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Non-Conventional Trade Marks in Malaysia: 3-D marks

Trade Mark protection has advanced significantly from the days when marks consisted primarily of words, letters, logos or reproduction of images in two-dimensional forms. In many countries throughout the world, amendments to legislation as well as continually evolving trademark practices have extended the scope of trademark protection to include non-conventional trademarks such as three-dimensional marks, sounds and even smells.

In Malaysia, while the law is clear that “sounds” and “smells” do not fall within the statutory definition of a “mark” (because the Act states that only printed or other visual use of the mark is to be construed as references to use of a mark), there appears to be no specific provision allowing three-dimensional trade marks.

The Trade Marks Act states that a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”, which therefore means that the provision is not exhaustive and it can be argued that three-dimensional marks do fall within the boundaries of the statutory definition.

The view in support of the inclusion is that the word “device” is sufficiently wide to cover such marks, and the English case of Smith Kline & French Laboratories Ltd v Sterling-Winthrop Group Ltd [1976] RPC 511 is taken as persuasive authority for the proposition that marks may be three-dimensional.

Further support is found in the Malaysian Trade Mark Office’s own Manual, which cites the Smith Kline case with approval and in addition discusses the procedures relating to the filing of an application in respect of three-dimensional marks by reference to the provisions in the Trade Mark Regulations relating to “cases of difficulty”.

Therefore, although there is a lack of specific legislation, it appears that three-dimensional marks are registrable in Malaysia and in fact there have been many instances of three-dimensional marks being successfully registered with the Malaysian Trade Mark Office. One of the best-known examples of this is the registration of the triangular three-dimensional configuration of the TOBLERONE chocolate bar. In addition to trade mark protection, three-dimensional shapes are also afforded protection through the Malaysian registered designs and copyright regimes.

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