The sources of Malaysian trademark law are found in primary and secondary legislation, guidelines and common law. The principal trademark legislation in Malaysia is the Trademarks Act 2019 (TA) which deals with registration rights and administrative and criminal sanctions for registered trademark violations. The act came into force on 27 December 2019, repealing the act of 1976 along with certain provisions containing criminal offences for trademark infringement under the Trade Descriptions Act 2011. The common law is made up of judicial decisions of the courts of Malaysia as well as English cases.

In addition to the national statute, the country has also acceded to a number of international agreements, conventions and treaties such as Paris Convention for the Protection of Industrial Property 1983, Trade Related Aspects of Intellectual Property Rights Agreement 1994, Nice Agreement concerning the International Classification of Goods and Services for the Purpose of Registration of Marks 1957 and Madrid Agreement Concerning the International registration of Marks and the Protocol Relating to Madrid Agreement concerning the International Registration of Marks.

It is a fundamental principle of trade mark law that a registered trade mark must be used to maintain its validity.

The key legislation regulating the genuine use of a trade mark is the Trade Marks Act 1976. Section 46 of the Trade Marks Act provides as follows:

Provisions as to non-use of trade mark

Subject to this section and to section 57, the Court may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered on the ground –

That the trade mark was registered without an intention in good faith, on the part of the applicant for registration or, if it was registered under subsection (1) of section 26, on the part of the body corporate or registered user concerned, to use the trade mark in relation to those goods or services and that there has in fact been no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or registered user of the trade mark for the time being up to the date one month before the date of the application; or

That up to one month before the date of the application a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or registered user of the trade mark for the time being."

Thus, there are two limbs to the provision: one relates to the registration of a trademark without genuine intention to use and the second relates to non-use for a continuous period of three years.

Use "in good faith"

A trade mark registration potentially grants a registered proprietor a monopoly on the use of the trade mark in relation to the goods and services registered for an unlimited period of time. Under normal circumstances, once an individual obtains these exclusive rights, other individuals are not able to use an identical mark, or a mark so nearly resembling the registered mark in the course of trade in relation to goods or services in respect of which the trade mark is registered. This can be seen as a method to restrict competition.

Placing a "use" requirement therefore ensures that a proprietor does not simply squat on the Register. In the absence of this requirement, there is a risk that registrants may only register a trade mark to prevent others from using it, without any actual intent to use the trade mark themselves. If a registered mark is not used within three years of being entered on the Register, an aggrieved person can file an action to cancel the registration on the grounds of non-use. The owner of the trade mark then risks losing the trade mark registration which he/she has spent considerable time, cost and effort securing.

Calculation of the relevant period i.e., three years

The calculation of the three years period of "non-use" runs from the date the trade mark was actually placed on the Register, which is the date of the issuance of the Certificate of Registration and not the date of the application for registration, as provided in Industria De Diseno, SA vs. Edition Concept Sdn Bhd.1 In Godrej Sara Lee Ltd vs. Siah Teong Teck & Anr2, it was held that the period of non-use of three years is the period of time up to one month preceding the application to remove the trademark.

Qualification for genuine use

A trade mark is defined under Section 3 of the Trade Marks Act to mean "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".

As a trade mark has, among others, the function of indicating a connection between the goods and services and the registered proprietor responsible for their marketing, the proof of use must establish a clear connection between the use of the mark and the relevant goods and services. In Jost Cranes GmbH & Co KG vs. Jost Cranes Sdn Bhd3, the court laid down the following principles of genuine use:

  1. Genuine use is a qualitative and not a quantitative criterion.
  2. The use must be consistent with the essential function of the trade mark, which is to guarantee the identity of the origin of the goods or services to the customer or end users.
  3. The use must be on the market by the proprietor or an authorised third party and not just internal use by the undertaking concerned.
  4. The use must maintain or create a share in the market for the goods or services protected by the mark.
  5. The court must take into consideration all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark has been real. In particular, whether such use would be viewed as warranted in the trade sector concerned to maintain or create a share in the market for the relevant goods or services protected by the mark.
  6. The nature of the goods at issue, the characteristics of the market concerned and the scale and frequency of the use of the mark must be taken into account.

Conclusion

It is important for both trade mark owners and applicants for new trade marks to apply for a trade mark in relation to goods and services that they will actually use. Where registered proprietors of trademarks are authorizing others to use their trademarks, it is advisable to ensure that licenses contain provisions to maintain a connection with and actual control over use of the trade mark. Proprietors of registered trademarks must ensure that their registrations are properly maintained and used within a continuous period of three years. 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.

Footnotes

1. [2005] 3 MLJ 347.

2. [2007] 7 MLJ 164.

3. [2010] 4 MLJ 191.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.