Laws applicable to Trade Mark Common law Legislation - Trade Marks Act 1976 and Trade Marks Regulations Trade Descriptions Act 1972 P

Common law “Trade mark even though it is not registered is nevertheless protected by common law. In the common law of passing off, one has to show : (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him,

(4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.” Lord Diplock in his speech in Erven Warnink v. Townend & Sons [1979] AC 731, 742

Goodwill The importance of the existence of goodwill was brought home by Lord Diplock in the advice of the Privy Council delivered in Star Industry Co. Ltd v. Yap Kwee Kor [1976] 1 MLJ 149 at p. 155: “A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing-off one person's goods as the goods of another.

Goodwill, as the subject of proprietary rights, is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each. So when the business is abandoned in one country in which it has acquired a goodwill the goodwill in that country perishes with it although the business may continue to be carried on in other countries.”

Trade Descriptions Act 1972 Section 3 prohibits false trade descriptions. (1) Any person who, in the course of a trade or business - (a) applies a false trade description to any goods; or (b) supplies or offers to supply any goods to which a false trade description is applied, shall be guilty of an offence.

18. Penalty for offences. Liable to a fine not exceeding RM100, or to imprisonment for a term not exceeding 3 years or to both and, for a second or subsequent offence, to a fine not exceeding RM200, or to imprisonment for a term not exceeding 6 years or to both.

21A. Compounding of offences. The Controller or a Deputy Controller may compound any offence under this Act or any regulations made thereunder which is prescribed to be a compoundable offence by making a written offer, to the person reasonably suspected of having committed such offence, to compound the offence upon payment to the Controller or Deputy Controller such sum of money within such time as may be specified in the offer.

16. Trade mark infringement and passing off action. (1) Where any person being a proprietor or registered user of a registered trade mark within the meaning of any written law relating to trade marks or being otherwise entitled at law to the protection of a trade or other mark or a get-up for any goods or services established - (a) in the case of a registered trade mark, that his rights in respect of such trade mark are being infringed in the course of trade within the meaning of the written law; or

(b) in the case of a trade or other mark or get-up for any goods or services, that his rights in respect of such trade or other mark or get-up are being infringed in the course of trade as a result of which he has a right of action for passing off, the High Court may on the application of such person make an order declaring that the infringing trade or other mark or get-up as the case may be is for purposes of this Act a false trade description in its application to such goods as may be specified in the order.

What is a trademark ? section 3 Trade Mark Acts 1971 “trade mark" means, except in relation to Part XI, 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 having the right either as proprietor or as registered user to use the mark whether with or without an indication of the identity of that person, and means, in relation to Part XI, a mark registrable or registered under the said Part XI.

What is "distinctive"? Defined in s 10(2A) as …”means the trade mark must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists…”

The marks may take the following forms: An invented word/words Names of person/firm/company mentioned in a specific manner Applicant’s signature Words with no direct relation to goods or services, geographical name or surname Any distinctive sign such as logos, pictures, symbol etc Not deceptive/confusing, or contrary to law and scandalous/offensive Not identical or similar to earlier registered/application trade marks Not identical or similar to well-known trade mark.

The marks may take the following forms: An invented word/words Names of person/firm/company mentioned in a specific manner Applicant’s signature Words with no direct relation to goods or services, geographical name or surname Any distinctive sign such as logos, pictures, symbol etc Not deceptive/confusing, or contrary to law and scandalous/offensive Not identical or similar to earlier registered/application trade marks Not identical or similar to well-known trade mark.

What is a ‘mark’? Section 3 defines “mark” as includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof.

What is registrable? Section 10 of the Trade Marks Act 1976 In order for a trade mark to be registrable, it shall contain or consist of at least one of the following particulars: (a) the name of an individual, company or firm represented in a special or particular manner;

(b) the signature of the applicant for registration or of some predecessor in his business; (c) an invented word or words; (d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or

(e) any other distinctive mark. (2) A name, signature or word which is not described in paragraph (a), (b), (c) or (d) of subsection (1) is not registrable unless it is by evidence shown to be distinctive.

Well-known Trademarks Shell Carlsberg Kit-Kat Intel Nescafe Coca-Cola

Application for Trademark To file in: TM1 (agent) TM5 (Application form) Statutory Declarations And pay the requisite fee. Upon receipt, a trademark application number will be given. If no issue with the Registrar, the trademark will be ready for gazetting.

Possible objection from Registrar A CD70 will be sent to the applicant with 2 months date to reply to the the same. Usual objection 1.Non-registrability 2.Similar to some other trademark that may cause confusion

Non-registrability of trademark Common examples have been where the trademark name has a direct reference to the character or quality of the goods or services. Eg: “Earthmaster” was refused registration, because it was held to be descriptive of the character of the machine that the trade mark user wished to promote (Chaseside Engineering Co Ltd’s Application (1956)).

Duration of Mark Trade mark registration is valid for ten years from the date of application and may be renewed every ten years. Renewal should be made not less than 3 months before the date of expiry. Restoration of mark can still be made within one year from the date of expiry of the last registration. N

Classification of goods and services There are 34 classes on goods and 11 classes on services. Examples of some services are: Class 38-Telecommunications Class 41-Education; providing of training; entertainment, sporting and cultural activities. N