Well-known trademarks are one of the exceptions to the principle of registration. These trademarks are protected even if they are not registered in Malaysia. This is because well-known trademarks gain international recognition and value due to their extensive use and aggressive marketing efforts. To safeguard their reputation and preserve the exclusivity that has contributed to their success, strong protection is essential for such trademarks. The legal frameworks for well-known trademarks vary from country to country, reflecting a complex network of procedural nuances and enforcement mechanisms unique to each jurisdiction. In this article, we will discuss the legal protection of well-known trademarks in Malaysia.
Definition of Well-Known Trademarks
A well-known trademark is more than just a name or symbol. It represents exceptional recognition and distinction in the public eye. These trademarks often become household names, recognized far beyond the specific industry they belong to. Examples include Coca-Cola, Google, Louis Vuitton, Adidas, and Rolex. Their names and logos are instantly recognizable across the globe. This widespread recognition is a crucial factor in establishing a trademark’s well-known status.
Governing Laws in Malaysia
Trademark Protection in Malaysia is mainly governed under the Trademarks Act 2019 and the Trademark Regulations 2019 repealing the previous Trade Marks Act 1976 and Trade Mark Regulations 1983. Both governing laws are administered by the Intellectual Property Corporation of Malaysia, also known as MyIPO.
Governing Sections in Malaysia
Section 4 of the Trademarks Act 2019 defines a ‘well-known trademark’ as follows:
4(1) “Well-known trademark” means any trademark that is well-known in Malaysia and that belongs to a person who –
(a) is a national of a convention country; or
(b) is domiciled, or has a real and effective industrial or commercial establishment, in a Convention Country, whether or not that person carries on business, or has any goodwill, in Malaysia.
4(2) In determining whether a trademark is well-known in Malaysia, the Registrar or the Court shall have regard to the criteria as prescribed.
According to Section 4(1) above, owners of well-known trademarks are not required to demonstrate business transactions or goodwill in Malaysia, as long as they can establish that their trademarks qualify as ‘well-known trademarks’.
According to Section 4(2) above, the Registrar or the Court may refer to Regulation 5 of the Trademarks Regulations 2019, which outlines the following criteria:
In determining whether a trademark is well-known in Malaysia, the Registrar or the Court shall have regard to the following criteria:
a) the extent of knowledge or recognition of the trademark in the relevant sector of the public;
(b) the duration and extent, and geographical area of any use of the trademark;
(c) the duration and extent of any promotion of the goods or services where the trademark applies and the geographical areas where the promotion is carried out;
(d) the duration and place of registration, or duration and place of application for registration, of the trademark, to the extent that they reflect use or recognition of the trademark;
(e) the record of successful enforcement of rights in the trade, in particular, the extent to which the trademark was recognised as well known by competent authorities; and
(f) the value associated with it.
Regulation 5 of the Trademarks Regulations 2019 above clearly specifies the factors that the Registrar or the Court must consider when determining whether a mark qualifies as a ‘well-known trademark’.
The above Section and Regulation can be enforced by trademark owners in cases of trademark infringement, as well as in passing off claims if the mark is not registered in Malaysia. They can also be invoked during the trademark opposition procedure in Malaysia.
Provisional Refusal from the Registry of Trademarks
There are trademark applications filed in Malaysia that are considered similar or identical to ‘well-known trademark’ and under Section 24(3) of the Trademarks Act 2019, the Registrar shall refuse to register a trademark if –
(a) it is identical with or similar to a well-known trademark which is not registered in Malaysia and it is to be registered for the identical goods or services of the proprietor of the well-known trademark; or
(b) it is identical with or similar to a well-known trademark which is registered in Malaysia and is to be registered for goods or services which are not identical or not similar to those in respect of which the well-known trademark is registered and –
(i) the use of the trademark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known trademark;
(ii) there exists a likelihood of confusion on the part of the public because of such use; and
(iii) the interests of the proprietor of the well-known trademark are likely to be damaged by such use.
Section 24(3) of the Trademarks Act 2019 was introduced in Malaysia to safeguard the rights of ‘well-known trademarks.’ The Registrar is diligent in ensuring that such marks are refused registration during the examination stage to protect their well-known status.
Conclusion
The new Trademarks Act 2019 and the Trademark Regulations 2019 in Malaysia illustrate how the rights of ‘well-known trademarks’ are protected. This means that owners of such trademarks can safeguard and enforce their rights even if the trademarks have not been used in Malaysia, provided there is a likelihood of confusion or deception concerning the goods or services.
Please feel free to get in touch with us if you have any inquiries regarding trademark registration issues in Malaysia. We will be happy to assist you.
Written by:
Hardeep Singh