30 September 2015TrademarksChew Kherk Ying and Woo Wai Teng

ASEAN special report: Special status for well-known marks

Article 6bis of the Paris Convention and article 16 of the TRIPS Agreement have traditionally been the leading treaty provisions that set out the standard for well-known trademarks. In Malaysia, the articles are incorporated into the 1976 Trade Marks Act (TMA) under section 14(2) and regulation 13B of the 1997 Trade Marks Regulations, which set out the criteria to be considered when determining whether a mark is well-known.

These criteria include the degree of recognition of the mark in the relevant sector of the public, geographical coverage in terms of use and promotion, evidence of successful enforcement and the value associated with the mark. These criteria were endorsed in the case of Dabur India in 2011 and in Colliers International in 2015, where the judge noted that the best evidence to show recognition of well-known marks is unsolicited requests from potential licensees, distributors, or third parties.

Well-known marks in Malaysia are afforded a special status and have enhanced protection under the TMA, specifically:

A well-known mark proprietor can prohibit registration of other marks based on a test of ‘near resemblance’ instead of a likelihood to deceive or cause confusion to the public; and

A well-known mark proprietor can also prohibit registration of another mark which is filed for different goods/services to the well-known mark if the mark is identical or so nearly resembles the well-known mark such that use of the mark is associated with the proprietor of the well-known mark and the interests of the proprietor are likely to be damaged by such use.

The above provisions have afforded well-known mark proprietors greater ammunition to prevail over oppositions.

In addition to the above, section 70B of the TMA entitles proprietors of well-known trademarks to seek an injunction to restrain the use of marks which are similar to the well-known mark or to an essential part of it in Malaysia in respect of the same goods/services where use is likely to cause confusion.

The right to seek an injunction applies irrespective of whether the proprietor of the well-known mark has carried out business in Malaysia.

Before the recognition of well-known marks and its entrenched protection under the TMA as discussed above, there was limited protection for well-known marks through ‘defensive registrations’. Essentially, a well-known invented word may be registered as a defensive trademark in classes of goods/services which are not used by the proprietor, without risk of being expunged for non-use.

However, section 57 offers a very narrow form of protection as it will be applicable only to marks which are invented words. There has been very limited use of defensive filings as a result of a very narrow interpretation of what is an “invented word”. In the 2006 case Bata v Sim Ah Ba, the court held that “to be an invented word it must not only be newly coined, in the sense of not being already current in the English language, but must be such as not to convey any meaning, or at any rate, any obvious meaning”.

Notwithstanding a clear recognition of well-known marks and the special protection afforded to them, only a handful of marks have been declared well-known in Malaysia.

This is primarily due to the absence of any regime for registration of well-known trademarks at the trademarks registry. It appears that the only way for a mark to be recognised as well-known in Malaysia would be through a court declaration or the registry’s decision in an opposition or hearing.

Legislators should consider inclusion of new provisions in the TMA for registration of well-known marks. Such provisions would provide a formal process allowing well-known marks to be registered and for proprietors of well-known marks to fully use the existing provisions enacted for the protection of well-known marks in Malaysia. n

Chew Kherk Ying is a partner at  Wong & Partners. She can be contacted at:

Woo Wai Teng is an associate at Wong & Partners. She can be contacted at:

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