Legal frameworkDomestic law
What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademarks is:
- the Trademarks Act 1976; and
- the Trade Descriptions Act 2011.
The Trademarks Bill 2019 was passed by the House of Representatives on 2 July 2019 and 23 July 2019 and the Trademarks Act 2019 is likely to come into force by the last quarter of 2019 or early 2020.International law
Which international trademark agreements has your jurisdiction signed?
Malaysia joined the World Intellectual Property Organisation in 1989 and the World Trade Organisation on 1 January 1995. In addition, Malaysia became a signatory to:
- the Paris Convention for the Protection of Industrial Property on 23 June 1988 (which entered into force on 1 January 1989);
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks on 28 June 2007 (which entered into force on 28 September 2007); and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights including Trade in Counterfeit Goods, concluded within the framework of the World Trade Organisation on 1 January 1995.
Malaysia has also acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.Regulators
Which government bodies regulate trademark law?
The Intellectual Property Corporation of Malaysia regulates matters concerning trademarks and other intellectual property in Malaysia.
Registration and useOwnership of marks
Who may apply for registration?
Parties that use or intend to use a mark may apply for registration under Section 25(1) of the Trademarks Act 1976.Scope of trademark
What may and may not be protected and registered as a trademark?
The Trademarks Act 1976
Section 3 of the Trademarks Act 1976 defines as registrable:
- devices; or
- any combination of the above.
This can include:
- word marks;
- numbers; and
- packaging trade dress.
Trademarks can be registrable if they contain or consist of at least one of the following:
- the name of a person or entity represented in a special or particular manner;
- the applicant’s signature;
- invented words;
- a word with no direct reference to the character or quality of goods or services which is not a geographical name or surname according to its general meaning; or
- a distinctive mark (Section 10(1) of the Trademarks Act 1976).
A mark or part of a mark cannot be registered if:
- its use is likely to deceive or confuse the public or would be contrary to the law;
- it is offensive or would be unentitled to protection by any court of law;
- it is prejudicial to the national interests or security;
- it is identical to or nearly resembles a mark which is well known in Malaysia for the same type of goods or services of another proprietor;
- it is well known and registered in Malaysia for other goods or services and its use would indicate a connection with the proprietor of the well-known mark and the interests of the proprietor are likely to be damaged by such use;
- it contains a geographical indication of goods not originating in the territory indicated;
- it is a mark for wines which contains a geographical indication identifying said wines;
- it includes the words ‘patent’, ‘patented’, ‘by royal letters patent’, ‘registered’, ‘registered design’ or ‘copyright’ or such words in any language;
- it is identical to a trademark belonging to a different rights holder for the same or closely related goods or services; or
- it closely resembles another trademark and is likely to deceive or cause confusion (Sections 14, 15 and 19 of the Trademarks Act 1976).
Certification marks are registrable in Malaysia if:
- the goods or services achieve certain standards regarding their origin, material used, quality, accuracy and other characteristics; and
- the mark is inherently capable of distinguishing between goods or services (Section 56(2) of the Trademarks Act 1976).
The Trademarks Act 2019
Non-traditional marks will be registrable under the Trademarks Act 2019, which is likely to come into force by the last quarter of 2019 or early 2020.
Section 3 of Trademarks Act 2019 defines a ‘trademark’ as any sign capable of being represented graphically which can distinguish between the goods or services of different undertakings.
Under Section 2 of the act a ‘sign’ can include:
- the shape of goods or their packaging;
- motion sequences; or
- any combination of the above.
Under the Trademarks Act 2019, the following signs cannot be registered:
- signs which cannot be represented graphically and thus cannot distinguish between different goods or services;
- trademarks which are not distinctive;
- trademarks which consist exclusively of signs or indications of the type, quality, quantity, intended purpose, value, time of production, geographical origin or other characteristics of goods or services;
- signs which consist exclusively of signs or indications that have become customary in the national language or in the bona fide and established practices of the market in question;
- signs which consist exclusively of a shape which:
- results from the nature of the goods or which is necessary to obtain a technical result; or
- gives substantial value to the goods;
- signs which consist exclusively of a country’s name or recognised geographical indications;
- trademarks that are likely to deceive or cause confusion to the public or that are contrary to any written law;
- signs which could deceive or mislead the public as to the nature, quality or geographical origin of the goods or services on offer;
- signs which are contrary to the public interest or morality;
- signs which are scandalous, offensive or which would be unentitled to protection in any court of law;
- signs which are or might be prejudicial to the national interest or security;
- the name or representation of another person (either living or dead) without their consent or that of the deceased’s representative;
- signs that contain:
- the flag of a country;
- national emblems;
- insignia; or
- royal arms;
- a word which is commonly used for a chemical element or single chemical compound, or which the World Health Organisation has declared an international non-proprietary name; or
- signs featuring the words 'patent', 'patented', 'by royal letters patent', 'registered', 'registered design' or 'copyright' or such words in any language (Section 23 of the Trademark Act 2019).
