Reform of the Malaysian Trade Marks Act 1976
01 November 2012
It was recently announced by Malaysia’s Deputy Prime Minister Tan Sri Muhyiddin Yassin at the National Intellectual Property Awards ceremony on April 26 that amendments to the Malaysian Trade Marks Act 1976 are scheduled to be tabled at the Parliament for the November session. This announcement is timely as there have been no major amendments to the Malaysian Trade Marks Act 1976 (TMA 1976) for the past 10 years. In light of technological advancements and developments in intellectual property laws globally, reforms have been long overdue.
Definition of Trademark
The definition of a “mark” provided under the TMA 1976, though non-exhaustive, does not specifically provide for the registration of new forms of non-traditional trademarks, three- dimensional trademarks, sound marks or even scent marks. It is hoped that the amending legislation will provide for the possibility of registering these new forms of trademarks.
With the increased scope for the protection of trademarks, the definition of “use” of a mark must also be revisited. Currently, under the TMA 1976, references to the “use” of a mark is construed as references to the use of a printed or otherwise visual representation of a mark and, with regards to goods, such “use” shall be construed as references to the “use” of the mark upon or in physical or other relation to the subject goods. Likewise, with regards to services, it shall be construed as references to the use of the mark as a statement or as part of a statement about the availability or performance of such services. This definition will need to be revamped with the broadening of the definition of what maybe a trademark. The amending legislation should provide a non-exhaustive definition of “use,” which would include oral use of a mark and usage of a mark on the internet.
Widening Scope of Protection
Under the TMA 1976, one can only succeed in a trademark infringement action if an identical or nearly resembling mark is used without permission upon or in relation to the actual goods/services registered.
In other words, a proprietor of a registered trademark may not seek relief under the TMA 1976 for trademark infringement if someone is taking unfair advantage of his goodwill and reputation by using a mark which is identical or similar to his registered mark in respect of goods or services which are different from the actual goods or services registered. One may only resort to the common law tort of passing off for remedy. By expanding the scope of trademark infringement to include use of an identical or nearly resembling mark in respect of goods or services other than those registered, may lessen causes of action seeking common law remedy.
Another common challenge faced by trademark proprietors is the unauthorized use of a registered mark or a mark that is similar to the name of an incorporated company or business. Under the present definition of infringement, such use does not amount to trademark infringement. The definition of infringement ought to be broadened to allow an infringement action to be brought against such unauthorized use.
In addition to the civil remedies available for trademark infringement, provisions for criminal remedies as provided for in the Copyright Act 1983, particularly the chapter on Infringements and Offences, could be adopted for inclusion in the amending legislation.
Improving the Trademark Registration System
In order to simplify the process for application and maintenance of trademarks and to reduce the costs involved, the following should be allowed:
• Filing of multiple-class applications.
• Single filing of a recordation of change of name and/or address for an applicant or a proprietor in respect of all the marks, pending or otherwise, in the name of the same applicant or proprietor.
Clarification of Certain Provisions of the TMA 1976
Clarification of the following provisions may minimize disputes in the interpretation of the applicable provisions in the current TMA 1976:
• Whether recordation of a registered user is mandatory if the registered proprietor does not use the registered mark in Malaysia by itself. Based on current case law, recordation of the registered user is necessary if the registered owner is to benefit from the registered rights granted to him under the Act;
• Calculation of non-use period, whether it is from the date of application which is deemed the date of registration upon grant or from the date of issuance of the relevant registration certificate; or
• Whether non-commercial use of a registered mark in Malaysia such as placing of advertisements and having a website promoting the subject registered mark, suffices as use under the Trade Marks Act.
Provision in Respect of Security Interests in IP
Both lenders and professionals in the investment community have for a long time recognized intellectual property as valuable assets. Generally one of the prime reasons, and sometimes the sole objective, for mergers and acquisitions is the acquirer’s desire to obtain the target’s valuable intellectual property assets. It is acknowledged that the corporate image and standing of the trademark owner and the full potential and value of its intellectual property assets can be enhanced if such intellectual property assets may be used as a source of funding to achieve these objectives. It is hoped that the amending legislation will provide the avenues for the creation, perfection and enforcement of security interests in intellectual property such as trademarks.
Shearn Delamore & Co
7/F., Wisma Hamzah-Kwong Hing
No 1 Leboh Ampang
50100 Kuala Lumpur, Malaysia
T: +603 2027 2727
F: +603 2078 5625, +603 2078 2376
E: info@shearndelamore.com
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