2. The enforcement of a registered trademark
proprietor’s right in 3 ways;
1. Civil actions for trademark infringement
2. Criminal action for trademark offences
3. Administrative actions by way of border
measures.
3. Enforcement
Civil matters concerning an infringement of a
registered trademark and actions to determine
the validity of a registered trademark are heard
at the High Court. infringement, passing-off or
cancellation of a registered trademark .
There is an IP Court in Kuala Lumpur to hear civil
IP disputes, including disputes in relation to
registered trademark s.
Criminal prosecutions under sections 99 to 102
of theTA are heard at the Sessions Court.
Opposition proceedings are commenced at the
Trademark s Registry with appeals from
decisions of the TM Registrar are filed at the
High Court.
4. Representation
Matters concerning trademark infringement and
the validity of trademark registrations are heard
before the courts, and only an advocate and
solicitor of the High Courts of Malaya and the
High Courts of Sabah and Sarawak, depending
on where the case is heard, can represent the
parties.
On the other hand, registered trademark agents
can represent parties in contentious matters (for
example, opposition proceedings) at the
Trademark s Registry.
5. Limitation
Limitation for civil actions is governed by the
Limitation Act 1953. The limitation period for an
action to recover damages for infringement of a
registered trademark is six years from the last
act of infringement.
6. Registered proprietor has the right pursuant to
S56(1) to institute proceedings in High Court
against any person who has infringed or is
infringing his registered trademark, and under
S56(2) against any person who has performed
acts which will make it likely that infringement
will occur.
7.
8. Criminal offences relating to trademark infringement were previously provided
for under the TDA. These criminal offences are now consolidated and provided
for under the TA (in particular, sections 99 to 102). However, other false trade
descriptions (other than those relating to trademark infringement) are still
governed by theTDA.
Where the offending trademark or sign is not identical to the registered
trademark , the registered proprietor can apply to the TM Registrar for a
Registrar's Verification (RV) to verify that the offending trademark or sign is
confusingly similar to the registered trademark under the TA as this would be
necessary in support of any further enforcement action (section 112(3), TA).
Under the TDA, this was done by obtaining a Trade Description Order (TDO) from
the High Court.
Enforcement actions are initiated by lodging a complaint with the enforcement
wing of the Ministry of Domestic Trade and Consumer Affairs (MDTCA),
supported by the relevant supporting documents (including the RV if necessary).
The MDTCA then conducts enforcement action, including search and seizure
followed by prosecution if necessary.
Penalties for offences under sections 99 to 102 of the TA include a fine and/or
imprisonment .
9. Border
Measures
Border measures are available under Part XIII of the
TA and section 31 of the Customs Act.
A registered trademark owner must file an official
objection to the importation of counterfeit goods
with the TM Registrar (s 82, TA). If it is approved, the
Registrar notifies an "authorised officer" at the
customs who then takes the necessary action to
prohibit the importation of goods identified in the
notice, and conducts the necessary raids and
seizures and detains the identified goods.
The Royal Malaysian Customs Department is
permitted by order to prevent the import into and
export from Malaysia of any prohibited goods both
absolutely and conditionally (section 31, Customs Act
1967). While "counterfeit goods" have not been
expressly included as "prohibited goods" within the
definition of the Customs Act, "prohibited goods"
have been defined to include goods which are
prohibited by any other written law, which could in
this case include theTA.
11. Passing off is a common law tort which can be
used to enforce unregistered trademark rights.
Passing off protects the property in businesses
or goodwill of the plaintiffs likely to be injured by
the misrepresentation by the defendant.
No one has the right to represent his goods as
goods of another. A trade mark owner can take a
legal action against a person who sells his goods
as the goods of another.
The plaintiff have to prove that they have
acquired the necessary goodwill by their own
endeavours or have acquired it from their
predecessors who had done so.
12. Elements of
passing off
In Reckitt & Colman Products Ltd v Borden Inc &
Ors [1990] 1 All ER 873, in order to establish an
action of passing off, the plaintiff must prove the
following elements ;
1. That they have sufficient reputation or goodwill
in the mark, trademark, get up or other indicia in
question in this country
2. That the actions of the defendants are likely to
and/or have caused misrepresentation, and
3. That the plaintiffs have suffered or is likely to
suffer damage or injury to their business or
goodwill as a result of the defendant’s
misrepresentation
13. Supreme Court in Seet Chuan Seng & Anor v
Tee Yih Jia Foods Manufacturing Pte ltd [1994]
2 MLJ 770
In order to create a valid cause of action for
passing off, there must be a misrepresentation
made by the trade to prospective customers
which is calculated to injure the business or
goodwill of another and has caused actual
damage to the business or goodwill of another.
14.