The registrar will refuse to register a trademark if:
- it is identical with an earlier trademark and for identical goods or services;
- there is a likelihood of confusion with:
- an identical earlier trademark for similar goods or services;
- similar earlier trademarks for identical or similar goods or services;
- identical or similar well-known trademarks (not registered in Malaysia) for identical goods or services;
- identical or similar well-known trademarks (registered in Malaysia) that indicate a connection with a well-known registered proprietor and create a likelihood of confusion that is likely to damage the well-known registered proprietor’s interests; or
- its use is prevented by rule of law protecting unregistered trademarks (including law for passing off, copyright and industrial designs) (Section 24 of the Trademarks Act 2019).
Collective marks and certification marks are registrable under the Trademarks Act 2019.Unregistered trademarks
Can trademark rights be established without registration?
Yes. In Malaysia the first user of a trademark is the common law proprietor of said mark (Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia; Pendaftar Cap Dagangan Malaysia (Interested Party)  9 CLJ 125, FC).
The owner of an unregistered trademark may initiate a tort of passing off action against infringers.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Well-known trademarks are accorded protection in Malaysia. The following factors are considered when determining whether a mark is well known.
The criteria of well-known marks includes:
- the degree of knowledge or recognition of the mark among the relevant sector of the public;
- the duration, extent and geographical area of the mark’s use, promotion or application;
- the mark’s enforcement record and recognition of its status by the competent authorities; and
- the mark’s associated value (Regulation 13B of the Trademarks Regulations 2011).
These factors are neither mandatory nor exhaustive (X1R Global Holdings Sdn Bhd & Anor v Y-Teq Auto Parts (M), Sdn Bhd  6 MLRH 41;  3 CLJ 454 (CA)).
As noted in the ‘Scope of trademark’, the proprietor of a well-known mark may oppose a mark’s registration. Further, the rights holder can initiate an infringement action based on tort of passing off to prohibit the use of an infringing mark and claim for damages.
Under Section 4 of the Trademarks Act 2019, a ‘well-known trademark’ is defined as any trademark that:
- is well-known in Malaysia; and
- belongs to a national of or a person domiciled in a Paris Convention signatory state or who has a real and effective industrial or commercial establishment in a Paris Convention signatory state (whether or not that person carries out business or has goodwill in Malaysia).
This definition also expressly provides that a well-known trademark is entitled to protection irrespective of registrations or applications in Malaysia or whether the rights holder carries out business or has goodwill in Malaysia.The benefits of registration
What are the benefits of registration?
The registered owner of a trademark has the exclusive right to use the mark for the relevant goods and services and to exploit its trademark through licensing or assignment (Sections 35, 48 and 55 of the Trademarks Act 1976).
Trademark registration is prima facie evidence of the validity of registration in any proceeding and will be deemed proof of the mark’s validity for seven years (Section 36 and 37 of the Trademarks Act 1976).
Under Section 53 of the Trademarks Act 2019, a registered mark is deemed evidence of its validity for five years.
The registered proprietor may initiate a trademark infringement action under Section 38 of the Trademarks Act 1976 (and Section 56(1) of the Trademarks Act 2019).
Remedies for trademark infringement include interim or permanent injunctions, the consignment or deletion of the offending mark, damages and a share of the infringer’s profits.
The following remedies will be available under the Trademarks Act 2019:
- an injunction to prevent infringing goods from entering the market;
- a share of the infringer’s profits;
- additional damages (for infringements involving the use of counterfeit trademarks);
- an order to delete the offending mark;
- consignment of the infringing goods; and
- an order for disposal (Sections 56, 58, 59 and 60 of Trademarks Act 2019).
Border measures are available under the Trademarks Act 1976 (Part XIVA) and the Trademarks Act 2019 (Part XIII). Any party can file an application with the registrar to object to the import of unauthorised goods. The registrar’s approval will be valid for 60 days. In the event of the seizure of unauthorised goods, the applicant must initiate an infringement action.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
Form TM5 (application form) and statutory declaration are required to file trademark applications.
