried out;
• the duration and place of registration, or duration and place of application for registration, of the mark, to the extent that they reflect use or recognition of the mark;
• the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognised as well-known by competent authorities; and
• the value associated with the mark, see Regulation 5 of the TMR.

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, See Section 76(1) of the TMA.

The proprietor may apply for injunctive and declaratory reliefs if their trade mark is misused, provided that the conditions in the TMA are met.

A proprietor may apply to the court for a declaration of invalidation of a registered trade mark on the grounds that the registered trade mark is identical with or similar to a well-known trade mark in Malaysia and the registered trade mark is registered for any goods or services which are not identical or not similar to those in respect of the well-known trade mark, see Section 76 of the TMA.

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, see Section 39(1) of the TMA.

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

The issue before the Federal Court in Low Chi Yong v Low Chi Hong [2018] 1 MLJ 175 (a case decided based on the TMA, 1976) was whether a proprietor in consenting, whether expressly or impliedly, to the use of their registered trade mark by company or a firm they are still a shareholder/director or a partner of, can be considered as having abandoned their exclusive right to the trade mark in perpetuity, even if they derive no benefit therefrom (and has withdrawn from the company).

The Federal Court held that, where the protection given to the registered trade mark owner is clearly spelt out, and as consent was never given by them to the respondents after leaving the second respondent, the principles of abandonment, estoppel, acquiescence and laches were not applicable.

Validity of Registration

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, see Section 52 of the TMA.

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, see Section 53 of the TMA.

Expungement

A trade mark may be revoked when it becomes generic or has lost its distinctiveness. When a rectification of the Register of Trademarks (“Register”) is made and a trade mark is expunged, the trade mark is deemed to have never been registered.

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 when due and the grace period has expired, trade mark rights are also exhausted, see Section 39 of the TMA.

Parallel Import

"Parallel importation" generally may not be 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 Enterprise Bhd v Nguang Chan [1992] 2 CLJ 436.

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.

Infringing marks

In Re PT Garudafood Putra Putri Jaya TBK [2019] 11 MLJ 396, the 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 TDA 2011 in respect of an infringement of a registered trade mark 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 the 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 the TDA 2011 requires 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. Notwithstanding, it is more difficult to invoke action taken by the Ministry of Domestic Trade and Consumer Affairs without a court order.

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”.

Both Sections 8 and 9 were deleted following an amendment to the TDA on 27 December 2019.

New regime

Under the new regime, the Assistant Controller may, upon the complaint by a person, conduct an investigation on any person who has committed or is committing any offence under Section 112(1) of the TMA. If the complaint is in relation to a trade mark which is not identical with the registered trade mark, the registered proprietor or licensee ought to obtain the Registrar’s verification, see Section 112(3) of the TMA. The Registrar’s verification shall be prima facie evidence in any proceedings, see Section 112(4) of the TMA.

Trade mark owners may use the symbol ® to denote that the trade mark is registered. Using the symbol without a valid registration is an offence and shall be liable to a fine not exceeding MYR10,000, see Section 104 of the TMA.

The TM symbol may be used to show that the rights in the trade mark are being claimed by the owner.

A signed deed of assignment/assignment in writing is required to assign ownership of a trade mark, see Section 64(3) of the TMA. 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 information entered into the Register includes:

• 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.

In GS Yuasa Corp v GBI Marketing Malaysia [2017] 8 MLJ 166, the Court has, on the facts of this case held that the purported assignment is sham, among others, on the ground that the assignment of two valuable trade marks is only MYR10.

A licence shall not be effective unless it is in writing and is signed by or on behalf of the grantor: Section 69(3) of the TMA.

A licence to use a registered trade mark shall be binding on every successor in title:

• except any person who, in good faith and without any notice of the licence, has given valuable consideration for the interest in the registered trade mark; or
• unless the licence provides otherwise: Section 69(4) of the TMA.

