During the late 18th and 19th centuries, Great Britain established colonies and protectorates in the area of current Malaysia. They were occupied by Japan from 1942 to 1945. In 1948, the British-ruled territories on the Malay Peninsula formed the Federation of Malaya, which became independent in 1957. Malaysia was formed in 1963 when the former British colonies of Singapore and the East Malaysian states of Sabah and Sarawak on the northern coast of Borneo joined the Federation. The first several years of the country's history were marred by Indonesian efforts to control Malaysia, Philippine claims to Sabah, and Singapore's secession from the Federation in 1965.
Who May Apply?
In Malaysia, the first user or a party who has a bona fide intention of using a mark (whether a Malaysia citizen or not) is entitled to apply for registration of the mark. Application may also be made by a party who does not himself intend to use the mark if: (1) the trademark application is accompanied by evidence of a registered user application or (2) the applicant can show that she intends to assign the mark for use to a new corporation or one that is to be incorporated.' In the latter case, the registration ceases unless the corporation is then registered as the new proprietor within six months of the filing date.
In the case of registered users, any party who is not the registered trademark proprietor may be registered as a registered user of that mark for some or all of the goods or services for which the mark is registered (with the exception of a defensive trademark). The terms of such a user agreement is decided upon by the parties to the agreement and may be with or without conditions and for the desired duration. Jointly owned trademarks are possible provided that none of the
applicants are exclusively entitled to use the trademark except on behalf of both or all of them or in relation to goods or services with which both or all of them are connected in the course of trade. A person who has filed a trademark application in Malaysia has a right to claim priority for the Malaysia application for the same trademark, for some of all of the goods or services, for six months from the filing date of the Malaysian application in other Convention countries. The reverse applies so a filing in other Convention countries confers upon the applicant the first right to claim his or her application of the same mark in Malaysia within six months from the date of the foreign Convention country filing. This precludes third parties from securing trademark rights through usage or application for the same mark during the above mentioned six-month priority period.
What Can Be Registered?
A registrable trademark (other than a certification mark) must contain or consist of at least one of the following:
(1) The name of an individual, company or firm represented in a special or particular manner.
(2) The signature of the applicant for registration or of some predecessor in his business.
(3) An invented word or words.
(4) A word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname.
(5) Any other distinctive mark.
Only one of the five requirements above need to be met in order for the mark to be registrable.
The amended 1976 Act now allows for all trademarks to be entered on a single Register and with a single standard to determine the distinctiveness of the trademark for registration purposes. The test is now whether or not the mark in question is 'capable of distinguishing' the goods or services of one trader from another, and the new section 10(2)(B) of the amended 1976 Act provides the relevant factors for considering this. These factors include the extent to which:
(1) the trademark is inherently capable of distinguishing (i.e. by 'nature'); and (2) by reason of the use of the trademark or of any other circumstances,
the trademark is in fact capable of distinguishing (i.e. by "nurture").
Hence the standard for registrability of a mark appears to be lowered given that the stress is now placed on the potentiality of the mark to distinguish whether the mark may be nurtured to function as a distinguishing trademark. The old standard of "inherently adapted to distinguish" applies for applications filed before 1 August 2001 but new applications filed after 1 August 2001 will be examined using the "capability of distinguishing" criteria.
The Registry may require a disclaimer to any part of a trademark if it feels that the Applicant should not have an exclusive use to that part of the mark in question.
In an application of a mark using the name or representation of a living or dead person, the applicant will need to obtain the consent of that person or its legal representative as the case may be, before permitting the name or representation to be used as a trademark. In application for a mark containing word or words which are not in English or Bahasa Malaysia, the applicant must provide an exact translation of the word or words and the name of the language.
What Cannot Be Registered?
Registration of a mark or a part of the mark may be prohibited where the use is likely to deceive or cause confusion to the public or be contrary to law; if it contains scandalous or offensive matter, or matters otherwise not entitled to protection by any court of law; or which is perceived by the Registrar to be prejudicial to the interest or security of the nation; or if it is identical or similar to a "well-known" mark in Malaysia for the same goods or services of another proprietor; or if it is "well-known" and registered in Malaysia for dissimilar goods or services to those for which registration is applied for provided that such use of the mark would indicate a connection between those goods or services and the proprietor of the "well-known" mark whereby the interests of the latter are likely to be damaged by such use.