A mark’s representation must be clear and durable and if it exceeds the space provided in Form TM5, it must be mounted on durable material not exceeding 10cm by 10cm and attached to the form.
Electronic filing is available and trademark searches (online or manual searches) are also offered. Trademark searches prior to application are not mandatory. However, it is common practice.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
The usual timeframe from filing a mark application to the issue of a certificate of registration is approximately 12 to 18 months. An expedited examination process is available, under which the general time from filing to the issue of the certificate of registration is approximately eight months.
The typical official filing fees for trademark registration are as follows:
(per mark per class)
Expedited examination process
(per mark per class)
Following a successful registration, a mark takes effect from the date of application (Section 30 of the Trademarks Act 1976).Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
- the International Classification of Goods and Services (Nice Classification); and
- the Madrid Protocol.
Multi-class applications will be available when the Trademarks Act 2019 comes into force.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The IPCM conducts a formality check and a substantive search and examination of all mark applications. (The factors that the registrar will consider are set out in ‘Scope of trademark’.)
In general, letters of consent from the proprietor of the cited mark may be taken into account to overcome any objections. However, consent may not always be the sole and conclusive determining factor.
Applicants can appeal rejected applications or conditions imposed by the IPCM via written submission. If the IPCM maintains its objection, the applicants can appeal and request an ex parte hearing.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
The use of a mark need not be claimed before registration. Proof of use can be filed to establish factual distinctiveness in the event of an objection on the ground of the mark’s non-distinctiveness.
Applicants may claim the right of priority under the Paris Convention provided that the Malaysian application is filed within six months from the date of the convention application.
There is no requirement in Malaysia to file a declaration of use or non-use. However, if an applicant does not use a mark continuously for three years from the date of notification of registration, the mark may be revoked for non-use (Section 46 of the Trademarks Act 1976 and Section 46 of the Trademarks Act 2019 when it comes into force).Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
The ® symbol can be used to denote a registered mark and the ™ symbol to show that the rights in a trademark are claimed by its owner. It is not mandatory for these symbols to be used with the mark. However, it is an offence to use the ® symbol on unregistered marks.Appealing a denied application
Is there an appeal process if the application is denied?
See ‘Examination procedure’. In the event that the IPCM maintains its objection after an ex parte hearing, the applicants may file an appeal with the High Court. All parties have the right of appeal with the Court of Appeal and the Federal Court against High Court decisions.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Following IPCM approval, successful trademark applications are published in the Government Gazette.
Third parties may oppose registrations within two months from their date of publication in the Government Gazette under Regulation 37 of the Trademarks Regulations 1997.
In addition to the grounds highlighted in ‘Scope of trademark’, the following constitute a general basis for opposition grounds:
- the applicant is not the lawful owner of the opposed mark;
- use of the opposed mark is unlawful (eg, due to copyright infringement and other laws); and
- the opposed mark does not meet the registration criteria.
The official filing fees for oppositions are:
- RM650 for manual filing; and
- RM600 for electronic filing
Attorney fees vary.
Assuming that a mark was not opposed during the opposition period and has been registered, third parties can still file a court revocation action (Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Ltd  6 CLJ 337, FC at para 22; Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor, Registrar of Trade Marks (Intervener)  4 CLJ 20, FC at para 25 and 27; and Hakubaku Co Ltd v Asiamega Food Manufacturers Sdn Bhd  1 LNS 2077, at para 13).
Further, aggrieved parties can file court applications to revoke registered marks:
- on the ground that the registration was made without sufficient cause (Section 45 of the Trademarks Act 1976 and Section 47 of Trademarks Act 2019). (See also ‘Scope of trademark’.)
- on the ground of non-use (Section 46 of the Trademarks Act 1976 and Section 46 of Trademarks Act 2019).
The aggrieved party must show that:
- the trademark was registered:
- without the good-faith aim to use it; and
- with no subsequent good-faith use up to one month before the date of application for removal; or
- there was no good-faith use of the mark for the relevant goods or services for a continuous period of at least three years up to one month before the application for removal.
An ‘aggrieved party’ must be a party that has:
- used or has a genuine and present intent to use a trademark in the course of trade which is identical or similar to the registered mark and is not a mere ‘busybody’ (McLaren International Ltd v Lim Yat Meen  5 MLJ 741); or
- a legal interest, right or legitimate expectation in their own mark, which is substantially affected by the presence of the registered mark (Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia (Pendaftar Cap Dagangan Malaysia, interested party)  6 MLJ 465).
