MALAYSIA Law and Practice Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
2.4 Term, Use and Maintenance Trade mark protection is valid for ten years and may be renewed every ten years in perpetuity. In Malaysia, renewing a trade mark does not require submitting any documents. The registrant simply needs to pay the prescribed renewal fees before the renewal due date. If the renewal is not completed by the due date, a six-month grace period is granted after expiry, during which the registrant can still renew the trade mark by paying the renewal fees and surcharges. If the trade mark remains unrenewed after this grace period, the registrant has an additional six months to restore the trade mark by filing a statutory declaration explaining the failure to renew and paying the pre- scribed fees, along with the applicable surcharges. In Malaysia, the threshold to prove use of a trade mark is generally quite low. A trade mark is considered to be in use if it is used in the course of trade for the registered goods or services. This use may include activities such as advertisements, demonstrations or other forms of promotion accessible to Malaysian consumers. Simply put, as long as the mark is actively used in a way that consumers in Malaysia can see or experience, it is regarded as genuine use of the trade mark. Generally, a registered trade mark may be subject to non-use cancellation by any third party, provided that the trade mark is not used within a period of three years following the date of issuance of the notification of registration, subject to the provisions under Section 46 of the Trademarks Act 2019. 2.5 Trade Mark Rights and Limitations Under the Trademarks Act 2019, a registration of a trade mark allows the registrant to enjoy exclusive rights over the use of its trade mark in Malaysia in trade, which in turn prevents third parties from using identical and/or similar marks in the same or similar goods/services that may lead to a likelihood of confu- sion amongst the consumers. However, the exclusive rights conferred by trade mark registration are subject to the following limitations:
• concurrent use – where two or more parties, in good faith, use similar trade marks simultaneously for the same or related goods or services; • prior use – where a party has, in good faith, used a similar and/or identical mark before the registrant; • fair use – where a party used the trade mark for non-commercial or descriptive purposes; • use in good faith of the infringer’s own name/name of place of business or predecessor’s name/prede- cessor’s place of business; and • limitation to the goods/services applied for – the registrant’s exclusive rights do not extend beyond the scope of its registered specifications. 2.6 Trade Mark Enforcement and Remedies A trade mark infringement arises when an act under Section 54 of the Trademarks Act 2019 occurs. For instance, when the infringing mark is likely to cause confusion amongst the consumers and/or there was no authorised use of the registered mark. A trade mark dilution falls within the broader aspect of trade mark infringement and/or common law passing off, when the use of the trade mark is unauthorised and causes damage to the reputation and goodwill of the trade mark. The tort of passing off occurs when these three criteria are fulfilled: • there is goodwill attached to the goods/services; • there is a misrepresentation by the infringer leading the public to believe that the goods/services are those of another; and • the proprietor of the mark is likely to suffer dam- ages/has suffered damages as a result of such misrepresentation. In Malaysia, the court of original jurisdiction for trade mark disputes generally falls to the High Court. In the context of criminal proceedings, counterfeit- ing registered trade marks, falsely applying registered trade marks to goods/services, making or possess- ing articles that may be mistaken for those bearing a registered trade mark and importing or selling goods with falsely applied trade marks are offences under the laws of Malaysia. Accordingly, depending on the
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