A licence to use a registered trade mark may be general or limited: Section 69 of the TMA. A limited licence may apply in relation to some goods or services or in relation to use of the trade mark in a particular 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.

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

Licensing Agreements

Different types of licences (ie, one-off licence, sole licence, non-exclusive licence) may be granted by the proprietor. A licensing agreement would typically contain:

• the term of licence (eg, fixed period or perpetual until terminated);
• the territory or locality of use;
• the scope of use, including the types of goods/services, and its extent;
• details of whether it is an exclusive or non-exclusive licence;
• control mechanism on use;
• details of the ownership of goodwill generated by the licensee;
• the right of termination; and
• default clause.

Exclusive Licence

An exclusive licence may provide that the licensee shall have the same rights and remedies (after the grant of the licence) as if the licence had been an assignment, see Section 71(1) of the TMA.

The exclusive licensee shall be entitled, subject to the provisions of the licence, to bring infringement proceedings, against any person, in their own name.

Licensee

A licensee shall be entitled (unless their licence provides otherwise) to call on the registered proprietor to take infringement proceedings which affects their interests, see Section 70(1) of the TMA.

If the registered proprietor refuses or does not take infringement proceedings within two months after being called upon, the licensee may bring the proceedings in their own name, see Section 70(2) of the TMA.

Where infringement proceedings are brought by a licensee, the licensee may not, without leave of the Court, proceed with the action unless the registered proprietor is either joined as a plaintiff or added as a defendant, see Section 70(3) of the TMA.

A registered proprietor who is added as a defendant shall not be liable for any costs in the action unless they take part in the proceedings, see Section 70(4) of the TMA.

Assignment

An assignment in writing shall remain binding between the proprietor and the assignee.

However, 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, see Section 65(2) of the TMA. If the assignment is not recorded in the Register, the assignee may not be able to establish its exclusive rights afforded under TMA.

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, see Section 65(5) of the TMA.

Licence

It is not mandatory for licence to be recorded in the Register. The advantage of such entry is that it serves as public notice of the licence if the particulars of the grant of the licence are entered in the Register, see Section 69(5) of the TMA.

See 2.2 Licensing Requirements or Restrictions.

Assignment or transmission of trade mark may be with or without goodwill, see Section 64(1) of the TMA.

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

See 2.2 Licensing Requirements or Restrictions.

The applicant may file an application for recordal of an assignment or grant of licence. However, the recordal of such assignment or grant of licence may only be reflected in the Register upon registration of the trade marks.

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

Registered trade marks are recognised as a personal or movable property and may be the subject of a security interest as other personal or movable property, see Section 62 of the TMA.

Common Law

A person can acquire common law ownership. The first user of a sign or trade mark is considered the owner of the trade mark, see Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia [2015] 6 MLJ 465; Philip Morris Brands Sarl v Goodness for Import and Export [2017] 10 CLJ 337.

TMA

The registration of 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.

See 8.5 Effect of Registration.

Registration

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, see Section 73 of the TMA.

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 the rules governing the use of the collective mark with the Registrar, see Section 72 of the TMA.

The Registrar maintains the Register, and the Register is available for public inspection, see Part III of the TMA.

It is usual practice to search for prior trade marks before applying to register a trade mark. It provides a better view as to the likelihood of their application facing objection during the registration process.

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

There is a grace period of six months for the renewal of said registration. A surcharge will be imposed for renewal made after the expiry and within the grace period. 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, see Section 39 of the TMA.

A restoration fee will be imposed for restoration of the removed registration. No renewal will be allowed after the lapse of one year from the expiry period.

A person other than the person who was registered as the proprietor of the unrenewed trade mark may apply for the registration of trade mark, see Section 40(1) of the TMA.

A registered trade mark shall not be altered in the Register except where the alteration is limited to the proprietor's name or address and such alteration shall not substantially affect the identity of the trade mark, see Section 42 of the TMA.

