Breaking the frontier

Leela Baskaran explains how well-known trade marks can be protected in Malaysia

 

BACKGROUND

Traditionally, trade mark law is territorial in nature whereby a trade mark is protected if it is either registered in Malaysia or if the proprietor has established goodwill and business presence relating to the trade mark in Malaysia.

 

The Paris Convention for the Protection of Industrial Property (hereinafter “the Paris Convention”) provides for the protection of well-known trade marks. Member countries are required to refuse or to cancel the registration and to prohibit the use of a trade mark which constitutes a reproduction, imitation or translation liable to cause confusion of a mark considered by the competent authority of the country of registration or use, to be well-known in that country as being already the mark of a person entitled to the benefits of the Convention and used for identical or similar goods.

 

Malaysia acceded to the Paris Convention on June 23rd 1988 and introduced protection of well known marks through the Trade Marks Amendment Act 2000 which came into effect on 1st August 2001 (hereinafter “the Amendment Act”).

 

 

WHAT IS A WELL-KNOWN TRADE MARK?

The Amendment Act, in line with the Paris Convention, provides for protection of marks which are well-known in Malaysia. However in order to determine whether a mark is well-known in Malaysia the international use of and reputation in the mark can be taken into consideration. Regulation 13B of the Trade Mark Regulations 1997 specifically provides the following criteria to be taken into account in determining whether a mark is a well-known mark:

 

  1. (a) the degree of knowledge or recognition of the mark in the relevant sector of the public;
  2. (b) the duration, extent and geographical area of any use of the mark;
  3. (c) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the mark applies;
  4. (d) the duration and geographical area of any registrations, or any applications for registration, of the mark to the extent that they reflect use or recognition of the mark;
  5. (e) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well-known by competent authorities;
  6. (f) the value associated with the mark.

 

This goes beyond the traditional protection of the local goodwill in a trade mark which requires proof of use of the mark and business presence in Malaysia to protection of marks which by reason of foreign use and reputation have become well-known in Malaysia. Section 70B (3) of the Trade Marks Act 1976 inserted by the Amendment Act expressly provides that a well-known mark is a mark which is well-known in Malaysia as being the mark of a person whether or not that person carries on business, or has any goodwill, in Malaysia.

 

 

THE SCOPE OF PROTECTION

Section 14(1) (d) and Section 14(1) (e) of The Trade Marks Act 1976, introduced by the Amendment Act, provide that a mark shall not be registered if it is:

  1. (i) identical with or so nearly resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor; or
  2. (ii) well-known and registered in Malaysia for goods or services not the same as those in respect of which registration is applied for if use of the mark in relation to those goods would indicate a connection between those goods or services and the proprietor of the well-known mark, and the interests of the proprietor of the well-known mark are likely to be damaged by such use.

 

Section 70B(1) of the Trade Marks Act 1976 inserted by the Amendment Act provides that 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 a trade mark which or the essential part of 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.

An interesting question for trade mark owners is whether the protection granted to well-known marks extends to goods other than their own class of goods. Section 14(1) (e) specifically prevents the registration of the mark in respect of different goods or services where the use of the mark in relation to such goods or services indicate a connection between those goods or services and the proprietor of the well-known mark. This means that the trade mark owner’s reputation extends beyond his own class of goods to cover other classes of goods as well. However the prohibition on use in Section 70B(1) is limited to use in relation to the same goods or services.

 

Another interesting question is whether protection extends to “imitation marks” which were applied for or being used prior to the coming into force of the Amendment Act. There is no express provision giving retrospective effect to the provisions prohibiting registration of imitations of well-known marks, in the absence of which, based on the general rules of interpretation, it is unlikely that retrospective effect will be given to the said provisions.  It should be noted that Section 70B(2) expressly provides that the right to seek injunctive relief under Section 70B(1) shall not affect the continued bona fide use of a trade mark which began before the commencement of the Amendment Act.

The provisions relating to well-known marks have not yet been tested in the Malaysian courts.

 

 

WHAT CAN THE PROPRIETOR OF A WELL-KNOWN TRADE MARK DO?

The Amendment Act does not provide for any regime of registration for well-known marks, or for the issuing of any authoritative list or collection of such marks by the Intellectual Property Corporation of Malaysia (MyIPO) or any other authority. This is perhaps something which can be recommended for the future.

 

However the existing trade mark regime does provide for registration of Defensive Trade Marks which to some extent provides a similar level of protection. The purpose of registration of a defensive trade mark is to enable the proprietor of a well-known invented word mark to defend the reputation of the mark against someone who trades on the reputation by using it on goods with which the proprietor has no connection. The defensive registration allows the proprietor to take infringement action against such unauthorized use.

 

In order to obtain a defensive registration the applicant must establish the following:

 

  1. (i) the mark consists of an invented word;
  2. (ii) the mark has an established reputation for certain goods for which it is already registered (the defensive registration will be associated with this registration and the defensive registration can only survive so long as the ordinary registration is also maintained);
  3. (iii) the use of the mark on other goods is likely to cause consumers to think wrongly that it indicates a trade connection with the proprietor of the well-known mark;

 

A defensive registration cannot be cancelled or removed on grounds of non-use. This is one of the main advantages of the defensive registration over an ordinary registration.

 

An application for a defensive registration must be accompanied by a statement of case setting out the full particulars of the facts on which the applicant relies in support of his application which is verified by a Statutory Declaration.

 

The examination of the application by MyIPO will involve a search of all international classes and all prior registrations found in any class will be associated with the defensive registration. Once the defensive registration is granted it can be cited against the application by another proprietor for a resembling mark for goods of the same description as those of the defensive registration.

 

The difficulty in obtaining a defensive registration is establishing the last requirement set out above i.e. to show that that use of the mark on unrelated goods would indicate a trade connection to the proprietor of the mark. The English case of Ferodo T.M. (1945) 62 R.P.C. 111 sets out the standard of proof as follows:

 

  1. (i) It is not sufficient for the applicant to show that his mark was widely known; he must also show that its past use for specific goods would lead to the belief that its use on other goods would indicate a trade connection with the proprietor of the mark;
  2. (ii) The expression “would be likely to be taken as indicating a connection in the course of trade” does not imply that the standard is lower than the usual provision of “likely to deceive or cause confusion”;
  3. (iii) Defensive registration is not confined to goods of the same description as those for which the mark is already registered, but the onus on the applicant is easier to discharge when the goods for which defensive registration is sought are of a similar nature to those for which it had been used; and
  4. (iv) Generally the evidence in support of such an application should include evidence from persons trading in articles of the class for which registration is sought, showing inter alia the importance attached to brands and names in such trades, and what would be their own belief if they saw the mark used for such articles.

 

 

CONCLUSION

In the increasingly globalised economy of today, the traditionally territorial nature of trade mark protection is simply not a realistic or practical option. Our trade mark laws require further amendments to provide better protection of well-known marks including provisions for a regime for registration or issuance of an authoritative listing of well-known marks. However, we have taken several steps in the right direction and it will be interesting to see how MyIPO and the courts apply this new landscape of trade mark protection in the coming years, as much will depend on the standard of proof required by the above forums for establishing that a mark is well-known.

 

 

Leela Baskaran ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

 
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