Prepared by: Siew Ling Su Tay & Partners. Note: 1) Y means YES 2) N means NO 3) M means YES and NO 4) N/A means Not Applicable

Transcription

1 MALAYSIA 2010 APAA Trademark Committee Discussion Chart Trademark Protection against third parties bad faith Trademark filing, registration and importation Australia Bangladesh Hong Kong India Indonesia Japan Korea Malaysia N N Y M M N N/A New Zealand Pakistan Philippines Singapore Sri Lanka Taiwan Thailand Vietnam October17, 2010 Prepared by: Siew Ling Su Tay & Partners Note: 1) Y means YES 2) N means NO 3) M means YES and NO 4) N/A means Not Applicable

2 2010 APAA Trademark Committee Discussion Topics Trademark Protection against bad faith trademark filing, registration and importation CASE 1 Is it possible to prohibit registration of a mark which is identical or similar to a third party s trademark which is not well known in your country but is well known in a foreign country with respect to the goods or services which are in conflict with the third party s goods or services? [Note] This is an issue regarding protection of a well-known trademark in a foreign country. If the trademark is also well known in your country, it will be protected; however, do you protect a trademark which is well known only in a foreign country? No, it is only possible to prohibit registration of a mark if the third party trade mark is wellknown in Malaysia. Section 14 (1) (d) of the Trade Marks Act 1976 clearly provides that a mark shall not be registered if it is identical or so nearly resembles a mark which is wellknown in Malaysia for the same goods or services of another proprietor. CASE 2 Regarding CASE 1 above, does the Trademark Law of your country consider the applicant s bad faith in rejecting a trademark application for being similar to a mark (well-)known in a foreign country? [Note] If so, please also discuss how the bad faith can be established, and whether the type and structure of the mark being filed (whether it is a fanciful word mark, an arbitrary word mark or a highly stylized device mark) would be considered in the examination process. If, for instance, the trademark being filed is exactly identical with a complicatedly stylized device mark of a third party, will bad faith be still recognized in the absence of other evidence? There is no express prohibition in our Act for the application of a mark made in bad faith. However, the element of bad faith is taken into account under section 25(1) of the Act as the applicant cannot claim to be the proprietor of a mark if the mark belongs to another party.

3 In relation to a foreign mark that has not been used in Malaysia at all by the owner or its licensees, and which is not well-known in Malaysia, there will be no bad faith if a local party subsequently applies to register the mark and has used the mark in Malaysia first. Mere knowledge of an unregistered right by itself does not tantamount to fraud which would render the registration of a mark vulnerable to cancellation. These have been confirmed in a number of Malaysian cases. CASE 3 Is it possible for you to cancel or invalidate a registration of a trademark which is registered in your country by your foreign licensee or distributor without your consent? [Note] Supposing that you have a foreign licensee or a distributor using your trademark on clothing and he or she registers the mark in your country without your consent, can you cancel or invalidate the registration? If the registrant is your trademark commercial agent, his/her registration can be canceled under Article 6septies of the Paris Convention. However, in the case of a licensee or distributor, the Paris Convention does not have any clear provisions. What about your country s treatment in this case? Yes. Section 45(1) of the Trade Marks Act 1976 provides that the court may order the expungement of a registered trade mark if such an application was made by any person aggrieved by the non-insertion in or omission from the Register of any entry or by any entry made in the Register without sufficient cause or by any entry wrongfully remaining in the Register or by any error or defect in any entry in the Register, make such order for making, expunging or varying such entry as it thinks fit. The High Court in the case of Hai-O Enterprise Bhd v Nguang Nguang Chan Liquor Trader [1992] 4 CLJ 1985 held that a foreign manufacturer who places his trade mark upon his product which he intends to export to Malaysia is the proprietor of that mark. An importer of such goods, notwithstanding the acquisition of a commercial reputation does not acquire any proprietary rights over the manufacturer s mark merely by being a conduit from manufacturer to ultimate consumer. Such an importer who registers himself as the importer or distributor of products belonging to a foreign proprietor cannot own the trade mark in Malaysia. Such registration by the importer, even if it is with the consent of the foreign manufacturer, will tantamount to fraud on the Registrar and the Malaysian public.

4 This principle has recently been affirmed in the case of Jost Cranes GMBH & Co KG v Jost Cranes Sdn Bhd [2010] 4 MLJ 191, in which the High Court held that a foreign manufacturer (Applicant) who had affixed the JOST mark onto the cranes it manufactured which were sold in Malaysia is the true proprietor of the mark, as opposed to the importer of the cranes in Malaysia. Thus, the mark registered by the importer was expunged as it was an entry made without sufficient cause. CASE 4 Will the following trademark A be registered in view of the prior Trademark B with respect to the goods, T-shirts, caps? TRADEMARK A PRIOR TRADEMARK B Class 25 : T shirts caps Class 25: Clothing, etc [Note] This might be an issue concerning the parody of a well-known trademark. Trademark A was presumably adopted as a parody of the prior trademark which is registered as Reg. No in Japan. The examination of similarities of marks goes mainly by the visual and phonetic elements, as well as the meanings conveyed by the marks. The marks are also to be compared as a whole. In the case of of Bata Ltd v Sim Ah Sim Teng Khor & Ors (trading as Kheng Aik Trading) [2006] 6 MLJ 445, the Court of Appeal held that in comparing device marks, the following must be taken into account: (i) (ii) The idea of the mark The elements of the mark are to be taken as a whole