“Trade mark” means 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, see Section 3 of the TMA.

“Sign” includes 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, see Section 2 of the TMA.

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

The relevant forms with the following information must be filed:

• the applicant’s name and address;
• the representation of the trade mark;
• a description of the goods or services; and
• a declaration, among other, that the applicant is the bona fide proprietor of the trade mark and that the details in the form is true.

The TMA does not require an applicant uses its mark before registration is issued.

However, once the trade mark is registered, the proprietor is required to use the registered trade mark to avoid the risk of revocation by court on the basis of non-use.

Up to six trade marks can be filed as a series where the trade marks resemble each other in material particulars, and differ only in a form (namely, statements or representations as to the goods or services, or as to number, price or quality; standard fonts which does not substantially affect the identity of the trade marks; or colour), see Section 21 of the TMA and Regulation 38 of the TMR.

Prior rights are considered during the examination of applications. Apart from the grounds as briefly summarised in 4.9 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, see Section 24 of the TMA.

Third parties have the right to participate in registration proceedings; any person may initiate opposition proceedings by filing a notice of opposition during publication of the trade mark application.

If a person did not initiate an opposition proceedings when the trade mark is published for opposition, that person could still apply to invalidate the trade mark, see Yong Teng Hing B/S Hong Kong Trading Co v Walton International Ltd [2012] 6 CLJ 337; Ho Tack Sien v Rotta Research Laboratorium S.P.A [2015] 4 CLJ 20; and Rolls-Royce Plc v Saujana Hotel Sdn Bhd [2019] 1 LNS 815.

At the request of the applicant, 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, see Section 33 of the TMA.

It is also possible for the registered proprietor 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, see Section 43 of the TMA.

Further, a registered trade mark may be:

• voluntarily cancelled by the registered proprietor, see Section 44 of the TMA;
• revoked by the Registrar, see Section 45 of the TMA;
• revoked by the High Court due to non-use upon application by an aggrieved person, see Section 46 of the TMA; or
• invalidated by the High Court upon application by an aggrieved person on various grounds, see Section 47 of the TMA.

An applicant or registered proprietor may apply for the application or registration to be divided into two or more separate applications or registrations, see Section 37 of the TMA and Regulation 39 of the TMR.

The application for division shall be in the prescribed form and 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; and
• 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.

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.

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, see Section 47 of the TMA.

The TMA 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: Sections 23 and 24 of the TMA.

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

• 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;
• has become customary in the current language of the territory;
• is the sign consists exclusively of:
1. the shape from the nature of the goods;
2. the shape of goods necessary for technical result; or
3. the shape which gives substantial value to the goods;
• is to deceive or mislead the public as to the nature, quality or geographical origin of the goods/services;
• contains any scandalous or offensive matter or not be entitled to protection by any Court of law;
• is or might be prejudicial to the interest or security of the country;
• contains of the name or representation of another person (living or dead);
• contains of flag of a country, national emblem, emblem, insignia or royal arms;
• contains of a word which is commonly used as or is the accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, or which is declared by the World Health Organization as an international non-proprietary name or which is deceptively similar to such name unless it is used:
1. to denote only a brand or to make the element or compound of the proprietor as distinguished from the element or compound as made by others; and
2. in association with a suitable name or description open to public use; or
• contains of the word "Patent", "Patented", "By Royal Letters Patent", "Registered", "Registered Design", and "Copyright" or words to the like effect in any language.

Examples of relative grounds for refusal, includes:

• identical with an earlier trade mark for identical goods;
• identical with an earlier trade mark for similar goods/services, if there exist a likelihood of confusion on the part of the public;
• similar to an earlier trade mark for identical/similar goods/services, if there exist a likelihood of confusion on the part of the public;
• amount to tort of passing off; or
• infringe an earlier right of anyone, including under copyright or industrial designs.