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
The registration of a mark is valid for 10 years from the date of application and is renewable. Renewal should be made prior to the expiry of registration. Late renewal is possible on the payment of a penalty. However, a mark is not renewable beyond the one-year grace period after its expiry (Section 41(3) of the Trademarks Act 1976).
The late renewal grace period under the Trademarks Act 2019 is six months (Section 39(6) of the Trademarks Act 2019). (See ‘Use of a trademark and registration’ and ‘Third-party opposition’.)Surrender
What is the procedure for surrendering a trademark registration?
In addition to allowing a registered trademark to lapse after its expiry, rights holders may request the registrar to remove a mark from the register (Section 43(1) of the Trademarks Act 1976 and Section 44 of the Trademarks Act 2019).Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
A trademark may be protected under copyright law, provided that it falls into one of the categories eligible for copyright protection (eg, artistic works). Logos are a form of graphic work, which are considered an artistic work under the Copyright Act 1987.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
In addition to the Trademarks Act 1976 (and the Trademarks Act 2019 when it comes into force), the protection of domain names and trademarks online is governed by the Domain Name Dispute Resolution Policies set out by the Internet Corporation for Assigned Names and Numbers or the Malaysia Network Information Centre.
Licensing and assignmentLicences
May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?
May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The registered owner of a trademark can provide a recordal of registered use whether it is exclusive or otherwise and the terms of licence to a licensee whether for fixed term or otherwise (Section 48(1) of the Trademarks Act 1976).
While it is not mandatory to file a recordal of registered use in the Trademarks Register, the provision for removal on the basis of non-use under Section 46 of the Trademarks Act 1976 recognises only the use of a registered mark by its registered proprietor or user. Thus, if the registered proprietor’s use of its mark is through its licensee, it will be crucial for the licensee to be recorded as a registered user to defeat any claim for expungement under Section 46 of the Trademarks Act 1976 (McLaren International Ltd v Lim Yat Meen  4 CLJ 749, FC).
Under Section 46, a registered mark may be used by a registered proprietor or another party with consent. Thus, the benefit as set out in the preceding paragraph, may not exist under the new legislation. However, the recordal of licence in the Trademarks Register will be deemed to give public notice of a licence (Section 69(5) of the Trademarks Act 2019).
Licensing agreements typically contain:
- the term of licence (eg, fixed period or perpetual until terminated);
- the territory of use;
- the scope of use, including the goods or services, and its extent;
- details of whether it is an exclusive or non-exclusive licence;
- control mechanisms on use;
- details of the ownership of goodwill generated by the licensee;
- the right of termination; and
- a default clause.
What can be assigned?
Trademarks (whether registered or otherwise) may be assigned with or without goodwill (Section 55 of the Trademarks Act 1976).
A part assignment that results in a separation of markets is permitted. A single registration may be split into different export markets, but an assignment which would result in an exclusive market for the same goods in different parts of Malaysia is not permitted (Para 18.51 of the Intellectual Property Corporation of Malaysia Manual for Trade Marks Law and Practice in Malaysia (the IPCM Manual)).
The more usual type of partial assignment involves splitting the goods or services of a single registration. This is permitted under Section 55(3) of the Trademarks Act 1976 only if the two resultant registrations contain no goods or services of the same description (Para 18.54 of IPCM Manual).
An assignment of part of the goods or services of a trademark registration accompanied by a cancellation request for the registration goods or services of the same description as those assigned will usually help an assignment to be accepted (Para 18.55 of IPCM Manual).Assignment documentation
What documents are required for assignment and what form must they take? What procedures apply?
A deed of assignment or agreement is required to assign ownership of a trademark. The deed must clarify:
- that the assignment is for valuable consideration; and
- whether the assignment is absolute and made with goodwill.
The procedure to obtain a deed of assignment is as follows:
- The assignor must apply to register its title by filing Form TM15 together with payment of the prescribed fee (Regulation 63(1) of the Trademarks Regulations 1997).
- The deed of assignment or instrument evidencing assignment must be filed together with the application (Regulation 64(2) of the Trademarks Regulations).
Where an applicant does not claim under an instrument which proves its title, the applicant must file a statement of case that:
- sets out the full particulars of the facts on which the applicant’s claim to be the owner of the trademark is based;
- shows that the mark has been assigned or transferred to the applicant; and
- states that the case will be verified by statutory declaration if the registrar so requires (Regulation 64(5) of the Trademarks Regulations).
