MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
2.3 Trade Mark Rights Registered Trade Marks
of the sign. The sign must be factually distinctive, although not inherently distinctive. For a trade mark to be registrable, it must not fall within any of the absolute grounds of refusal under Section 23 (1) of the TMA 2019, whereby the Registrar of Trademarks will refuse the registration of: • signs which are not capable of being represented graphically and not capable of distinguishing goods or services of one undertaking from those of other undertakings; • trade marks which are devoid of any distinctive character; • trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics of goods or services or the time of production of goods or of rendering of services; or • trade marks which consist exclusively of signs or indications which have become customary in the current language of the territory or in the bona fide and established practices of the trade. Proving Acquired Distinctiveness A sign can be considered as factually distinctive through use ie, acquired distinctiveness. Under Sec - tion 23 (2) of the TMA 2019, the Registrar of Trade - marks will not refuse to register an application of a trade mark if, before the date of application for regis - tration, the trade mark has in fact acquired a distinc - tive character as a result of its use. Accordingly, signs which are descriptive or laudatory may be registered as trade marks if they are shown by evidence to be factually distinctive. In this case, evidence of use is necessary to prove factual distinc - tiveness. Some of the criteria to determine whether a trade mark has acquired distinctiveness in Malaysia are the dura - tion and extent of use (continuous and widespread use over time), whether or not the mark functioned as a trade mark and whether the continuous and wide - spread use of the trade mark makes the trade mark distinguishable in law.
Under Section 48 (1) of the TMA 2019, the registered proprietor of a trade mark has exclusive rights to use and authorise the use of the trade mark for the goods or services for which it is registered, as well as to seek relief for infringement. These rights begin upon regis - tration and last throughout the term of a trade mark. Unregistered Trade Marks The owner of an unregistered trade mark can enforce its rights by pursuing claims for passing off. The TMA 2019 also protects well-known unregistered trade marks by refusing registration of similar trade marks. 2.4 Use in Commerce Section 7 of the TMA 2019 defines trade mark use as including visual or non-visual representations, use on goods, statements about services or aural repre - sentations. Under Section 54 (2) of the TMA 2019, use in the con - text of infringement can include: • applying the sign on the goods or their packaging; • offering or exposing goods for sale under the sign; • putting goods on the market under the sign; • stocking goods for the purposes of selling them; • offering or supplying services under the sign; • importing or exporting goods under the sign; and • using the sign on invoices, catalogues, commercial documents, etc. Under Section 55 (1)(b) of the TMA 2019, a person does not infringe a registered trade mark if they use a sign in good faith to describe the characteristics of goods or services, such as origin, quality or purpose. 2.5 Notices and Symbols There is no legal requirement to use a symbol to denote a registered trade mark in Malaysia. However, it is an offence to use the ® symbol for trade marks that are pending or unregistered in Malaysia and if found guilty, the offender will be liable to a fine not exceeding MYR10,000.
291 CHAMBERS.COM
Powered by FlippingBook