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

• the Intellectual Property Corporation of Malaysia (IPCM) 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 to show use of the trade mark and to establish that the trade mark has acquired distinctiveness.

After considering the applicant’s response, the Registrar shall either accept or refuse to 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 the written grounds from the Registrar. The applicant may subsequently file an appeal to the High Court within one month from the date the Registrar’s written decision.

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

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.

With the enforcement by the TMA on 27 December 2019, Malaysia is now part of the Madrid system. Part XII of the TMA provides for international matters relating to the Madrid Protocol.

Any person may, within two months from the date of any publication in the Journal of Trade mark, file and serve a notice of opposition, see Section 35 of the TMA and Regulation 23 of the TMR.

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

See 4.10 Remedies against the Trade Mark Office.

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 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.

Briefly, the opposition procedure is as follows:

• the opponent shall file and serve a notice of opposition with grounds;
• the applicant shall file and serve a counter statement with grounds;
• the opponent shall file and serve evidence (ie, statutory declaration);
• the applicant shall file and serve evidence (ie, statutory declaration);
• the opponent may file and serve evidence in reply (ie, statutory declaration);
• the Registrar shall give a notice to the parties to submit written submissions; and
• upon filing the parties’ written submission, the Registrar shall communicate their decision and the grounds of decision, see Section 35 of the TMA.

A decision of the Registrar in opposition proceedings is appealable to the High Court, see Section 35(10) of the TMA. Such an appeal shall be made within one month from the date the Registrar’s written grounds.

There is no time limitation to revoke a registered trade mark.

However, 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 for limited exception, see Section 53 of the TMA, see 1.6 Exhaustion of Trade Mark Rights.

For non-use cancellations, such application may only be filed within three years following the date of issuance of the notification of registration, see Section 46(1) of the TMA.

Revocation by Court

The High 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/services for which the trade mark is registered has been suspended for an uninterrupted period of three years, and there are no proper reasons for non-use;
• where the trade mark has become diluted in the market because of acts or inactivity of the registered proprietor; 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, see Section 46 of the TMA.

Invalidation by Court

The Hight Court may invalidate a registration, upon application by an aggrieved person, on the ground that the registered trademark contravene Sections 23 and/or 24 of the TMA (ie, absolute and/or relative grounds for refusal), see Section 47 of the TMA.

See 4.9 Refusal of Registration.

Only an "aggrieved person" may apply for revocation based on non-use of registered trade marks or the invalidation of the registration. This may include a person who has used their mark as a trade mark, or who 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, see McLaren International Ltd v Lim Yat Meen [2009] 5 MLJ 741.

It cannot be a third party who is a "mere busybody". The person must have a legal interest, right, or legitimate expectation which is substantially affected by the presence of the registered mark, see Mesuma Sports Sdn Bhd (supra).

Revocation by the Court on the Basis of Non-use (Section 46 of the TMA)

The High Court may revoke a registration upon application by an aggrieved person, see 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding.

Invalidation by Court (Section 47 of the TMA)

The High Court may invalidate a registration upon application by an aggrieved person, see 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding.

Revocation by Registrar (Section 45 of the TMA)

The Registrar shall revoke the registration of a trade mark due to administrative error, eg:

• 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.

Voluntary Cancellation

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/services.

Revocation by Registrar

The Registrar shall revoke the registration of trade mark:

• due to administrative error (for example, in cases where the Registrar failed to take into account the opposition or an application extension of time for filing opposition to the registration filed within the prescribed period), the Registrar failed to take into account the application for extension of time in deciding to register the trademark; revocation may be made within one month from becoming aware of the error;
• where it is reasonable to do so, taking into account:
1. any relevant obligations of Malaysia under an international agreement or convention;
2. any special circumstances making it appropriate; and
3. such revocation is made within 12 months from the date of registration of trade mark, see Section 45 of the TMA.

