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Trademarks in Malaysia – The position of Well-known marks

As a result of being a member of the Paris Convention and the TRIPs Agreement, Malaysia amended its Trade Mark Act 1976 to incorporate its international obligations to protect well-known marks in 2001.The following protection was extended for well-known marks in Malaysia under the Trade Marks Act 1976: –

In respect of same goods or services, section 14(1)d of the Act stipulates that the registration of a mark or part thereof will not be allowed if it is identical or so nearly resembles a mark, which is well-known in Malaysia for the same goods or services.

Under section 70B(1) of the Act 1976, a proprietor of a trade mark that is entitled to protection under Article 6bis of the Paris Convention or the TRIPs Agreement as a well-known mark, is entitled to restrain the use of the marks used in the course of trade in Malaysia:-

i) without the proprietor’s consent

ii) if it resembles essential parts or is identical to the proprietor’s mark, in respect of the same goods and services, where the use is likely to deceive and cause confusion.

Protection under this section is available as long as the trade mark is well-known in Malaysia, regardless, of whether it is registered or not. It also extends protection whether or not the proprietor of the well-known mark carries on business in Malaysia, or has any goodwill in Malaysia. This section applies only if the conflicting trade mark is used on the same goods or services as that of the well-known trade mark.

In respect to different goods or services, section 14(1)e of the Act states that the registration of a mark or part thereof will not be allowed if it is identical or so nearly resembles a mark which is well-known in Malaysia in respect to different goods or services, provided that the use of the mark in relation to those goods or services would indicate a connection to the proprietor of the well-known mark and that the interests of the proprietor of the well-known mark are likely to be damaged by such use.

Requirements and types of evidences to qualify as well-known mark

One must prove that their mark is a well-known mark by virtue of their extensive advertisements, usage and registrations worldwide/in Malaysia and their exceptional reputation worldwide. In determining whether or not the mark is indeed a well-known mark in Malaysia, the account of knowledge of the trade mark in the relevant sector of public, and not the public at large, in relation to the specific channel of trade is taken into consideration.

Therefore, to determine whether a mark is well-known or not, the following criteria under Regulation 13B of the Trade Marks Regulation 1997, has to be taken into account:-

i) degree of knowledge or recognition of the mark in the relevant sector of the public;

ii) the duration, extent and geographical area of any use of the mark

iii) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark applied;

iv) the duration and geographical area of any registrations, or any application for registration, of the mark to the extent that they reflect use or recognition to the mark;

v) 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;

vi) the value associated with the mark.

Regulation 13A of the Trade Marks Regulation 1997 stipulates that the Registration of a mark is not allowed: –

a) If it is identical or confusingly similar or constitutes a translation of a mark which is considered by the relevant authority in Malaysia to be well-known in Malaysia, whether or not the mark is registered and used for identical or similar goods or services;

b) If it is identical or confusingly similar or constitutes a translation of a mark which is considered well-known under Regulation 13B in Malaysia, which is registered in Malaysia, in respect to similar or different goods or services registered for; so long as the use of the mark indicates a connection between those goods and services with the proprietor of the registered mark (well-known mark), provided further that the interests of the proprietor of the mark are likely to be damaged by such use.

Scope of protection of well-known marks in Malaysia

Since there are no special or separate filings for well-known marks in Malaysia, trade mark applications for well-known marks claiming goods or services that are used in connection with the channel of trade have to be filed in the usual manner like all other trade mark applications.

The trade mark application will be examined in the similar fashion as other trade marks. In the event of objection or other third parties raising opposition against the application, the applicant, by satisfying the criteria of the well-known mark under Regulation 13B, may rely on the protection of well-known marks, to defend their trade mark. In case they want to protect their trade mark across the board in all classes of goods and services, besides the class of goods and services in which the well-known mark is actually used in, the proprietor has the option of relying on defensive trade mark protection under Section 57 of the Act 1976.

A well-known invented mark may be registered as a defensive mark for other goods and services in respect of which the mark is not registered or used for i.e. dissimilar goods or services, as explained in Section 14(1)(e) of the Act, above. The use of the mark thereafter in relation to other goods and services would likely indicate a connection in the course of trade to the registered proprietor of the well-known mark.

A defensive mark must have an established reputation for certain goods or services for which it is already registered, and the proprietor must be able to show that if the public saw it on other goods or services they would be likely to think, incorrectly, that it indicated a trade connection with him, or with a registered user of his.

The applicant may register for a defensive mark in respect of any goods and services, provided they own an existing registration. The defensive mark has to be associated with the registered mark.

Registration of a defensive mark is immune to cancellation action for non-use of the mark and will not be required to show proof of use of the mark for the purposes of renewing the registration, so long as the main registration is in force. By undertaking this measure, it is possible to take out infringement action against unlawful use of the well-known mark, as the use of the defensive mark on dissimilar goods or services without consent would amount to infringement action.

In conclusion, well-known marks can be protected for goods and services used in connection with the trade through normal application and registration of a trade mark in Malaysia. Since the protection of well-known marks is fairly in its infancy stage in Malaysia and is gradually going through further development, it is prudent that the initial precautionary measures are taken by the proprietors of well-known marks by filing a defensive trade mark application for their well-known mark in all classes of goods and services, to ensure no future identical or similar trade mark applications are filed in Malaysia. This would certainly be the first step to deter infringement against their well-known mark as well as at the same time create awareness of the well-known status of its marks.

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