MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
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 originating from a particular source because of the use made of the sign. The sign must be factually distinctive, although not inher - ently 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 reg - istration of: • signs which are not capable of being repre - sented graphically and not capable of distin - guishing goods or services of one undertak - ing from those of other undertakings; • trade marks which are devoid of any distinc - tive 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 render - ing of services; or • trade marks which consist exclusively of signs or indications which have become cus - tomary 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 Section 23(2) of the TMA 2019, the Registrar of Trademarks will not refuse to register an applica - tion of a trade mark if, before the date of applica - tion for registration, the trade mark has in fact
acquired a distinctive character as a result of its use. Accordingly, signs which are descriptive or laud - atory may be registered as trade marks if they are shown by evidence to be factually distinc - tive. In this case, evidence of use is necessary to prove factual distinctiveness. Some of the criteria to determine whether a trade mark has acquired distinctiveness in Malaysia are the duration 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 widespread use of the trade mark makes the trade mark distinguishable in law. Under Section 48(1) of the TMA 2019, the reg - istered 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 infringe - ment. These rights begin upon registration and last throughout the term of a trade mark. Unregistered Trade Marks 2.3 Trade Mark Rights Registered Trade Marks The owner of an unregistered trade mark can enforce its rights by pursuing claims for pass - ing 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 representa - tions, use on goods, statements about services or aural representations.
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