Section 14 also prohibits registration of a mark or part of a mark that contains or consists of a geographical indication for goods not originating in the territory indicated, if the use of such marks is of such a nature as to mislead the public as to the true place of origin of the goods. Marks for wines or spirits which contain or consist of a geographical indication identifying wines or spirits not originating in the place indicated by the particular geographical indication are similarly pr~hibitedS.u~c h geographical indication marks will however not be refused registration if it is a bona fide application or if the applicant or its business predecessor had continuously traded under the mark in good faith either before the commencement of the Geographical Indications Act 2000 or before the particular geographical indication was protected in its country of origin; or where the geographical indication has either ceased to be protected or fallen into disuse in its country of origin. Registration will also be refused for applications containing or consisting of marks identical or similar to the 'words in English or another language and which refers to the meaning or words 'Patent', 'Patented', 'By Royal Letters Patent', 'Registered', 'Registered Design' and 'Copyright'; and any mark officially declared to be prohibited.
Examples include 'His Majesty the Yang Dipertuan Agong', 'Her Majesty Raja Permaisuri Agong', 'the Royal Highness Sultans Dan Their Excellencies Yang Dipertuan Negeri', Royal or Imperial Crowns, Arms, Armorial bearings, insignia, Crest, Red Crescent, Geneva Cross in red and Swiss Federal Cross in white or silver on red grounds, and words or representation of ASEAN. The amended 1976 Act also provides that no notice of any trust, express, implied or constructive can be entered in the Register. The Registrar will not, however, refuse to register a mark which is identical or confusingly similar to an earlier trademark if the later applicant can show that the later mark has been used continuously by him or his predecessor in title from a period before the date of the first use or date of registration by the registered proprietor or his predecessor in business, whichever is earlier. Similarly a mark will not be refused registration if the later applicant can show honest concurrent use of a mark which is identical or confusingly similar to an earlier registration for the same goods or services, subject to any such conditions, amendments, modifications or limitations as the Court of Registrar may deem fit.
Pursuant to Section 20 of the 1976 Act duly amended (the honest concurrent user provision earlier discussed) or in special circumstances (see 'Transitional provisions7 above), the Registrar may allow for registration of an identical or aconfusingly similar mark for the identical or same description of or closely related goods or services, subject to any conditions, amendments, modification or limitations as the High Court of the Registrar sees fit if the later applicant or its
predecessor in business had continuously used that trademark from a date before the use andlor the registration of the registered proprietor or his business predecessor. In Malaysia, the first to use. (as opposed to the first to file) a particular trademark, has the first rights to the mark. Consequently, if a third party can prove that it or its predecessors in business has used the mark before another trademark applicant for the .same mark, then it would be a potential barrier to the registration of the later mark.
Any person claiming to be the proprietor of a particular trademark may apply to register the said mark.
There is no requirement for a trademark applicant to file its trademark application through a trademark agent. A local applicant could file an application by himselfierself although it is recommended that it engages the assistance of an agent especially during the prosecution of the application. Foreign applicants require an address for service in Malaysia when applying to register a mark and the general Malaysian Trademarks Registry practice is to require overseas applicants to apply through a local trademark agent.
Documents required :
- Form TM5 (Application for Registration of a Mark or a Certified or Defensive Trademark);
-Form TM1 (Authorisation of Agent), to be simply signed by the applicant or its authorized signatory;
- a Statutory Declaration to be executed by the applicant or its authorized signatory before a Commissioner for Oaths (in Malaysia) or before a notary public (in any other country) to declare that the applicant is the owner of the proposed trademark;
- five prints of the trademark intended;
-the prescribed official fee of Ringgit Malaysia (RM) 250.00 (with an additional RM 30.00 if an agent is appointed); and
- if convention priority is claimed within the above prescribed time frame, then the relevant certified true copy of the priority document is also required, preferably within 3 months from the filing date.
It is not possible to file the application electronically. All applications therefore need to be submitted on hard copy.
Evaluation & Review
All applications are examined as to ensure that it complies with all relevant formalities and that the mark is suitable for registration. Both absolute and relative grounds are examined. If objections are raised, the applicant is given two months in which to respond.' If the objections are overcome, the application proceeds to publication. The publication then opens up a two-month period for any interested third parties to oppose the application. If no opposition is lodged against
the application, it proceeds to registration and the registration certificate is issued. Thereafter, the application is valid for ten years, and may be maintained indefinitely, subject to renewals every ten years.
Foreign applicants must provide a local address for service. Any extension of time request in which to respond to issues at the examination stage will attract an official fee.
