Malaysia jurisdiction report: The rules for non-use

Once a trademark has been registered with the Intellectual Property Corporation of Malaysia, the registered proprietor will be granted various rights and remedies as provided under the Trade Mark Acts 1976.

However, a registration can be challenged and even removed from the register. There are a few situations where a mark may be expunged or removed, but this article will focus on removal based on non-use.

Non-use removal in Malaysia is when a registered trademark is removed by the court based on the ground that the mark was registered without a good-faith intention to use it in relation to those goods/services and that there has been no good-faith use (section 46[1][a]), or there has been no use in good faith for a continuous period of at least three years lasting up to one month before the date of the application for removal (section 46[1][b]).

"Minor alteration which does not substantially affect the mark’s identity shall be accepted as use of the registered mark."

It is well established that for a mark to be registered, it must either have been in use at the time of the application or is proposed to be used in relation to the goods or services applied for. Section 3 of the act defines ‘trademark’ as a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and a person.

The ‘use’ requirement is important because it is through the continuous use of a trademark in the course of trade that it can perform its primary function of acting as a source identifier. That being said, MyIPO will not generally enquire into the ‘use’ requirement of a mark at the time of application for registration.

While you may be able to obtain registration without the need to actually prove use of the mark or the bona fide intention to use it at some future time, it must be noted that the registered mark may still be removed by the court later based on an application by an aggrieved person.

Removal of a registered mark based on non-use is a double-edged sword where it can be used to attack trademarks that are registered by unscrupulous trademark squatters attempting to gain monetary benefit, often by selling the registered mark to the true owner of the mark. On the one hand, it may be used by third parties to remove your registered mark if it has not been used in good faith for a continuous period of three years—especially in a counter-claim to a trademark infringement action.

It appears that use in ‘good faith’ (stated in section 46[1]) would mean ‘bona fide
use’ and ‘genuine use’. There is ‘genuine use’ if the mark is put to real commercial use on a substantial scale. Obviously, such use cannot just be minimal use intended to circumvent the provisions.

For ordinary businesspeople, the relevant question is how to prevent your registered mark from being removed based on non-use. The obvious answer is to use the mark. However, registered proprietors may not always want to use it immediately or may not even wish to use it for a particular class of goods/services for various reasons.

One situation would be when the registered proprietor plans to license the use of the mark to another party. Section 48(5) of the act expressly provides that where a person has been registered as a registered user (licensee) of a trademark, the use of that mark by the registered user shall be deemed to be use by the registered proprietor.

What if a registered proprietor altered his registered mark and has been using the altered version which is different from the registration? Will such use constitute use of the registered mark and therefore not be subject to non-use removal? As a rule of thumb, a registered proprietor has to use his mark as filed and registered with MyIPO. Nevertheless, minor alteration which does not substantially affect the mark’s identity shall be accepted as use of the registered mark.

In summary, if a trademark has not been used for some time, it runs the risk that it no longer performs its primary function of denoting the origin of goods or services, and will be vulnerable to attack. Therefore, use is crucial in maintaining your registered mark.

Khang Juin is a legal executive at Henry Goh. He can be contacted at: khangjuin@henrygoh.com