School of Business

Bachelor of Business (Hons) with Law

BBLW 2064
Intellectual Property Law

Individual Assignment Brief May 2021 Semester

Subject Lecturer
NALINI SAMUDRAM

Name; MAHEERA ABDULWAHID

Student I.D; 0129207.

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Table of contents

Introduction 3

What is considered as a trademark. 4

Registration of trademarks 5

Classification of trademarks 6

Examination procedure before registration of trademarks. 6

Opposition from third-parties 7

Duration of validity of the trademark 8

Conclusion 10

References 11

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Introduction

Intellectual property refers to any creation that has been made intellectual like designs,
symbols,names etc,. Intellectual property rights in Malaysia are protected by the Malaysian
Intellectual Property Corporation. Examples of intellectual property include patents, copyrights,
trademarks, trade dress, trade secrets etc,.(Trademarks, n.d.).

The main Act that governs everything related to trademarks was the Trademarks Act 1976.
However, in 2019, a new Trademarks Bill 2019 was passed which came into force in early
2020. It contains all the steps and regulations that are required to be followed by parties looking
to register their trademarks. (Hishammuddin Allen, 2019).

Trademarks are registered by the registrar of trademarks and he/she can refuse to register some
marks if they do not fulfil the requirements.

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 a) What is considered as a trademark.

The definition of a trademark can be found under section 3 of the Trademark Act 2019. It is
defined as a sign that can help differentiate goods and services of one enterprise from another.
Things that can be registered as trademarks are also found under the same section. They include
things like labels, names, signatures, numbers etc,. (TRADEMARKS ACT 2019, 2019).

However, there are some signs that cannot be registered under the Trademarks Act 2019. Some
examples include;
- Trademarks that cannot be distinguished from other enterprises
- Trademarks that will deceive or confuse the general public
- Trademarks that are contrary to the law
- Signs which are contrary to the morality and public interest of the country
- Signs that contain symbols like the national flag, royal arms, national emblems.
- Trademarks that could cause confusion or deceive the public etc,.

A case example of a trademark causing confusion is the Danone Biscuits Manufacturing (M)
Sdn Bhd v Hwa Tai industries Bhd. in this case, the plaintiff, a British Company that has a
registered trademark and had been selling their products “ChipsMore” in Malaysia for the past
20 years. In 2001, the plaintiff discovered that the defendant had been selling cookies under the
brand “ChipsPlus”. It was held by the Malaysian courts that the defendant was infringing the
trademark of the British company and that the formatting of the words were quite similar hence
they could cause confusion and deception. Allowing the Malaysian company to continue would
damage the British company. (Case Study 15 – Trade mark infringement / ’passing off’ case in
Malaysia | South-East Asia IPR SME Helpdesk, 2011).

It is also important to note that trademarks can be established without registration. A case
example is Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia. This case happened in
2014, the plaintiff was commissioned to supply sports clothes bearing a design come up with by
MSN for athletes to wear to the SEA games. However, the plaintiff registered the design
claiming it was the owner without the knowledge of MSN. It was held by the courts that the
registration by the plaintiff was unlawful and it was not done in good faith. (Fauzy, 2014).

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 b) Registration of trademarks

Chapter 2 of the Trademarks Act 2019 contains all the requirements for a trademark to be
registered. Section 17(1) says that a bona fide proprietor of a trademark may apply for
registration if the person is already using or has intentions to use the trademark or the person has
authorized or has the objective of allowing another person to use the trademark. Subsection 2
says that registration needs to be done within the prescribed time with a prescribed fee and it will
be registered in the form that is determined by the registrar. (TRADEMARKS ACT 2019, 2019).

