Trademark Law in Malaysia

WHAT IS TRADE MARK ?

A mark is a sign which serves to distinguish the goods or services of an industrial or a commercial
enterprise or a group of such enterprise. The sign may consist of one or more distinctive words,
letters, numbers, drawings or pictures, emblems, colors or combinations of color, or the form or other
special presentation of containers or packages for the product (provided they are not solely dictated by
their function). The sign may consist also of combinations of any of the said elements.

WHAT THE TRADE MARKS ACT 1976 PROVIDES ?

Trade mark protection in Malaysia is governed by the Trade Marks Act 1976 and the Trade Marks
Regulations 1997. The Act modeled along the Acts of some of the industrialized countries provides
effective and adequate protection for registered trade marks in Malaysia.

Although in some countries and in some situations a mark may be protected without registration, it is
generally necessary for effective protection that a mark be registered in a government office. If a trade
mark is registered, no person or enterprise other than its owner or authorized users may use it,
otherwise infringement actions can be taken against them. The protection of a trade mark is not limited
in time, provided its registration is periodically renewed, every 10 years and its use continues.
Amendments have also been made to the Trade Marks Act and Trade Marks Regulations to provide
for the registration of Service Marks.

WHAT IS THE DIFFERENCES BETWEEN COPYRIGHT, PATENT AND TRADE MARK ?

Trade mark is different from copyright and patent. A copyright provides protection for an artistic or
literary work. A patent provides protection for an invention. Unlike copyrights and patents, trade marks
rights can last indefinitely, if the trade mark continues to be used.

WHO CAN REGISTER A TRADE MARK ?

Only the owner of the trade mark can register the trade mark. The owner can be an individual,
partnership or a company.

WHAT SHOULD I DO TO FILE FOR AN APPLICATION ?

Please refer to our form section under Intellectual Property - Trade Mark Forms for further information
and sample of corresponding forms.

WHAT SHOULD TRADE MARKS BE REGISTERED ?

It provides exclusive rights of the user of the trade mark for the goods services which was applied for
registration. The registration is an evidence to the owner or the registered proprietor of the trade mark
to claim exclusive rights to the use of the trade mark in Malaysia.

WHAT TYPES OF TRADE MARKS CANNOT BE REGISTERED ?

If the representations contain the following, a trade mark will not registered :

• His Majesty the Yang Di Pertuan Agong

• Their Royal Highnesses the Sultans
• Their Excellencies the Yang DI Pertua Negeri
• National Flower and Mosque
• Royal Imperial Arms, Crests or Insignia
 • Red Crescent, Geneva Cross and other representations of the Red Crescent, the Geneva and
other crossed in red
• Swiss Federal Cross in white or silver on a red ground or such representations in similar
colour or colours

In addition, trade marks cannot contain the following words (in any language)

• Red Crescent
• Geneva Cross
• Royal
• Imperial
• Any wording which would amount to a false trade description or which would cause confusion
with a previously registered mark.
• Any wording which is scandalous or offensive
• Any wording which would create the impression the applicant has or recently had Royal
authorization or patronage, regardless of whether it is true.

Trade marks will not be registered if they consist only of :

• Numbers, letters or full names in plain lettering

• Names of geographic locations
• Shapes of the product
• Words which describe the goods

HOW LONG IS THE TERM OF REGISTRATION ?

Trade mark registration is valid for 10 years from the date of the application. An application for renewal
of registration may be made at the end of the ten years period and thereafter every ten years.

WHAT IF THE TRADE MARK IS ASSIGNED ?

If the trade mark is acquired by assignment, either during the pendency of the application or after
registration has issued, a copy of the assignment must be filled with the Registry.

WHAT IF THE APPLICANT'S NAME OR ADDRESS CHANGES ?

Please refer to our form section under Intellectual Property - Trade Mark Forms for further information
and sample of corresponding forms.

MAY I CONDUCT A SEARCH BEFORE A TRADE MARK APPLICATION IS FILE ?

Yes, an applicant may check to see if there are previously registered trade marks or trade marks that
are pending before the Registry which are similar to the mark it seeks to register. This may be done at
the Registry in Kuala Lumpur.
Intellectual Property Division,
Ministry of Domestic Trade and Consumer Affairs
32nd Floor, Menara Dayabumi
Jalan Sultan Hishamuddin
50622 Kuala Lumpur,

http://www.lawyerment.com.my/intellectual/trademark.shtml

http://www.lawyerment.com/library/kb/Intellectual_Property/Coypright/

http://www.lawyerment.com/library/kb/Intellectual_Property/Industrial_Design/
United Kingdom trade mark law

A trademark is a way for one party to distinguish themselves from another. In the business world, a
trademark provides a product or organisation with an identity which cannot be imitated by its
competitors.

A trademark can be a name, word, phrase, logo, symbol, design, image, sound, shape, signature or
any combination of these elements.[1]

Conferred rights

The owner of a trademark can legally defend his mark against infringements. In order to do so, the
trademark must either be registered, or have been used for a period of time so that it has acquired
local distinctiveness (Prior Rights).

The extent to which a trademark is defendable depends upon the similarity of the marks involved, the
similarity of the products/services involved and whether the trademark has acquired distinctiveness.

A registered trademark is relatively simple to defend in a court of law. An unregistered mark relies on
the law of ‘passing off’ (where one parties’ goods/services are misrepresented so as to cause
confusion between it and another good/service).

Rights have also been recently extended with regard to well-known marks.