Once registered, a trademark is valid for a period of 10 years from the date of registration (which is also the date on which the mark is applied for), and thereafter can be maintained indefinitely subject to renewals once every-ten years, calculated from the expiry date of the last renewal of the registration.'
Late renewal of registrations within one month from the expiration of the last registration are possible without having the mark removed from the Register, if filed and accompanied with a late renewal fee. If the registrant files an application to renew the registration within one year from the expiry of the last renewal, the office may restore the mark to the Register and renew its registration subject to any condition it may think fit. Any such renewal or restoration and renewal of
the registration will be advertised in the Gazette. The registration will not, however, be renewed where the renewal application is made after one year has lapsed from the expiration date of the last registration. All registrations and renewals under the old law will continue to be valid for the unexpired portion of their trademark periods. These marks are renewable under the new Act. Use of a mark on goods for export from Malaysia constitutes use of the trademark in Malaysia if it would be deemed valid use of goods traded in and sold within Malaysia.
There is no specific manner in which a trademark may be used in trade, provided that the use is visually represented, for example, it is in a printed form on a label, ticket, brochure, letterhead, packaging or in any other visual representation. Use in a different form from its registration may count as use if the manner in which the mark is used on the goods differs from the said registration only in immaterial ways and in a manner in which it does not substantially affect the identity of the mark registered. The mark must be used in respect of goods or services in the registration or application for protection.
Use of a trademark must not be deceiving, or cause confusion, be unlawful, scandalous or offensive and it must not be prejudicial to the interest or to national security.' Use of the mark must also be in Malaysia by the registered proprietor or registered user. Use of a mark on goods for export from Malaysia may also constitute use of the trademark in Malaysia if it would be deemed valid use of goods traded in and sold within Malaysia. Abandonment for nonuse
The mark is deemed abandoned when the proprietor fails to renew the mark within the stipulated time frame when the mark expires or when the proprietor withdraws the mark. However, the High Court may, on application from an aggrieved person, order a trademark to be removed from the Register in relation to any of the good or services registered on the basis that: (1) the trademark was not registered in good faith and that there has been no bona fide use of the trademark
on the goods or services under the registration in Malaysia by the proprietor or registered user up to one month before the application date; or (2) that up to one month from the application date, there was no bona fide use of the mark by the proprietor or registered user on goods or services under the registration, for a continuous period of not less than three years from the registration date.
In Malaysia, the body which has responsibility for the allocation and registration of domain names is 'Malaysian Network Information Centre' (MYNIC). It is possible to apply for the top level domain (.my) or Second Level Domains (being.com. my; .net. my; . org. my; .gov. my; .edu.my; and.mi1.m~w) hich are registrable on a first come first serve basis.
Registrants are given guidance from MYNIC on how to choose a domain name.' Apart from registering a .my domain name, MYNIC also modifies a domain name record on the MYNIC register; deletes domain name registrations with MYNIC; transfers domain names already registered with it; searches for domain names on its register; and ensures that domain name servers are correctly configured. It is not possible to reserve domain names in Malaysia as they are on a first come first serve basis only.
Once registered, any disputes between the domain name registrant (respondent) or a third party ('complainant) in relation to the party who has the right to the registration andlor use of the particular domain name have to be settled between the parties themselves without any interference by MYNIC. In .my domain name disputes, the Provider, namely 'Regional Centre for Arbitration Kuala Lumpur,' is the party managing the domain name dispute resolution process while MYNIC7s role is simply to enforce the decision the Provider passes to it in accordance with MYNIC's Domain Name Dispute Resolution Policy (MYDRP) and Rules.
MYDRP is designed to provide a simple and quick resolution of domain name dispute resolution of a .my domain name in Malaysia. According to the MYDRP policy, the registration of the disputed domain name will be transferred either to the complainant or deleted
if a complainant can show that: (1) the disputed domain name is identicallsimilar to the complainant's trade or service mark, and (2) the respondent registered and/or used the disputed domain name in 'bad faith' (unless the respondent can show that its rights and legitimate interest in the disputed domain name).