15. The fundamental rule is, that one man has no
right to put off his goods for sale as the goods of
a rival trader, and he cannot ... be allowed to
use names, marks, letters or other indicia by
which he may induce purchasers to believe that
the goods which he is selling are the
manufacture of another person. (See Leather
Cloth Co Ltd v American Leather Cloth Co Ltd
(1865) 11 HL Cas 523 per Lord Kingsdowne )
16. Reckitt & Cloman v Borden [1990] RPC 341 (HL)
Lord Oliver: “The law of passing off can be summarized in one short
general proposition- no man may pass off his goods as those of another.
More specifically, it may be expressed in terms of the elements which
the claimant in such an action has to prove in order to succeed.
First, Plaintiff must establish goodwill or reputation attached to the
goods or sevices which he supplies in the mind of the purchasing public
by association with the identifying “get up”. Such that“get-up” is
recognized by the public as distinctive specifically of the plaintiff’s good
and services.
Second, Plaintiff must demonstrate a misrepresentation by the
defendant to public (whether or not intentional) leading or likely to lead
the public to believe that goods or services offered by the defendant are
the goods or services by the Plaintiff.
17.
18. Trade mark
infringement
/ ’passing off’
case in
Malaysia
Case Study
A British manufacturer of biscuits has been selling
cookies in Malaysia for more than 20 years, and has
had a registered trade mark 'ChipsMore' for these
goods during that time.
Two years ago a Malaysian company started
manufacturing and selling cookies under the brand
'ChipsPlus.’
The British company was advised that they could sue
the Malaysian company for trade mark infringement
and also 'passing off', which can be used to enforce
unregistered trade mark rights and exists in Malaysia
as it is a Common Law country.
For trade mark infringement, the British company
had to prove that the Malaysian company's brand so
nearly resembled their own that it was likely to
deceive or cause confusion in the course of trade in
relation to their own products.
19. For 'passing off' the British company had to prove that the Malaysian
company was misrepresenting their goods as being connected with the
British company. They also had to prove that their own brand had acquired
'goodwill' and reputation in the marketplace, and that they would suffer
damage as a result.
Outcome
The Malaysian court held that 'ChipsPlus' was an infringement of
'ChipsMore' as they were similar marks for identical goods and likely to
deceive or cause confusion. In particular, the 'Chips' part was phonetically
identical, the suffixes 'More' and 'Plus' have a similar meaning, and the
formatting of the words was similar.
In addition, the claim for 'passing off' was successful. The British
manufacturer had been selling cookies in Malaysia for over 20 years and
therefore had no difficulty in demonstrating substantial goodwill and
reputation in the brand. The appearance of the 'ChipsPlus' product was
held to be strikingly similar to the 'ChipsMore' product, including similar
colours, fonts and other aspects of the composition, which was indicative
of misrepresentation. The court determined that the British manufacturer
would therefore suffer damage (loss of business) if the Malaysian company
was allowed to continue.
20. Lessons Learnt:
Register your brands as trade marks in Southeast
Asia
A brand does not have to be identical to infringe
a trade mark
Some countries provide a Common Law right of
'passing off' (but the burden of proof is higher)
22. SCORESystem
S - Subject
Matter
Protectable
• Marks for goods or services (S 2, a ‘sign’)
C- Criteria to be
satisfied
• Satisfies S 3 (sign, represented graphically distinctive),
• does not fall under S 23 (absolute refusal) & S 24 (relative
refusal)
O - Ownership • The registered proprietor is the owner S16, 2
• Who can sue ?The owner in S 48, 56
R – Rights
Infringed
• S 54 (1) – ‘use’ of a sign
• S 54(2) – likelihood of confusion
E- Exceptions
and defences
• S 55 – acts not amounting to infringement
• S 48(5) –
• S 25 – honest concurrent use
23. TRADEMARK
REGISTRABLE
S3(1)
Sign (S2) ,
Represented
Graphically,
Distinctive (S2)
NON- REGISTRABLE
Absolute Refusal
S 23(1) not
Represented
Graphically, not
distinctive, suggestive,
customary
S23(4) name of a
country, S23(5) likely to
deceive, contrary to
law, public interest,
scandalous & offensive,
security, emblems,
chemical compound
Relative Refusal S24
identical trademarks,
identical to goods and
services
REGISTRATION
ALTERATION
S42(2)
CORRECT
S43(1)
REGISTRATION
PROCEDURE
S16-20, 22
Renewal S 39(1)
INFRINGEMENT
INFRINGMENT
S 56
S54(1)
‘Use’ of a sign (S7),
in the course of trade (S2),
without consent of
registered proprietor
S54(2)
Likelihood of confusion
NOT INFRINGE
(DEFENCE)
S55
A person’s name
use in good faith,
descriptive use,
use of registered
mark,
S48(5)
S25 honest
concurrent use
EFFECT
Exclusive Rights,
Legal Evidence
DEALINGS
Assignment /
transmission
S64(1),
Licensing S69
CANCEL
S44(1)
REVOKE
By Registrar S45,
By Court S 46
TRADEMARK ENFORCEMENT
Civil – Infringement S56, 54
Criminal – S 99-108
Border Measure - S 81-94
UNREGISTEREDTRADEMARK
S 159
Passing Off
