Bird’s Eye View For Trademark Protection In Malaysia.

Governing Laws

Trademark Protection in Malaysia is mainly governed under the Trademarks Act 2019 (“TMA”) and the Trademark Regulations 2019 (“TMR”). On 27 December 2019, the TMA and TMR came into force, repealing the previous Trade Marks Act 1976 and Trade Mark Regulations 1983. Both of these governing laws are administered by the Intellectual Property Corporation of Malaysia, also known as MyIPO. Being an agency under the purview of the Ministry of Domestic Trade, Co-operatives and Consumerism, MyIPO is responsible for the development and management of the intellectual property system in Malaysia. To further assist the trademark matters in Malaysia, MyIPO has also issued the Manual of Trade Marks Law and Practice in Malaysia, Guidelines of Trademarks 2019 and Practice Directions¹ which shall be read together simultaneously with the TMA and TMR.

Definition of Trademark

According to Section 3 of TMA, “Trademark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one trader from those of another. The concept of a ‘sign’ here can be divided into two categories, i.e. traditional and non-traditional. For the traditional trademark, it consists of any letter, word, name, signature, numeral, device, brand, heading, label, ticket, or any combination thereof.² Meanwhile, the non-traditional would include the shape of goods or their packaging, color, sound, scent, hologram, positioning and sequence of motion, or any combination thereof.³

• The following are the examples of traditional trademarks:

• The following are the examples of non-traditional trademarks:

In addition to the examples mentioned above, a trademark may also refer to a collective mark or certification mark.⁴ Generally, a collective mark can be understood as a sign distinguishing the goods or services of members of the association which is the proprietor of the collective mark from those of other undertakings.⁵

As an example, the Malaysian Bar Council logo, i.e. ‘ ’ is used to distinguish the goods and/or services provided by the members of the Malaysian Bar Council with the others’. On the other hand, a certification mark is a sign indicating that the goods or services in connection with which it shall be used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.⁶ The example for certification mark would be the JAKIM halal logo, i.e. ‘ ’,

which is being used by JAKIM in certifying that any related goods and/or services are halal in nature.

Who May Apply for Trademark Registration

It is worth to note that the TMA and TMR allow any individual, business organization, institute or legal entity to apply to the MyIPO for a trademark registration. This is provided that the person is:

• using or intends to use the trademark in the course of trade; or

• has authorized or intends to authorize another person to use the trademark in the course of trade.⁷

Although the Malaysian law does not make it mandatory for the owner of a trademark to register the trademark before the same can be used in Malaysia, it is strongly recommended for the owner of the trademark to do so for the following purposes (which include but not limited to):

• determining on the availability of the trademark in Malaysia;

• determining on the registrability of the trademark in Malaysia;

• avoiding for any potential trademark infringement while using the trademark in Malaysia; and

• protecting the trademark from being infringed by the potential competitor(s).

In addition to the above, it is important to be reminded that not all trademarks can be registered with the MyIPO, in Malaysia. This has been clarified by MyIPO, in which there are three (3) circumstances where a trademark is non-registrable⁸ with the MyIPO, in Malaysia, as follows:

(aa) Firstly, a trademark will be prohibited if the use of it is likely to confuse or deceive the public or contrary to law;

(bb) Secondly, when the trademark contains or comprises any scandalous or offensive matter or would not otherwise be entitled to protection in any court of law; and/or

(cc) Thirdly, when the trademark is prejudicial to the interest or security of the nation.

Functions of Trademark

It is undeniable that trademarks serve various functions to the businesses and the public. Amongst the essential functions of a trademark are including but not limited to the following;

1.ORIGIN – Trademark is a badge of origin. It serves as information to the customers for identifying the source of a product and services trade in the market. For instance, the McDonald’s logo i.e. ‘ ’,

is so well-known that the public in general would instantly know the source or origin of the proprietor’s’ products and services when they come across this logo.

2.CHOICE – Trademark assists consumers to choose goods and services with ease. With numerous products and services being invented, marketed and sold on daily basis, a trademark plays a vital role in ensuring that the consumer is able to have a good personal database regarding the specific characters, quality and preferential points over the products and services, which will help the consumers to better choose the products and services in accordance to their needs and preferences.

3.QUALITY – Trademark reflects for certain quality on the goods and services. Consumers choose a certain goods and services for its known quality based on its reputation in the marketplace. Easiest examples in Malaysia’s context would be the consumers that are generally looking for the products and/or services with a SIRIM logo to ensure for its safety, and that the Muslims in Malaysia would incline to get the products and/or services that have the JAKIM Halal logo to ensure for its religion compliance factor.

4.MARKETING – Trademark is a marketer for the products and the services. As known, trademark plays a significant role in promoting the products and services i.e. by reflecting that such products and services are special for certain characters, quality or preferential points that its possess. Further, it is worth to note that it is common for consumers to make purchases based on the continuous effect of advertising on the products and services.

5.ECONOMIC – Recognized trademark is a valuable asset. Trademark that is well-known enough can be regarded as part of the owner’s valuable asset as the same can be subjected to licensing, assignment and others sort of dealings.

Importance of Trademark Registration

According to MyIPO, the intellectual proprietary privileges in relation to a trademark may be established through the registration and actual use of the trademark in the marketplace.⁹ By registering the trademark with the MyIPO in Malaysia, the registered proprietor would obtain exclusive rights to use the registered trademark in the course of trading¹⁰ and to authorize other persons to use the registered trademark.¹¹ The law also provides remedies where a registered proprietor may initiate a civil claim against any unauthorized user who has used or attempted to use his registered trademark or other identical mark that may cause confusion to the public.¹² This is provided under the TMA which gives the right to the registered proprietor to obtain relief for any infringement case of his trademark.¹³

Additionally, the registered proprietor has the exclusive right to take criminal action against any person who counterfeits a registered trademark¹⁴ or lodge complaints to the Enforcement Division of Malaysia for the appropriate actions.¹⁵ Last but not least, a certificate of registration issued by the Registrar Office of the MyIPO for any trademark duly registered with the MyIPO reflects to a fact that it is a clear privilege for the registered proprietor that it has a prima facie evidence of trademark ownership.¹⁶

For further information, please contact:

Amera Mohd Yusof, AZMI & Associates

amera.yusof@azmilaw.com

1. Section 160 TMA
2. Section 2 TMA
3. Ibid.
4. Section 3(3) TMA
5. Section 72(1) TMA
6. Section 73(1) TMA
7. Section 17(1) TMA 2019
8. “Trademark Basic – the Official Portal of Intellectual Property Corporation of Malaysia,” Myipo.gov.my, 2022, https://www.myipo.gov.my/en/trademark-basic/?lang=en
9. “Trademark Basic – the Official Portal of Intellectual Property Corporation of Malaysia,” 10 Myipo.gov.my, 2022, https://www.myipo.gov.my/en/trademark-basic/?lang=en
10. Section 48(1)(a)
11. Section 48(1)(b)
12. “Trademark Registration in Malaysia – the Process and Procedures, and the Benefits of Registration,” 2022, https://oneasia.legal/en/wp-content/themes/standard_black_cmspro/img/EN_6-2022-Intellectual-Property-Trademark-Registration-2022_checked_clean.pdf
13. Section 48(2)
14. Section 99 of TMA
15. Section 112 of TMA
16. Section 52 of TMA