MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
A trade mark is defined as a sign in the form of a letter, word, name, signature, numeral, device, brand, head - ing, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, and/or sequence of motion, which is capable of being rep - resented graphically and which is capable of distin - guishing the goods or services of one undertaking from those of others. Shape marks are registrable in Malaysia provided that they do not consist exclusively of: • a shape resulting from the nature of the goods; • a shape necessary for a technical result; or • a shape that adds substantial value to the goods. In respect of trade marks containing the name of another person, whether living or dead, the applicant is required to provide the Registrar of Trademarks with a letter of consent from that person, if living, or of the representative of that person if deceased. Under Section 72 (1) of the TMA 2019, a collective mark distinguishes goods or services of association members and is governed by the First Schedule of the TMA 2019, which covers registration, use and infringement rules. Section 73 (1) of the TMA 2019 defines certification marks as signs indicating that goods or services meet specific criteria, such as quality or origin. Their regis - trability is governed by the Second Schedule of the TMA 2019. Geographical indications (GIs) are governed by the Geographical Indications Act 2022. Unlike trade marks, GIs cannot be created but are recognised based on the natural link between the product and its origin. GIs identify the product’s region rather than a specific commercial enterprise, and all producers in that region may use the GI if their goods meet the established standards. Industrial designs are generally protected under the Industrial Designs Act 1996. Designs or product pack - aging can be protected by way of trade mark protec - tion so long as they can function as a source identifier
used to distinguish one’s goods and services from those of other traders. Registrability of Specific Marks Trade marks containing special emblems, such as national flags or royal arms are not registrable unless the applicant provides consent from the relevant authorities. Section 23 (5)(h) of the TMA 2019 prohibits the reg - istration of a trade mark that contains a word which is the commonly used or accepted name of a sin - gle chemical element or chemical compound, and it extends to words which are declared by the World Health Organisation as an international non-proprie - tary name. Regulation 4 (1) of the Regulations also prohibits the registration of trade marks that include names, ini - tials or flags of international organisations or member countries. Well-Known Marks Under Section 76 of the TMA 2019, a well-known mark will be entitled to protection in Malaysia regard - less of whether the mark is registered or is subject to a pending application in Malaysia, and whether or not the proprietor of the mark carries on business, or has any goodwill, in Malaysia. 2.2 Essential Elements of Trade Mark Protection Elements Required to Qualify for Trade Mark Protection Under Section 3 (1) of the TMA 2019, the following elements are required to qualify for trade mark pro - • capable of being represented graphically; and • capable of distinguishing goods or services of one undertaking from those of other undertakings. The sign itself must be inherently capable of being distinguished (inherently distinctive). The sign can be considered distinctive if consumers are able to identify the goods or services bearing the sign as originat - ing from a particular source because of the use made tection: • a sign;
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