Before the revocation of the trade mark, the Registrar shall give a notice of the proposed revocation to the registered proprietor of the trade mark; and any person recorded under TMA as claiming a right in respect of, or an interest in, the trade mark. The relevant person must be given an opportunity to be heard.

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 for the Registrar’s grounds of the decision, upon which they may appeal to the High Court.

Revocation by Court

In proceedings for revocation before a High Court, where grounds for revocation exist in respect of some of the goods/services for which the trade mark is registered, revocation shall relate to those goods/services only.

Similarly, in the case of invalidation by the High Court under Section 47 of the TMA, partial invalidation is possible.

There are no specific provisions for amendment during revocation/cancellation proceedings.

Any party may apply to consolidate infringement and revocation matters to 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.

Any person who makes or causes to be made a false entry to the Trade Marks Office or in the Register commits an offence and shall, on conviction, be liable to a fine or to a term of imprisonment.

Similarly, an offence is committed by any person who:

• imports into Malaysia for the purpose of trade or manufacture;
• sells or offers or exposes for sale; or
• has in their possession, custody or control for the purpose of trade or the manufacture of any goods to which a registered trademark is falsely applied.

Any aggrieved person may also filed an invalidation proceedings in High Court to declare the fraudulent mark as invalid, see Section 47 of the TMA.

The timeframe for infringement proceeding is six years from the accrual of cause of action, ie, the act of infringement.

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

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

The plaintiff may bring claims for dilution and cybersquatting.

Trade Mark Infringement

Acts amounting to infringement of registered trade mark, includes:

• a person who, without the consent of the registered proprietor, uses a sign in the course of trade:
• which is an identical sign with the registered trade mark for identical goods/services;
• an identical sign with the registered trade mark for similar goods/services resulting in the likelihood of confusion on the part of the public; or
• a sign similar with the registered trade mark for identical or similar goods/services resulting in the likelihood of confusion on the part of the public.

In the determination of an infringement of a mark, other than ocular examination, the likelihood of confusion from amongst the public of average intelligence and imperfect memory must be given equal weight by the court. In comparing marks the proper course is for the courts to look at the combination of those that are common to the trade, vis-à-vis disclaimers, together with the essential features, "their arrangement and their insertion in the impugned mark so as to make the whole so similar to the registered mark of the plaintiff as to be calculated to confuse and/or deceive": Ortus Expert White Sdn Bhd v Nor Vanni Adom [2021] 1 LNS 2350.

Tort of Passing Off

The test of passing off, in brief, includes:

• whether the plaintiff has goodwill or reputation attached to the goods or services;
• whether the defendant has misrepresented to the public in the course of trade which leads or is likely to lead the public to believe that the defendant's goods or services are those of the plaintiff; and
• whether the plaintiff must prove that they suffer, or are likely to suffer damage.

See, eg, Seet Chuan Seng & Anor v Tee Yih Jia Food Manufacturing Pte Ltd [1994] 3 CLJ 7; Telekom Malaysia Berhad v CA Multimedia Sdn Bhd [2019] 1 LNS 2005; and Philip Morris Brands Sarl v Goodness for Import and Export & Ors [2017] 10 CLJ 337.

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

Section 63(5) of the TMA allows joint proprietors to bring an infringement proceeding in their own names. However, one may not, without the leave of the High 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, see Section 70 of the TMA.

Unless a trade mark is registered, a plaintiff cannot initiate an action based on trade mark infringement. The plaintiff may however apply for an injunction based on common law rights.

A representative action for trade mark proceedings is possible provided:

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

There is no prerequisite to filing a lawsuit.

The TMA has introduced a groundless threat provision. This provision enable a person to initiate a proceeding seeking for declaration that the allegation of infringement is unjustifiable. This remedy is available to any person other than for cases involving infringement of a registered trade mark by:

• the application of the trade mark to goods or packaging goods;
• the importation of goods to which the trade mark has been applied; or
• the supply of services under the trade mark may bring proceedings for relief, see Section 61 of the TMA.