Where the assignment is without goodwill, it will be advertised in prominent newspapers or other publications approved by the registrar (Regulation 66(2) of the Trademarks Regulations).Validity of assignment
Must the assignment be recorded for purposes of its validity?
An assignment or transmission must be recorded in the Trademarks Register on application. Although the validity of a mark is not affected by failing to register an assignment, if an assignment is not recorded in the Trademarks Register, the assignee may be unable to establish its exclusive rights afforded under the Trademarks Act 1976 to initiate infringement proceedings.
The assignment takes effect on the date provided in the deed of assignment.Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
Under the Trademarks Act 1976, a security interest cannot be registered over a trademark. When the Trademarks Act 2019 comes into force, a registered trademark may be the subject of a security interest (Section 62 of the Trademarks Act 2019).
EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
The High Court has jurisdiction and power to hear and determine trademark disputes (Bank Kerjasama Rakyat Malaysia Bhd v Koperasi Amanah Pelaburan Bhd (Kuala Lumpur High Court Suit WA-22IP-47-11/2017)).
Civil action can be taken against trademark infringement. A registered mark is deemed to have been infringed when another party uses a mark which:
- is identical to a registered mark; or
- is so similar to a registered mark that it is likely to deceive or cause confusion (Section 38 of the Trademarks Act 1976).
Further, it is an offence under the Trade Descriptions Act 2011 to use a false trade description relating to a trademark. The public prosecutor has the discretion to determine whether prosecution will be undertaken.
Under the Trademarks Act 2019, a party infringes a registered mark if it uses a sign in the course of trade which is:
- identical with a registered trademark for identical goods or services;
- identical with a registered trademark for similar goods or services and results in a likelihood of confusion; or
- similar with a registered trademark for identical goods or services and results in a likelihood of confusion (Section 54 of the Trademarks Act 2019).
Under the Trademarks Act 2019 it is an offence:
- to counterfeit a registered trademark;
- to falsely apply a registered trademark to goods or services which are not genuine goods of the registered proprietor; or
- to knowingly make articles specifically designed as copies of a registered trademark or sign (Sections 99, 100 and 101 of the Trademarks Act 2019).
What is the format of the infringement proceeding?
There is a specialised Intellectual Property High Court at the Kuala Lumpur High Court which hears all IP disputes.
Both parties have the right to present facts and evidence before the court. Documentary evidence and oral testimonies from witnesses and experts (in relevant cases) are important for the trial court to determine the matter at hand.
A trademark infringement action will usually go to trial and be settled nine months after the filing date.
A discovery process is available and provided for by the Rules of Court 2012.
Discovery applications can be made after the close of pleadings before a trial starts. There are three stages in which a discovery application applies:
- the disclosure of documents;
- the inspection of documents; and
- the production of documents.
A trade description order can be applied on an ex parte basis and where obtained it must declare that an infringing mark is a false trade description for the goods or services that it applies to, as specified in the order. The proprietor can lodge a request with the Ministry of Domestic Trade, Co-operatives and Consumerism to conduct a raid as appropriate.Burden of proof
What is the burden of proof to establish infringement or dilution?
Plaintiffs bear the burden of proof to establish trademark infringement on a balance of probabilities.Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
The owner of a registered mark may initiate action against an infringer under Section 38 of the Trademarks Act 1976.
A registered user or licensee can also be a party to an infringement action and institute proceedings in its own name where the registered owner fails to commence proceedings for infringement within two months from being asked to do so by the registered user (Section 51(1) of the Trademarks Act 1976 and Section 70 of the Trademarks Act 2019). In this case, the registered owner will be a defendant in the proceedings (Section 51(2) of the Trademarks Act 1976).
A rights holder may also lodge a complaint with the relevant authority, which may prosecute the infringer as appropriate.Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
A trademark owner may apply to the registrar of trademarks to prohibit the import of counterfeit goods into Malaysia for resale.
On approval, a customs officer will be appointed by the registrar to seize and detain goods within 60 days from the date of approval.
After the goods have been seized, the trademark owner must begin an infringement action and obtain a court order to prevent the goods from being released. Where successful, the seized goods will be destroyed of as per the court’s directions. (Please see ‘The benefits of registration’.)Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
A discovery process is available and provided under the Rules of Court 2012. (Please see ‘Trademark enforcement proceedings’.)Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
An infringement action trial will usually be heard at the High Court within nine months from the date of application.
