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Trade Mark

Under section 3(1) of the Malaysia Trade Marks Act 1976 (henceforth referred to as the “said Act”) the term “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof.  Whereas “Trade Mark”  is defined as a mark used or proposed to be used in relation to goods and services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and services and a person having the right either as a proprietor or as a registered user to use the mark whether with or without an indication of the identity of the person, and means, in relation to Part IX of the Trade Marks Act 1976 , a mark registrable or registered under the said Part IX.

Any marks to be registered must be used or intended to be used. The two cardinal principle of usage of marks is that firstly, there must be a bona fide intention to use it and secondly, there must be actual use of the mark wherein the person using the mark can either be the proprietor or the registered user. It has to be noted that a registered trademark affords a monopoly and as such documents establishing the monopoly need to be construed contra proferentum.

Careful steps are taken in registering the said trade mark to protect against infringement of trade marks. Section 38 of the Act deals with infringement of trademarks wherein one cannot use an identical or similar mark to the one that is registered and one also cannot use the trade mark of another without the consent of the trade mark’s proprietor.

In determining whether two trade marks would be confused with each other it must be judged by the look and sound, the goods to which the words are to be applied, the nature and kind of consumer who are likely to buy the said goods and all other surrounding circumstances.  The law does cater for exceptions, e.g. under section 40 of the said Act, it is not infringement of trade mark if one acted in good faith without notice, is a honest concurrent user and or is a parallel importer.

In the event there is an infringement, there are wide remedies available to the Plaintiff which inter alia includes injunctions and damages or accounts of profits.  An injunction would be the urgent step taken in order to preserve the trademark from being infringed further before the determination of the case in the main suit.  An injunction would be granted if there are sufficient materials before the court to show prima facie infringement, existence of exceptional and extraordinary circumstances justifying the injunction being granted, the plaintiff would not be adequately compensated by damages, the balance of convenience lies in favour of the Plaintiff and there was full and frank disclosure.  In some cases, the court would grant an Anton Pillar Order to enable the Plaintiff to enter the Defendant’s premises to inspect documents, files etc and removing items that belong to the Plaintiff.  As far as damages and accounts for profits are concerned it includes the loss of sales and loss of consumers to the brand name due to the said infringement.

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