A lawsuit is initiated by filing a writ and statement of claim or Originating Summons. The remedy or relief being sought must be specifically prayed for.

In brief, every pleading shall:

• contain the particulars of the parties;
• contain a summary of the material facts, documents, but not the evidence;
• contain matters 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;
• contain matters that has arisen at any time, whether before or since the issue of the writ;
• raise any point of law;
• 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; and
• contain the relief or remedy that the plaintiff claims, but costs need not be specifically claimed.

A party shall not, in any pleading:

• make an allegation of fact or raise any new ground or claim inconsistent with a previous pleading; or
• quantify any claim or counterclaim for general damages.

Pleadings play an important role in a court proceedings. For example, in a case where the defendant relies on the defence of honest concurrent use, their failure to plead the defence may mean that the point cannot be argued or canvassed in court, see Munchy Food Industries Sdn Bhd v Huasin Food Industries Sdn Bhd [2021] 10 CLJ 329.

Amending Pleadings

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.

In Hong Leong Finance Bhd v Low Thiam Hoe [2015] 8 CLJ 1, the Federal 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;
• there has to be a cogent and reasonable explanation as to why the application was filed late;
• the application cannot be a tactical manoeuvre; and
• that the proposed amendment must disclose full particulars for the court to ascertain if there is a real prospect of success.

A defendant in a trade mark action can initiate a lawsuit in response by way of a counterclaim in addition to their defence. A counterclaim is treated as separate claim.

The High Court has jurisdiction to hear trade mark matters, such as trade mark infringement, passing off, revocation and invalidation of registered trade marks. There is a specialised Intellectual Property High Court in certain States that hears IP disputes. 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 with leave from the Federal Court.

Legal Representation for Parties

Parties may sue or carry on proceedings in court by a solicitor or in person. However:

• a body corporate/company must be represented by a solicitor; and
• a person lacking capacity (a minor or patient suffering from mental illness or declared to be mentally disordered under the Mental Health Act 2001) must be represented by litigation representative.

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

The validity of the plaintiff’s trade mark registration may be challenged by a potential defendant, see 4.6 Revocation, Change, Amendment or Correction of an Application.

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”, see LB (Lian Bee) Confectionary Sdn Bhd v QAF Ltd [2012] 3 CLJ 661.

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.

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

Certain applications to the High Court, including appeals, shall be filed with the Registry of the High Court. This ensures that all the necessary information is recorded by the Registrar.

Cases are determined by judges and parties have no influence on who the judge is.

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.

A person who applies a registered trade mark to any material used or intended to be used for labelling or packaging goods or uses a sign in advertising or on any document shall be treated as a party who uses the material which infringes the registered trade mark if when, they applied the trade mark, they knew or had reason to believe that the application of the trade mark was not duly authorised by the registered proprietor of the trade mark or a licensee.

In Mesuma Sports (supra), the Court of Appeal and Federal Court held that the term "trade" encompasses activities that range far beyond commercial. The plaintiff, not a profit-making organisation, may 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 (supra), the scope of "use in the course of trade" was expanded to include the transhipment of the defendant’s cigarettes itself.

For acts amounting to infringement of registered trade mark, see 7.2 Trade Mark Infringement as an Administrative or Criminal Offence.

Relevant factors include:

• 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;
• the essential features of the trade marks must also be compared, see Consitex SA v TCL Marketing Sdn Bhd [2008] 8 CLJ 444; and
• all the circumstances of the trade to be considered, see Bata Ltd v Sim Ah Ba [2006] 3 CLJ 393 and Fresenius Kabi AG v Teoh Wei Ming [2021] 1 LNS 2288.

Dilution or loss of exclusivity is recognised as a form of damage. A plaintiff may also seek transfer of a domain name (or alternatively initiate a domain name dispute resolution).

