Trademarks law is one of important components in Intellectual Property course. Recent development in statutory provisions and international conventions has embarked a new dimension in trademark law in Malaysia. It is not within the ambit of this post to discuss the very details of sub-components thereof. Nevertheless, this post serves as an introductory remark in providing the scope and parameter of the relevant subject matter.
1. Predominantly, the crux of discussion lay within the current provisions and international obligation of
a) Trade Marks Act 1976;
b) Trade Marks Regulation 1997;
c) Manual of Trade Mark Law & Practice in Malaysia (WIPO, Geneva 1989);
d) TRIPs Agreement; and
e) Paris Convention.
Subject to the contrary, students are only permitted to enter the examination hall with the first two documents of authorities.
2. As far as method of statutory interpretation and various tests adopted where infringements are concerned, local cases as well as cases from common law and non-common law countries are material.
3. The relevant topics and angle of discussion, amongst other, includes
a) The general principles of trade marks.
Under this heading, topic such as functions of trade mark, statutory definition of trade mark, and statutory provisions regarding the usage and tenure of trade mark are discussed.
b) Resistibility of trade marks
Under this heading, the nature and criteria of a registered trademark is examined. Often, most of court litigations and civil disputes are concerned with this area of discussion. It concerns with issues such as
i. Whether numbers or technical words or foreign language can be registered as trademark?
ii. Whether the appellant’s and respondent’s marks are identical as to cause deception or confusion among the purchasing public (i.e the consumer)?
iii. Whether the disputed mark is scandalous or contrary to public morality?
iv. Whether the mark is too descriptive or common as to prevent other trades using the same mark (as far as word trade mark is concerned)?
v. What is the position and exclusive protection for well-known or famous marks, be it local or international mark, as distinct to ordinary or newly created mark that has yet bore any reputation? What is the criteria that need to be fulfilled for a mark to be regarded as a well-known mark?
c) Trade mark application and registration
Under this heading, issues regarding who are to be recognised as the proprietor of the mark and whether an importer is a registered proprietor will be discussed. Further, assignment of mark and the position of licences are also to be examined. Similarly, the opposition proceedings between the contesting applicant of new trade mark and the registered proprietor of a trade mark is discussed. In return, question on what are grounds of refusal for a mark to be registered, during the opposition proceedings, is an important sub-element.
d) Infringement and Exceptions
Under this heading, various tests adopted from myriad of decided cases in proving infringement are analysed. Different tests are used for different trademarks, its usage, the nature of the goods, the circumstances in which the mark was used and the potential customer of the goods. Our statutory provisions have underlined several statutory defences where certain act will not be deemed or constituted an act of infringement. This includes, among other, used in good faith, honest concurrent user, parallel importation and other.
e) Grounds for the removal of marks
Under this heading, numbers of statutory provisions that give effect to the removal of marks that are already remained in the register are examined. The ground of removal, among other, includes non-use of trade mark, non distinctive trade mark, deceptive and fraudulent mark. The interests of aggrieved parties are also discussed under this respective heading.
f) Passing off
Passing off deals with the preservation of business goodwill and confer protection over business reputation. It is another creature of intellectual property that has overlapping area with trademarks and copyright. Under this heading, issues such as elements of passing off, similarity of business names, common field of activities and locus of reputation are extensively discussed.
4. If the time permits, there will be ample discussion and summary cases accompanying the progress of this blog throughout the semester. Above others, this piece of writing is intended only to serve as a mere guidance of immature discussion prior to the weekly lecture thus, shall not be seen as an attempt to compete nor even replace the lecture itself.
5. Feel free to rise any comments or personal criticism for the betterment of this academic arena. For everything good, all praise be to Allah, and the rest that remains comes from my personal defect as the join-author of Chamber of Knowledge intelligence platform; Kyle Fahkrurazzi
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