The MYDRP policy also states that the term 'bad faith' as used in the preceding paragraph above includes registration or use of the domain name by the respondent to sell, rent or transfer the domain name for profit to the complainant; or registration or use of the domain name to disrupt the complainant's business; or to attract or divert for commercial gain, internet users to their Web site or the complainant's Web site or any other web site and/or online location by creating a
likelihood of confusion or deception that the web site andlor online location is operated or authorized by or connected with the complainant and/or its trademark or service mark. In its defense, the respondent would have to establish rights and legitimate interest in the domain name, for instance, the fact that the respondent has been known by the domain name. The current documents which govern the MYDRP are MYNIC7s Domain Name Dispute Resolution Policy and Rules and the Regional Centre for Arbitration Kuala Lumpur's Supplemental Rules to MYNIC's Domain Name Dispute Resolution Policy. Remedies:
If the complainant is successful, it may either ask for the domain name to be transferred to it or to delete the registrant's domain name registration. No other relief is possible, including awards of damages or payments of compensation. However, to be able request the cancellation or transfer of the above mentioned domain name, the Complainant must need comply with MYNIC's applicable procedures, the Policy and Rules and other relevant applicable laws as indicated in the
MYNIC Web site (see above). It is also important to note that a domain name registration cannot be transferred to another party during the course of a proceeding for a period of 15 working days after the completion of the proceeding; or pending a court action or other alternative dispute resolution process
unless the transferee expressly agrees to be bound by the court or ADR decision and provides satisfactory evidence of the agreement relating to the same between the parties.
Trademark infringement can arise through: (1) the unauthorized use of a mark identical with or so nearly resembling a registered trademark as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the mark is registered; (2) the unauthorized use of a mark identical with or so nearly resembling a registered trademark so as to import a reference to the registered proprietor or to its registered user or to goods with which the proprietor andfor user is connected in the course of trade. One can also infringe a trademark through breach of various restrictions as provided in section 39 of the amended 1976 Act. Acts which do not constitute trademark infringement include any of the following:
(1) the bona fide use by a person of his own name or place of business or the name of business of his predecessor in business; (2) the bona fide use of a trademark describing the character or quality of his goods or services; (3) the continuous use of a trademark by a person or his predecessor in business from a date before the use or the registration of the registered trademark by the registered proprietor, or his business predecessor or by a registered user, whichever is the (4) use of the mark by a person connected in business with the registered proprietor or user conforming to the permitted use and where the trademark has not been subsequently removed or obliterated and where it has at any time, been expressly or impliedly consented to;
(5) use of the mark for goods adapted to form part of or be accessory to other goods or services which has been used for without infringement, or which might for the time being be so used, if the trademark use is reasonably necessary to indicate the goods or services are so adapted and the purpose or effect of the trademark use is not to indicate any connection between any person and the goods or services; and
(6) where a person uses an identical or substantially resembling trademark vis a vis the rights granted by registration (for instance in the case of honest concurrent rights).
Border enforcement: Customs
As previously mentioned, one of the new provisions brought forth (in compliance with obligations under the TRIPS Agreement) by the Trade Marks (Amendment) Act 2000 is the introduction of an enforcement mechanism to prohibit importation of counterfeit products and to prevent and curb counterfeiting activities at the border.
Under the new Section 70(D) of the 1976 Act duly amended, any registered trademark proprietor or his authorized agent may apply to the Registrar to restrict the expected importation into Malaysia of (in relation to the registered trademark) counterfeit goods bearing the trademark for the purpose of trade. This enforcement mechanism applies only in relation to registered trademarks.
Counterfeit trademark goods are defined in the Act as "any goods, including packaging, bearing without authorization a trademark which is identical with or nearly resembles the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark and which infringes the rights of the proprietor of the trademark under this Act."
If the Registrar approves the registered trademark owner's ('the applicant') application, the approval shall remain in force until the end of a sixty day period commencing on the date of the approval. The Registrar will also immediately notify the authorized officer (being a proper officer of customs under the Customs Act 1967) of the approval.
The authorized officer will thereafter take all relevant action to prohibit any person from importing counterfeit goods as identified in the notice (which are not transited goods), and will seize and detail the identified goods.
Trade Marks (Amendment) Act 2000 also introduced provisions within the amended 1976 Act, in relation to provisions: (1) for security by the applicant to the Registrar for seized gbods; (2) on the secure storage of seized goods; (3) for notice by the authorized officer identifying the seized goods and their storage location; (4) for the possibility for inspection, release, etc. of seized goods; (5) for the importer's consent for forfeiture of goods seized; (6) for the compulsory release of seized goods to the importer; (7) for compensation to the importer if the applicant fails to take out an infringement action within the retention time frame; (8) for actions for registered trademark infringement; (9) for the disposal of seized goods ordered to be forfeited; (10) where the security provided to the Registrar is insufficient; and (11) of an ex-officio action where an authorized officer may detain or suspend the release of such goods which on prima facie evidence, are counterfeit trademark goods.