MaxineKhoo

Legal Framework and Rights of Proprietors

The Trademark Act 2019 provides a comprehensive framework for trademark protection and enforcement in Malaysia. A registered trademark grants the proprietor exclusive rights to use the trademark and to authorize others to use it. If infringement occurs, the proprietor can seek statutory remedies, including injunctions, damages, and other legal actions.

Exploitation and Enforcement

Exclusive Rights: Proprietors have exclusive rights to use the trademark for registered products and services, excluding others. Unauthorized use can be stopped through civil suits.
Remedies: Proprietors can access remedies like injunctions, account of profits, and damages, including exemplary damages, for infringement.
Registrable Transactions: Trademarks are considered personal and movable property, allowing them to be sold or assigned. Assignments must be registered with MyIPO to maintain enforceability.
Licensing: Trademarks can be licensed exclusively or non-exclusively. Exclusive licenses grant sole usage rights to the licensee, while non-exclusive licenses allow both the licensor and multiple licensees to use the trademark.
Maintenance of Rights

Proprietors must actively use the trademark in commerce. Non-use for three years can lead to revocation if an aggrieved party demonstrates substantial interest in the trademark.

Trademark Infringement
Definition and Scope

Trademark infringement occurs when an identical or similar sign is used without authorization, causing public confusion. Unauthorized use includes applying the trademark to goods, offering them for sale, and providing services under the infringing sign. Some acts, like using one’s name or descriptive terms in good faith, do not constitute infringement.

Actions Against Infringement
Civil Remedies

Cease and Desist Letter: The proprietor can send a letter demanding the cessation of unauthorized use, public clarification, account of profits, and damages.
Civil Proceedings: If the infringer refuses to settle, the proprietor can initiate legal action, seeking remedies like injunctions, delivery up of infringing goods, and damages.
Criminal Sanctions

Enforcement Raids: The Ministry of Domestic Trade and Cost of Living can investigate and seize counterfeit products. The proprietor or their representative must verify the seized items.
Registrar’s Verification: For similar but not identical infringements, the proprietor should seek verification from the registry before a raid.
Border Measures

Objection to Importation: Proprietors can apply to MyIPO to object to the importation of infringing goods, providing details about the importer, shipment, and arrival location. Customs can then take action to seize and detain the goods.
Monitoring and Preventive Measures
Registration and Monitoring

Registration is crucial for effective enforcement and protection. Proactive monitoring and preventive measures can help detect potential infringements early.

Basket of Brands (BOB): An initiative by the Ministry of Domestic Trade & Living Costs (KPDN) allows proprietors to enlist their brands in a central database for market supervision without lodging official complaints. Proprietors must cooperate fully by submitting verification reports for counterfeit goods.
Conclusion

Trademark laws in Malaysia offer a robust framework for enforcement and protection. Proprietors should leverage both legal remedies and preventive measures to safeguard their trademarks and maintain brand integrity.

The Malaysian Trademarks Act aims to protect the rights of trademark owners and ensure that consumers can accurately identify the source of products or services. A trademark is defined as any sign used to distinguish the source of goods or services, such as names, logos, letters, numbers, or combinations thereof. The law establishes the registration procedure and protection measures for trademarks, as well as penalties and remedies for trademark infringement. Through trademark registration, trademark owners acquire exclusive rights to their trademarks, preventing others from using similar or identical trademarks in the same category. The Malaysian Trademarks Act aims to promote fair competition and innovation, maintain market order, and provide effective legal protection for trademark owners and consumers.

A trademark is an intangible asset that represents intellectual property, legally protected under Malaysia’s Trademarks Act 2019 (TMA). It encompasses any sign or…