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  • 8/7/2019 IPL 4 - Trademark



    Musbri Mohamed

    DIL; ADIL ( ITM )

    MBL ( UKM )

    Law Made Simple

    Intellectual Property LawNote 4 0f 7 Notes


    Universiti Kebangsaan Malaysia

    Fakulti Undang-undang

    PHD Program in Law

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    What does a trademark do?

    A trademark provides protection to the owner of the mark by ensuring

    the exclusive right to use it to identify goods or services, or to

    authorize another to use it in return for payment. The period of

    protection varies, but a trademark can be renewed indefinitely beyond

    the time limit on payment of additional fees. Trademark protection is

    enforced by the courts, which in most systems have the authority toblock trademark infringement.

    In a larger sense, trademarks promote initiative and enterprise

    worldwide by rewarding the owners of trademarks with recognition and

    financial profit. Trademark protection also hinders the efforts of unfair

    competitors, such as counterfeiters, to use similar distinctive signs to

    market inferior or different products or services. The system enablespeople with skill and enterprise to produce and market goods and

    services in the fairest possible conditions, thereby facilitating

    international trade.

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    Trademarks make it easier for consumers to quickly identify the sourceof a given good. Instead of reading the fine print on a can of cola,

    consumers can look for the Coca-Cola trademark. Instead of asking a

    store clerk who made a certain athletic shoe, consumers can look for

    particular identifying symbols, such as a swoosh or a unique pattern of

    stripes. By making goods easier to identify, trademarks also give

    manufacturers an incentive to invest in the quality of their goods. After

    all, if a consumer tries a can of Coca-Cola and finds the quality lacking,it will be easy for the consumer to avoid Coca-Cola in the future and

    instead buy another brand. Trademark law furthers these goals by

    regulating the proper use of trademarks.

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    What kinds of trademarks can be registered?

    The possibilities are almost limitless. Trademarks may be one or a

    combination of words, letters, and numerals. They may consist of drawings,

    symbols, three- dimensional signs such as the shape and packaging of goods,

    audible signs such as music or vocal sounds, fragrances, or colors used as

    distinguishing features.

    In addition to trademarks identifying the commercial source of goods or

    services, several other categories of marks exist. Collective marks are

    owned by an association whose members use them to identify themselves

    with a level of quality and other requirements set by the association.

    Examples of such associations would be those representing accountants,

    engineers, or architects. Certification marks are given for compliance with

    defined standards, but are not confined to any membership. They may be

    granted to anyone who can certify that the products involved meet certain

    established standards. The internationally accepted "ISO 9000" quality

    standards are an example of such widely-recognized certifications.

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    As a result of being a member of the Paris Convention and

    the TRIPs Agreement, Malaysia amended its Trade MarkAct

    1976 to incorporate its international obligations to protect

    well-known marks in 2001.

    The following protection was extended for well-known marksin Malaysia under the Trade MarksAct 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


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    Under section 70B(1) of the Act 1976, a proprietor of a trade mark that

    is entitled to protection underArticle 6bis of the Paris Convention or the

    TRIPsAgreement 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 proprietors consent

    ii) if it resembles essential parts or is identical to the proprietors

    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.

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    In respect to different goods or services,

    section 14(1)e of theAct 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.

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    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 andtheir 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


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    Scope ofprotection 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-knownmark is actually used in, the proprietor has the option of relying on

    defensive trade mark protection under Section 57 of the Act 1976.

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    How is a trademark registered?

    First, an application for registration of a trademark must be filed with the

    appropriate national or regional trademark office. The application must

    contain a clear reproduction of the sign filed for registration, including any

    colors, forms, or three-dimensional features. The application must also contain

    a list of goods or services to which the sign would apply. The sign must fulfill

    certain conditions in order to be protected as a trademark or other type of mark.It must be distinctive, so that consumers can distinguish it as identifying a

    particular product, as well as from other trademarks identifying other products.

    It must neither mislead nor deceive customers or violate public order or


    Finally, the rights applied for cannot be the same as, or similar

    to, rights already granted to another trademark owner. This maybe determined through search and examinationby the national

    office, or by the opposition of third parties who claim similar

    or identical rights.

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    How extensive is trademarkprotection?

    Almost all countries in the world register and protect trademarks. Each

    national or regional office maintains a Register of Trademarks which

    contains full application information on all registrations and renewals,

    facilitating examination, search, and potential opposition by third parties.

    The effects of such a registration are, however, limited to the country (or, in

    the case of a regional registration, countries) concerned.

    In order to avoid the need to register separately with each national or

    regional office, WIPO administers a system of international registration of

    marks. This system is governed by two treaties, the Madrid Agreement

    Concerning the International Registration of Marks and the Madrid

    Protocol.A person who has a link (through nationality, domicile or

    establishment) with a country party to one or both of these treaties may, onthe basis of a registration or application with the trademark office of that

    country, obtain an international registration having effect in some or all of

    the other countries of the Madrid Union.

