After years of negotiations, Malaysia, Brunei, Chile, New Zealand, Singapore, Australia, Canada, Japan, Mexico, Peru, the US and Vietnam last year reached a multilateral free trade agreement on various economic policies called the Trans-Pacific Partnership (TPP).
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.
"We adopted the Nice Agreement in 2007 but we must now pay close attention to article 18.25 of the TPP."
The TPP’s article 18.22 stipulates that no party shall deny relief based solely on either (i) a lack of trademark registration; (ii) lack of inclusion on a list of well-known marks; or (iii) lack of prior recognition as a well-known mark. The Malaysian provisions are consistent with this stance and we are already applying article 6bis of the Paris Convention. However, the TPP may invite review of the many criteria of Regulation 13B (Trade Marks Regulations 2000) because the footnote to article 18.22 states that when determining whether a mark is well known, no party shall require that the reputation of the trademark extend beyond the sector of the public that normally deals with the relevant goods or services.
Classification of goods and services
We adopted the Nice Agreement in 2007 but we must now pay close attention to article 18.25 of the TPP, where goods or services may not be considered similar merely on the ground that they are categorised in the same class. Before citing a prior mark, MyIPO must examine details of the specification and not merely rely on similarity in the class number. Conversely, goods or services may not be dissimilar simply because they are categorised in different classes, and to this end MyIPO has diligently practised such cross-class citation.
Non-recording of a licence
The presence of the word “may” (instead of “shall”) in section 48(1) of the TMA has always been interpreted that recording a licensee or user is not mandatory, but highly recommended. This is in order to defend against any cancellation of a mark because of non-use and to reap the benefits of sub-section (5), ie, the use of a trademark by the registered user shall be deemed to be use by the registrant.
Such conditional benefits may no longer be possible because the TPP’s article 18.27 stipulates that no party shall require such a recording so that use by a licensee constitutes use by the owner in a proceeding that relates to the acquisition, maintenance or enforcement of trademarks.
Lim Eng Leong is a trademark manager and legal counsel at Henry Goh. He can be contacted at: engleong@henrygoh.com
Lim Eng Leong, Henry Goh, TRIPS, TPP, IP protection, TMA, trademark, MyIPO,