5 (iii) (iv) (v) The imperfect recollection of the mark by customers The aural as well as visual aspects of the mark Circumstances of trade In the Bata case, the appellant s trade mark had the word POWER and a sharp two pronged arrow-like device pointing to the right and registered in relation to shoes whilst the respondents trade mark consisted of a three feather-like curve device with the words SPORTS and POWER written below and applied for in relation to socks. The word Power was disclaimed in the appellant s registration and the court found the word to be common and generic. The court found the two marks to be dissimilar and likelihood of confusion was unlikely as the appellant s goods sold under the appellant s trade mark were only retailed exclusively in its own shops or those franchised by the appellant. In the present scenario, the idea of the mark may be held to be dissimilar, as it is stated in Trade Mark A that the picture depicted is that of a dog, and not a puma. The poise of the dog is, however, strikingly similar to the Puma device. Nevertheless, when the elements of the mark are taken as a whole, the word Shi-sa is phonetically different from Puma and the difference is compounded by the phrase Okinawan Original Guardian Shishi dog. Such differences may render likelihood of confusion to be remote even to a consumer with imperfect recollection. Furthermore, it has been held by the Court that consumers are more discerning when buying articles of clothing and the literacy level in Malaysia is high. Thus, if the marks are to be compared only, and there are no other extraneous circumstances of trade relevant to the consideration, Trade Mark A will likely be registered, notwithstanding the prior registration of Trade Mark B. If, however, there is evidence of deceptive use, which would be compounded because the goods sold under both trade marks are considered to be of the same description and may be sold through similar trade channels, and due to the striking similar poise and positioning of the dog device, then Trade Mark A may be successfully opposed as its use may lead to confusion or deception and therefore its registration prohibited under section 14 (1) of the Act. Under our trade mark law, there is no defence in the case of parody of a registered mark.

6 CASE 5 Does your country s trademark practice reward a famous or well-known mark with a larger cloak of protection than in the case of lesser known marks, in terms of determining similarity with other conflicting marks? [Note] Assuming that CHRISTIAN DIOR is a completely unknown but simply a registered mark in use, will people be more confused or less confused with a mark similar thereto, than when the CHRISTIAN DIOR mark is well-known in your country? The Malaysian courts have not adopted a consistent approach when it comes to determining similarities of established or well-known marks. So far, most of the cases are tested under passing off laws, as they were decided before the concept of well-known marks was introduced. On the one hand, established marks generally do have a larger cloak of protection when the defendant has incorporated the well-known mark as part of its company name. A series of cases decided on principles of passing off involving well-known marks (although not expressly pursuant to the well-known trade mark regime under the Trade Marks Act) such as INTEL (Intel vs Intelcard), MAXIS (Maxis), MICROSOFT (Microsoft vs Tokyo Micro-soft), THRIFTY-RENT-A-CAR (Thrifty Rent-A-Car) and UBS confirm such an approach when the defendants sought to use marks incorporating these famous brands as part of their company names even if the business activities may not necessarily be the same. On the other hand, where the defendant has merely incorporated part of the well-known mark into its own mark, the court had not appeared to take into consideration the fact that the mark was famous in determining the similarities of the marks. In such cases, the court looked at the target market and the trade channels in arriving at the conclusion that the marks are dissimilar and therefore there was no confusion. The cases of McDonalds Corporation v McCurry Restaurants (McCurry Restaurant KL Sdn Bhd vs McDonald s Corporation) and Consitex SA v TCL Marketing (ERMENIGILDO ZEGNA vs EMMER SECNA) demonstrate the backlash that may result from famous marks. The Consitex case concerns both trade mark infringement and passing off.

7 In the McDonald s case, the Court of Appeal held that McDonald s get-up comprising the golden arch M with the word McDonald s against a red background differs from the defendant s signboard that carries the words Restoran McCurry with the lettering in white and grey on a red background with a picture of a chicken and the wording Malaysian Chicken Curry. The different types of food sold, the fact that McCurry does not sell food by reference to the prefix Mc and the different types of patrons to both outlets rendered likelihood of confusion or association unlikely. In the Consitex (Ermenigildo Zegna) case, the High Court found that the plaintiff s goods are high priced designer items, targeted at different segment of the public and sold in exclusive boutiques. The defendant s products are targeted at the average middle-class segment, sold in department stores and supermarkets, and thus both parties products are not in direct competition. The huge difference in price is a very strong determining factor. The clothing would be normally purchased after a thoughtful, considered decision. Due to the price different, and different trade channels, likelihood of confusion was found to be minimal. Literacy level in Malaysia is also high and consumers are deemed to be more discerning and observant when buying clothing. The court also found that it is common knowledge that Malaysians prefer foreign sounding brands and that the plaintiff should have no monopoly of Italian sounding names for clothing! CASE 6 In your practice, is it absolutely necessary to record trademarks before the customs office to enjoy border enforcement? Will the customs clearance procedure be suspended if the customs office detects counterfeit products bearing a famous mark which is registered before the trademark office but not before the customs? No. There is no system of Customs recordal of trade marks independently from the Register of trade marks kept by the Registry of Trade Marks at the moment. An application to invoke border enforcement is to be made to the Registrar of Trade Marks under the Trade Marks Act together with a prescribed fee. Where an approval has been given, the Registrar shall immediately notify the authorized officer (which would be the Customs officer). The authorized officer shall take the necessary action to prohibit any person from importing goods identified in the notice, not being goods in transit, and shall seize and detain the identified goods.

8 On an ex officio basis, Customs may detain goods when the officer suspects goods to be counterfeits. However, Customs will usually contact the IP owner for verification and if the goods are counterfeits, they will be passed to the Ministry of Domestic Trade Cooperatives and Consumerism for action to be taken under the Trade Descriptions Act [end]