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    Awell-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 theAct, above. The use of the mark thereafter

    in relation to other goods and services would likely indicate aconnection 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 atrade connection with him, or with a registered user of his.

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    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 andwill 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 consentwould amount to infringement action.

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    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, itis 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 deterinfringement 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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    Intellectual Property Rights (IPRs), in particular trademarks havetaken on increased importance in the current Internet-driven,

    knowledge based society, due in part to the growth of the Internet as

    an information/technological medium.

    Association of Southeast Asian Nations (ASEAN) notes that IP and

    IPRs creation, commercialization, and protection have assumed an

    increasingly profound and unprecedented influence on the social,economic and technological progress of interdependent economies

    around the world.

    Whilst the importance of copyright and patents (the other limbs of

    IPRs) cannot be discounted, trademarks arguably have a wider

    audience as people are increasingly brand harmonized through

    advertisements and other marketing instruments including the Internet.

    Brands such as Coca Cola and Microsoft are common palace to the

    normal consumer.

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    The trademark, which also serves as the name of the brand, is

    extremely valuable as the reputation gained through use of the name,

    over decades are contained in it. A study undertaken by Interbrand

    in 2003 ranked; Coca Cola (valued at US$70 billion), Microsoft

    (valued at US$65 billion) and IBM (valued at US$52 billion) to be

    the worlds top three brand names.

    The question may be whether, such values are justified but bearing

    in mind the cost spent by these companies in research, development,

    advertising and marketing are astronomical (figures show that Coca-

    Cola and Microsoft, spent US$2.774billion and US$11.455billion in

    2007 on sales and marketing expenses), logically they should be

    granted the right to use and protect their name against others whosought to capitalize on their reputation.

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    The formation of the World Intellectual Property Organization (WIPO) and the

    subsequent conception of the Madrid Agreement and Madrid Protocol have

    provided options for international registration. Brand owners now have the option to

    apply for registration in as many countries as they wish (as long as the country is a

    signatory of the respective agreement; Singapore is a signatory of the Madrid

    Protocol) however, the International Registration System under the Madrid


    greement or Protocol, only serves as a one-stop-shop for registration application.The actual registration and examination process is undertaken by the respective

    national registry. Clearly this does not fully solve the problem faced by brand

    owners as countries tend to have different laws, furthermore, not all countries are

    signatories of Madrid. The European Union (EU), have managed to adopt more

    enhanced, but scaled down (in terms of countries) version of the International

    system. The Community Trade Mark System (CTM) allows the single registration

    of a trademark, if successful, has effect in the entire EU

    territory. The EU

    furtherprovides the brand owner with both national and EU-level enforcement avenues.

    This reduces time as well as cost, allowing brand owners to manage their

    trademarks effectively instead of requiring a huge portfolio for the same trademark.

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    Trade Mark Use on the Internet A Malaysian Perspective

    In order to ensure the validity of a trade mark , it is a requirement that the

    owner of the mark put their trade mark to use to indicate a connection in the

    course of trade to the goods or services applied for.

    While there are no decided court cases in Malaysia on the subject of use of a

    trade mark over the Internet as yet, decisions under the new Malaysian

    Dispute Resolution Procedure (MYDRP) are a useful guide to how the

    Malaysian courts may approach this issue. The MYDRP is modeled closely

    on ICANNs UDRP and disputes under the MYDRP are heard by the

    Panelists at the Regional Centre forArbitration Kuala Lumpur (RCAKL). The

    MYDRP governs only .com.my websites. Recent Panel decisions such as

    NEPHoldings (Malaysia) Bhd. v Liew Bin Dian t/a C & CNetworkand

    Volkswagen GroupSingapore Pte. Ltd. vWebmotion Design have both

    made reference to the trade mark on the Internet. These decisions signify a

    trend towards accepting use over the Internet as use for trade mark

    purposes, as far as domain name disputes are concerned.

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    However, if the web server is located outside the relevant jurisdiction or the

    website has a country specific ccTLD or the website simply caters to

    another jurisdiction, the answer may be different. In the UK case of800-

    Flowers Trade Markit was held that a globally accessible website does

    notprima facie constitute use in the trade mark sense within the United

    Kingdom. The case further held that the question of use would very much

    depend on the circumstances, particularly the intentions of the website

    proprietor and what the average visitor comprehends upon accessing the

    website. Trade mark owners should note that the 800-Flowers case suggests

    that the provision of interactive facilities by the website owner may

    constitute use. If a consumer accesses a website and orders goods or

    services as a result of the advertisement or information on the website, this

    could arguably amount to use of the mark. This reasoning was also followedin the subsequent case ofEuromarket Designs Incorporated v Peters &


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    Amendments will be made to the outdated Trade Marks Act

    1976 which is currently based on the United Kingdom Trade

    MarkActs of 1983 (which was duly repealed and replaced

    with the Trade MarksAct 1994 for compliance with EU

    Directive on trade mark laws). The amendments according toAssoc Prof Rohazar of MyIPO, would include the registration

    of non-traditional trade marks such as sounds, smells and

    motion. She also added that MyIPO is looking to cut back red

    tape in the application procedures. Although the TRIPS

    agreement made an impact on the Malaysian Trade Marks Act

    such as the introduction of protection of well-known marks

    and heightened border security measures, the Act is in need ofupdating and removal of procedural set backs.