Section 48 of the TMA confers exclusive rights on the registered proprietor of trade mark to use the trade mark, and authorise other persons to use the trade mark. They have the right to obtain reliefs for infringement of their trade mark under TMA.

In addition, after five years from the date of registration, the trade mark registration shall be taken to be valid in all respects unless it is shown, among others, that the registration was obtained by fraud or became generic, see Section 53 of the TMA.

TMA provides for the defences against infringement of a registered trademark:

• the use in good faith by a person of their own name, or the name of theirs or their predecessor’s business;
• the use in good faith a sign to indicate:

1. the kind, quality, quantity, intended purposes, value, geographical origin or other characters of the goods or services;
2. the time of production of goods or the rendering of the services; and/or
3. 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 have continuously used the mark from a date before the use of the registered trade mark by the registered proprietor;
• a person uses a trade mark in relation to goods or services with express or implied consent of the registered proprietor or licensee;
• 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.

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.

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

The role of an expert is merely to assist the court in forming an opinion.

The following infringing acts may be a criminal offence under ther TMA:

• counterfeiting a trade mark, see Section 99 of the TMA;
• falsely applying a registered trade mark to goods or services, see Section 100 of the TMA;
• making or possessing an article which is designed or adapted for making copies of a registered trade mark, see Section 101 of the TMA; and
• importing or selling goods with a falsely applied registered trade mark, see Section 102 of the TMA.

The relevant procedure on investigation and enforcement of the criminal offences are provided in Part XVI.

Appointment of Controllers and Subsequent Investigations

Under TMA, 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.

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

TMA codifies injunctive relief as remedies available for registered proprietor in infringement actions. Interlocutory injunctions (including ex-parte) 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, see Keet Gerald Francis Noel John v Mohd Noor bin Abdullah [1995] 1 MLJ 193.

Upon the application of the plaintiff for an interim injunction, when the High 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, see Section 56(4) of the TMA.

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 its undertaking in damages;
• whether there is any delay; and/or
• public interest.

The TMA 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 be awarded both damages and an account of profits (attributable to the infringement that have not been taken into account in computing the damages).

The High Court may order for destruction of infringing products, see Section 58 of the TMA.

Generally, the losing party that must pay costs to the winning party, but the costs are awarded at the court's discretion.

See 9.1 Injunctive Remedies.

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. A prevailing defendant is also generally awarded costs.

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 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 they have 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.

For parallel imports, see 1.6 Exhaustion of Trade Marks Rights.

Part XIII TMA 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.

Remedies do not differ for different types of trade marks.

Parties may amicably resolve the matter at any time before judgment. It is not compulsory.

ADR is available to resolve trade mark disputes, however, it is not generally referred to due to the nature of infringement cases.

Domain name disputes are often resolved by way of arbitration due to the accessible and cost-effective platform.

A defendant may file a counterclaim for revocation. A party may apply for both matters to be heard together.

The trial court may generally dispose the disputes within nine months from the date of commencement of the action.

There is one month to file an appeal, which may be disposed within nine to six months.

The provisions for appellate procedures are the same as for all appellate civil disputes.

Appellate Courts are generally reluctant to disturb findings of fact.

Appeals to the Federal Court are limited to a review of questions of law.

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, ie, "graphic works", which are considered artistic works under the Copyright Act 1987 (CA).

See 4.9 Refusal of Registration.

Trade marks can be protected by industrial design laws, provided they are capable of distinguishing goods and services from others.

The TMA recognises product shapes or packages as trade marks.

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, see Section 55(1) of the TMA.

The Competition Act 2010 governs unfair competition in Malaysia.

On 5 April 2019, the MyCC Guidelines on Intellectual Property and Competition Law were released in respect of competition issues that may arise from matters relating to owners of intellectual property.

See 1.1 Governing Law.

Online marketplaces may be liable for trade mark infringement caused by goods from a third-party seller using its services.

See 3.1 Trade Mark Registration.