The Trade Marks Act 1994 states that "a person infringes a registered trade mark if he uses in the
course of trade a sign which is identical with the trade mark in relation to goods or services which are
identical with those for which it is registered" (section 10(1) of the Act). A person may also infringe a
registered trade mark where the sign is similar and the goods or services are similar to those for which
the mark is registered and there is a likelihood of confusion on the part of the public as a result
(section 10(2)).

A person also infringes a registered trade mark where a sign is identical but the goods are dissimilar if
the trade mark has a reputation in the UK and its use takes unfair advantage of, or is detrimental to,
the mark’s distinctive character or reputation (section 10(3)).

Registering trademarks

The registration of trade marks in the UK is achieved through the UK Intellectual Property Office. If
registration is accepted by the UKIPO, a number of exclusive rights are bestowed upon the trade mark
owner. These rights allow the owner to prevent unauthorised use of the mark on products that are
identical or similar to the registered mark.

When a trade mark application is made to the UKIPO, it examines the application to decide whether
the trade mark that is being applied for is distinctive enough to be a trade mark.

Registration usually takes about nine months. However, this time span can be greatly increased if any
objections are raised to the marks registration by owners of similar registered trademarks or by the
UKIPO themselves.

Once a trademark is registered, it will be held on the register for ten years, after which it will need to be
renewed in order to preserve the owner rights over it. It can also be allowed to lapse.

Trade marks are registered in one or more of 45 classes. There are 34 classes of goods and 11 for
services. These classes group products that are deemed to be similar in function, and are identified by
their number. For example, the registration of a trademark for a range of gymnastic and sporting
articles is classified by the trademark registry into ‘class 28’. This class also encompasses decorations
for Christmas trees!

Registrability of a trademark

Some of the main objections that the UKIPO will make when trade marks are submitted for registration
are usually related to the 'distinctiveness' of the mark.

An inherently distinctive mark is the easiest to register, as it has no prior meaning. These marks are
not to be found in dictionaries. A good example of such a distinctive trademark is iPod.

Words that appear in the dictionary can still be registered. These arbitrary trade marks are
meaningless in the context of their use. For example Apple Computer, or Apple Corps.

Suggestive trade marks do not describe a characteristic of the product, but with some imagination, are
identifiable with their connected product. For example, ColdSeal windows.

Descriptive marks use words that appear in the dictionary that describe the product to which they
relate. They are usually difficult to register, and the registrar needs to prove that the mark has become
distinctive through its long term use. An example of such a descriptive mark is 'Brand Protect', a brand
belonging to the leading intellectual property protection firm. Such a mark is said to describe the
service in which the firm specialises.

Descriptive marks can be made distinctive by the addition of other elements to the name or logo. For
example, the words ‘Brand Protect LLP’ written alongside the firm’s distinctive ‘elephant’ logo
collectively could be described as distinctive, as this combination is unique to this firm.

Acquired distinctiveness

A descriptive mark can only be registered if it has ‘acquired distinctiveness’. This is achievable through
its use, although proving that ‘acquired distinctiveness’ has been achieved usually relies on sales
figures and advertising budgets.

Registration exclusions

Most countries exclude certain terms and symbols from being registrable. These include emblems,
flags, royal insignia, and the rings of the Olympic Games. In addition, marks that are deceptive as to
the country of the product’s origin and obscene marks are unregistrable.

Historical legislation

In 1862 the Merchandise Marks Act made it a criminal offence to imitate another's trade mark 'with
intent to defraud or to enable another to defraud'. In 1875 the Trade Marks Registration Act was
passed which allowed formal registration of trade marks at the UK Patent Office for the first time.
Registration was considered to comprise prima facie evidence of ownership of a trade mark and
registration of marks began on 1 January 1876. The 1875 Act defined a registrable trade mark as 'a
device, or mark, or name of an individual or firm printed in some particular and distinctive manner; or a
written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'.
However, any word or name that was in use as a trade mark before the passing of the Act (in August
1875) was entitled to registration, whether or not the mark fulfilled these criteria.[2]

In 1883 the Patents and Trade Marks Act substantially revised trade mark law, reducing the cost of
application, and included the facility to register 'fancy words not in common use' and 'brands' as new
marks for the first time.[3] Further major trade mark acts were passed in 1888 and 1905 (which both
further refined definitions of a trade mark), 1919 (which separated the trademark register into Parts A
and B, each of which had different registration criteria) and 1938, the last of which remained in force
until it was superseded in 1994.

Recent legislation

The current United Kingdom Trade Mark legislation is the Trade Marks Act 1994, which implements
the European Trade Marks Directive into national law.

The UK Intellectual Property Office radically altered the way UK national trade mark applications were
examined in October 2007. Previously, UK national trade mark applications underwent a full
examination both on absolute (distinctiveness) and relative (prior rights) grounds. In October 2007, the
search which formed a part of the examination of applications on prior rights grounds became an
advisory search in a similar fashion to the Community Trade Mark system, bringing into force Section
8 of the Trade Marks Act 1994. No longer will the UKIPO unilaterally be able to prevent the grant of a
UK national trade mark application on the basis of an earlier pending application or prior registration
for a conflicting mark. Instead, it will be up to the proprietor of that right to oppose the application when
it advertised for opposition purposes, although the UKIPO will still advise owners of conflicting
application where citations including their marks have been sent to the applicant to assist them in
making an opposition.

A fast-track application process has also been available to applicants since the 7th April 2008. [1]

Aspects of UK common law also relate to trade marks, most notably the common law tort of passing
off.