19 February 2016Jurisdiction reportsLim Eng Leong

The TPP’s impact on trademarks in Malaysia

The TPP covers a wide scope of policies, but for this article we will focus on some of the intellectual property provisions of the treaty and how they could affect existing Malaysian trademark laws. Article 18, chapter 18 of the TPP lays out the minimum level of IP protection that a party to the TPP agreement must put in place and enforce. In general, Malaysia is in compliance with most requirements but there must be some changes if we are to accede to the TPP.

Registrable signs

Article 18.18 provides that signatory states must not require a sign to be visually perceptible as a condition of registration. This is tantamount to a new obligation, ie, one that is not found under TRIPS. In Malaysia, section 3(2)(a) of the 1987 Trade Marks Act (TMA) defines trademark use as “use of a printed or other visual representation of the mark”. This definition will have to change because it is impossible to present or use a scent or sound mark in a visually perceptible manner.

Collective and certification marks

Article 18.19 mandates that each state must include collective and certification marks as trademarks. While section 56 of the TMA provides for certification marks, there is no mention of collective marks. These are important for identifying marks of a collective organisation, union or cooperative that only its members can use to identify themselves with certain characteristics set by the organisation; there are many such organisations in Malaysia.

The same article indicates that “a party is not obligated to treat certification marks as a separate category in its law, provided that those marks are protected”. Notwithstanding this, the Intellectual Property Corporation of Malaysia (MyIPO) must apply some distinction when providing registration details for the different types of marks. The current combined processing and lack of distinction in the registration certificate makes it difficult to distinguish whether registration has been granted to a certification mark rather than an ‘ordinary’ mark.

Well-known marks

Malaysia already recognises well-known trademarks under the TMA. For example, section 14(1)(d) provides that a mark must not be registered if it is identical with or so nearly resembles another mark which is well-known in Malaysia and covers the same goods or services of another proprietor.

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