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    Malaysian IP laws and IPR enforcement is now going under

    much needed scrutiny and any amendments made will have

    to maintain the balance of public and private rights that suit

    the Malaysian people. As foreign trade increases andlobbying continues from powerful countries for various

    changes to be affected, the task of striking a balance of

    rights and obligations falls on the MyIPO. It appears the

    proposed amendments would be welcomed by all as the law

    serves its purpose best when equipped with clarity and


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    In Malaysia a trade mark owner can enforce his rights in a

    number of ways. A effective means of enforcement against

    an infringer of a trade mark or a person liable for passing

    off, would be to obtain a Trade Description Order (TDO).

    This is provided by virtue of section 16 of the Trade

    Description Act 1972 (theAct).

    ATDO declares a particular trade mark or get up a false

    trade description, and the officers of the Ministry can then

    seize goods affixed with the marks or get up declared as

    such and prosecute the manufacturers and/or the sellers.

    The two key points that will to be considered amongst

    others is the applicant for the TDO must have exclusive

    use of the trade mark and the infringing trade mark mustbe identified with sufficient precision.

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    The Malaysian High Court, in Yong Sze Fan & Anor v Sharifah bt Mohd

    Tamin & 4 Ors [2008] 5 AMR163 had an opportunity to consider an

    application for an order that a trademark registered by the Malaysian

    Trademark Registry be expunged (cancelled) from the Register under the

    provisions of the Malaysian Trade MarksAct 1976.

    TheApplicants here claimed that they were the first users of the registered

    trademark TAMIN and thereby they claimed that the 1st Respondents

    trademark registration TAMIN was therefore wrongfully registered in the

    Malaysian Trademark Registry. In support of their application, the

    Applicants adduced evidence of the first use of their mark which they

    claimed was since 1990 as well as their extensive sales and promotion of

    products using the said mark in Malaysia.

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    In order to serve as a trademark, a mark must be distinctive -- that is, it must becapable of identifying the source of a particular good. In determining whether a

    mark is distinctive, the courts group marks into four categories, based on the

    relationship between the mark and the underlying product: (1) arbitrary or fanciful,

    (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these

    categories vary with respect to their distinctiveness, the requirements for, and

    degree of, legal protection afforded a particular trademark will depend upon which

    category it falls within.

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    The use of a mark generally means the actual sale of a product to the

    public with the mark attached. Thus, if I am the first to sell "Lucky"

    brand bubble-gum to the public, I have acquired priority to use that mark

    in connection with the sale of bubble-gum (assuming that the mark

    otherwise qualifies for trademark protection). This priority is limited,

    however, to the geographic area in which I sell the bubble gum, along

    with any areas I would be expected to expand into or any areas where the

    reputation of the mark has been established. So, for example, if I sell

    pizza in Boston under the name "Broadway Pizza," I will probably be

    able to prevent late-comers from opening up a "Broadway Pizza" within

    my geographic market. But I will not be able to prevent someone else

    from opening a "Broadway Pizza" in Los Angeles.

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    The other way to acquire priority is to register the mark

    with the Patent and Trademark Office with a bona fide

    intention to use the mark in commerce. Unlike use of a

    mark in commerce, registration of a mark with the PTO

    gives a party the right to use the mark nationwide, even

    if actual sales are limited to only a limited area. Thisright is limited, however, to the extent that the mark is

    already being used by others within a specific

    geographic area. If that is the case, then the prior user

    of the mark retains the right to use that mark within

    that geographic area; the party registering the mark

    gets the right to use it everywhere else. So, for example,

    if I register the mark "Broadway" in connection withthe sale of pizza, the existing "Broadway Pizza" in

    Boston retains the right to use the name in Boston, but

    I get the right to use it everywhere else.

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    The rights to a trademark can be lost

    through abandonment, improper

    licensing or assignment, or genericity. A

    trademark is abandoned when its use is

    discontinued with an intent not toresume its use. Such intent can be

    inferred from the circumstances.

    Moreover, non-use for three consecutive

    years is prima facie evidence of

    abandonment. The basic idea is that

    trademark law only protects marks that

    are being used, and parties are notentitled to warehouse potentially useful


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    In considering trademark registration kindly remember that the

    strongest trademarks are used very extensively by the owner. The

    mark should be on your letterhead, business cards, e-mail

    signatures, and anywhere else it may be appropriately used. Amark

    is strongest when it is recognized by most people in your

    marketplace, whether it be local, national, or worldwide.

    Musbri Mohamed

    February 2011