In cases where the trademark is in any language other than english, roman capitals or the national
language, it is upon the applicant to provide a translation and transliteration of the trademark or
any other information required by the registrar. This is highlighted under subsection 3 of the act.
In cases where subsection 2 and 3 are not fulfilled, then under subsection 4 it will be considered
that the application has been withdrawn. A request for expedited examination can be made by the
applicant to the registrar by filling out an application in the form as decided by the registrar and
it needs to be done within the predetermined period and the predetermined fee needs to be paid
as well. It takes 12-18 months for a certificate of registration to be issued. (Hishammuddin Allen,
2019).

c) Classification of trademarks

When it comes to classification of trademarks, Malaysia follows the Nice classification and the
Madrid protocol. The Nice agreement concerns the international classification of goods and
services for the objective of the registration of marks and the Vienna agreement establishing the
international classification of the figurative elements of marks. The Madrid agreement also
concerns the international registration of marks. Classification of trademarks is found under
section 19 of the Trademarks Act 2019. This Act allows multi-class applications of trademarks
with protocols that need to be followed unlike the Trademarks Act 1976. (Hishammuddin
Allen, 2019).

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 d) Examination procedure before registration of trademarks.

A substantive and formality search and check is carried out by the IPMC on all applications of
the mark. The ‘scope of trademark’ contains all the factors that the registrar is supposed to
consider. In cases where the registrar dismisses the application for registration, the applicant can
appeal via writing to the IPMC. If they are unsuccessful, they can request an ex parte hearing.

Reasons why the registrar can refuse to register a mark include; signs that cannot be represented
graphically and they do not differentiate the goods and services offered by the applicant from
other firms that offer similar goods and services, the trademark does not contain any unique
characteristic, if the mark contains name of a country or a recognized geographical indication, if
the use of the trademark will deceive the general public or cause confusion among them, the
trademark is contrary to any law etc,. Section 23 and 24 of the Trademarks Act 2019 contains
all the reasons why a registrar may reject the application.

A declaration of use or non-use does not need to be filled. However, in cases where a mark has
not been used continuously for three years after registration, it may be revoked for non-use. This
is covered under section 46 of the Trademarks Act 2019. Right of priority can be claimed under
the Paris convention as long as the application was made six months from the date of convention
application.

It is not mandatory to use the registered trademark symbol but it is an offence if the symbol is
used for marks that have not been registered.

(Hishammuddin Allen, 2019).

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 e) Opposition from third-parties

In cases where the application is accepted by IPMC, it is published in the public gazette. Under
the trademarks regulation 1997, registrations can be opposed two months from the date they
were published by third parties. Some of the reasons why an application can be opposed is;use of
the mark is unlawful, the applicant is not the legal owner of the mark, the mark does not meet the
registration criteria among others. (Hishammuddin Allen, 2019).

In cases where a mark was not opposed during the set opposition period and the mark ends up
being registered, a court revocation action can still be filed by a third-party. A case example is
Hakubaku Co Ltd v Asiamega Food Manufacturers Sdn Bhd. The plaintiff , a Japanese
noodle company that tried to register their trademark in Malaysia but it was not allowed because
it conflicted with the defendants trademark which was identical. Both parties sold the same
goods and had the same target customers. One of the arguments that the defendant put across
was that the plaintiff did not oppose the registration of the mark during the prescribed opposition
period. However, the argument was not accepted by the court and it was held that the plaintiff
was the first user and he was the owner of the mark by common law. This was because the
defendant did not provide any evidence that they came up with the mark on their own among
other things. Hence it was held that the defendant cannot use that mark because it would cause
confusion among the public due to the similarity hence the plaintiff won the case. (No Noodling
About: Hakubaku Co. Ltd. v Asiamega Food Manufacturers Sdn. Bhd. - KASS | IP Experts,
2019).

In the case of Yong Teng Hing Hong Kong Trading Co & Anor v Walton International Ltd,
the defendant filed an application to register the use of a trademark which was rejected by the
registrar. The defendant then filed an appeal in the high court which was also dismissed on the
grounds that the plaintiff was the first user of the trademark and the defendant did not have any
‘good will’ with the products or reputation regarding the trademark. The defendant appealed to
the court of appeal again which overturned the decision of the high court and registrar. The
defendant then applied for leave to appeal to the federal court. The question was whether the
high court had an appellate or original jurisdiction when hearing the appeal from the registrar. It

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was held that the registrar of trademarks is not a subordinate court and that it had an original
jurisdiction when hearing the case and that the word appeal did not necessarily mean appeal as
originally understood. (Soo, li lee and Yi Lim, 2012).