Ex parte interim injunction applications (together with certificates of urgency) may be heard within one day to one week following the application date, while inter partes interim injunction applications may be heard within one to three months following the application date.
The High Court has jurisdiction to hear trademark matters and there is a right of appeal to the Court of Appeal. Thereafter, appeals can be filed with the Federal Court (Section 96(a) of the Courts of Judicature Act 1964). Leave to appeal to the Federal Court will be allowed if the following criteria apply:
- The appeal is against a Court of Appeal judgment or order for any civil cause or matter decided by the High Court in the exercise of its original jurisdiction.
- The case involves a question of general principle decided for the first time.
- The case involves a question or questions of importance and a Federal Court decision would be to the public advantage.
What is the limitation period for filing an infringement action?
The limitation period is six years.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
Costs are not fixed and depend on the type and manner of the enforcement action, which vary depending on the nature, extent and complexity of each case.
In general, the losing party pays costs to the winning party. The courts have discretion to award costs, including the quantum.Appeals
What avenues of appeal are available?
Please see ‘Discovey’.Defences
What defences are available to a charge of infringement or dilution, or any related action?
Trademarks Act 1976
The defences against infringement under the Trademarks Act 1976 include the following:
- The trademark has been used in good faith and is the name of the user’s (or their predecessor’s) business.
- The trademark has been used in good faith and is a description of the character or quality of the user’s goods or services, where the description does not refer to the trademark of another trader.
- The trademark owner (or its predecessor) has continuously used the mark from a date before the registered mark was used by its registered owner or user (or predecessors), or before the mark’s registration, whichever is earlier.
- The registered owner or user has used the trademark on its goods in the course of trade and has not subsequently removed it.
- The defendant uses the mark for goods or services where the registered owner or user has expressly or implicitly given consent to do so.
- The trademark has been used by a person for goods or services adapted to form part of, or to be accessory to, other goods or services for which the trademark has been or may be used without infringement, provided that such use is reasonably necessary to indicate that the goods or services have been adapted.
- The registered trademark is used by concurrent owners (Section 40 of the Trademarks Act 1976).
Trademarks Act 2019
Defences for the following marks will be available under the Trademarks Act 2019 when it comes into force:
- A mark (registered in good faith) which is the name of the alleged infringer or its place of business (or that of its predecessor).
- A mark registered in good faith to indicate the type, quality, quantity and time of production of goods or services.
- A mark registered in good faith to indicate the intended purpose of goods and services, including accessories or spare parts, where such use complies with honest practices in industry or commercial matters.
- Marks used for non-commercial purposes.
- Marks used in news reporting.
- Marks used with the proprietor’s or licensee’s express or implicit consent.
- Signs which are registered trademarks.
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
Remedies for trademark owners include:
- the consignment or destruction of the offending mark;
- a share of the infringer’s profits;
- a declaration of infringement by the defendant;
- partial costs; and
- punitive damages (known as aggravated and exemplary damages) in appropriate cases.
For remedies under the Trademarks Act 2019 please see ‘The benefits of registration’.
Interlocutory injunctions are available, but plaintiffs must establish that:
- there are bona fide serious issues to be tried;
- the balance of convenience favours granting the interlocutory injunction (ie, the plaintiff would suffer greater injustice if relief were withheld); or
- damages are not an adequate remedy (ie, awarding financial compensation is an inadequate remedy in the event that the plaintiff successfully establishes its claim at trial (Keet Gerald Francis Noel John v Mohd Noor bin Abdullah Ors  1 MLJ 193)).
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
Alternative dispute resolution is available to resolve trademark cases. It is common for a trial judge to refer parties to mediation before another trial. The benefits of mediation are that parties can settle the matter without going to trial, which is more cost effective. However, in the event that mediation is unsuccessful, the matter will proceed to trial.
Update and trendsKey developments of the past year
Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?
The Trademarks Bill 2019 was recently passed by the House of Representatives.
Key changes introduced include the following:
- non-conventional trademarks are registrable;
- absolute and relative grounds of refusal have been introduced;
- a multi-class system has been introduced;
- the Madrid Protocol has been adopted;
- trademark rights have been recognised as a form of security or collateral in financing arrangements;
- amendments regarding trademark infringement have been made (eg, expanding the scope of what amounts to use of a mark for the purpose of establishing infringement);
- remedies have been codified;
- counterfeiting and false applications of registered trademarks have been criminalised; and
- defensive marks have been removed.
Law stated dateCorrect on
Give the date on which the information above is accurate.
21 August 2019.