Other reasons where parties can apply for revocation of registered trademarks is under section 47
of Trademarks Act 2019 on the reason that registration was made without sufficient cause and
section 46 of the same act on the grounds of non-use. (Hishammuddin Allen, 2019).

f) Duration of validity of the trademark

The registered mark is valid for 10 years from the date of registration and it can also be renewed
anytime before expiry. A penalty is required if renewal is done late. Currently, a period of 6
months after expiry of the mark is given as a grace period for renewal. This is found under
section 39 of the Trademarks Act 2019.

A registered mark can also be removed from the register upon the request of the right holders
under section 44 of the Trademarks Act 2019.

(Hishammuddin Allen, 2019).

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Conclusion

To sum everything up, a trademark has to follow all the requirements set in the Trademarks Act
2019 in order to be registered by the registrar. Marks that can confuse or deceive the public, are
contrary to the law, contain national emblems, flags etc, will not be registered. In cases where a
mark is rejected by the registrar, the applicant can write to the IPMC or they can request a
hearing to appeal. There is a prescribed duration and payment that needs to be done for
registration.

Trademarks in Malaysia follow the nice agreement and Madrid protocol when it comes to
classification. Where marks have already been registered, a third party can still raise objections if
they can prove that either the application is unlawful, applicant is not the legal owner,
registration requirements have not been met etc,.

Trademarks are valid for a period of 10 years and the registration needs to be renewed during the
provided grace period.

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References

1. Hishammuddin Allen, L., 2019. Trademarks in Malaysia | Lexology. [online]

Lexology.com. Available at: <https://www.lexology.com/library/detail.aspx?g=c20da2b0-
7e56-44ea-9ed3-8f0f4831c581> [Accessed 28 June 2021].

2. KASS | IP Experts. 2019. No Noodling About: Hakubaku Co. Ltd. v Asiamega Food
Manufacturers Sdn. Bhd. - KASS | IP Experts. [online] Available at:
<https://www.kass.com.my/articles/no-noodling-about-hakubaku-co-ltd-v-asiamega-food-
manufacturers-sdn-bhd/> [Accessed 28 June 2021].

3. Soo, M., li lee, L. and Yi Lim, B., 2012. Malaysia Courts tackle key issues: jurisdiction
and broadcasting rights. [online] Available at: <http://file:///D:/download/pcourts-tackle-
key-issues-jurisdiction-and-broadcasting-rightsp.pdf> [Accessed 28 June 2021].

4. Wipo.int. n.d. Trademarks. [online] Available at: <https://www.wipo.int/trademarks/en/>

[Accessed 28 June 2021].

5. Myipo.gov.my. 2019. TRADEMARKS ACT 2019. [online] Available at:

<https://www.myipo.gov.my/wp-content/uploads/2019/12/ACT-815-TRADEMARKS-ACT-
201.pdf> [Accessed 28 June 2021].

6. Fauzy, Z., 2014. Case highlight: Mesuma Sports Sdn Bhd v Majlis Sukan Negara
Malaysia [2014] 1 LNS 1054 - Singapore IP Law Firm | Ella Cheong LLC. [online]
Singapore IP Law Firm | Ella Cheong LLC. Available at:
<https://www.ellacheong.asia/case-highlight-mesuma-sports-sdn-bhd-v-majlis-sukan-
negara-malaysia-2014-1-lns-1054/> [Accessed 28 June 2021].

7. Southeast Asia-ipr helpdesk.eu. 2011. Case Study 15 – Trade mark infringement /

’passing off’ case in Malaysia | South-East Asia IPR SME Helpdesk. [online] Available
at: <https://www.southeastasia-iprhelpdesk.eu/en/case-studies/case-study-15-trade-
mark-infringement-passing-case-malaysia> [Accessed 28 June 2021].

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