The identity of a business is important as it carries with it the goodwill and reputation of the business and the products or services offered. Trademarks are marks that exclusively identify a product or service as belonging to a specific business and is an important component in branding and marketing. In Malaysia, trademarks are protected under the Trade Marks Act 2019 (“TMA 2019“) and its accompanying regulations. However, not all trademarks are valid, in which case such trademarks may be invalidated. This article will briefly explore the invalidating of trademarks by the Courts in Malaysia.
Legal Definition Of "Trademark"
Before delving into the technicalities of invalidating a trademark, the very word “trademark” must first be understood. The TMA 2019 defines “trademark” as follows:
(1) "Trademark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.;
(2) A sign may constitute a trademark even though it is used in relation to a service ancillary to the trade or business of an undertaking and whether or not the service is provided for money or money's worth
In fact, the TMA 2019 goes even further to define what is a “well-known trademark”, as follows:
(1) "Well-known trademark" means any trademark that is well-known in Malaysia and that belongs to a person who-;
(a) is a national of a Convention country; or
(b) is domiciled, or has a real and effective industrial or commercial establishment, in a Convention country, whether or not that person carries on business, or has any goodwill, in Malaysia.;
(2) In determining whether a trademark is well-known in Malaysia, the Registrar or the Court shall have regard to the criteria as prescribed.;
Grounds of Invalidation of Trademark By Courts
Section 47 of the TMA 2019 allows the Courts of Malaysia to declare the registration of a trademark invalid. The grounds on which the Courts may invalidate a trademark under Section 47 of the TMA 2019 include that:
- the trademark in issue was registered in breach of Section 23 of the TMA 2019, which includes among other grounds that the trademark is devoid of any distinctive character, likely to deceive or confuse the public or that the trademark consists exclusively of the name of a country;
- there was an earlier trademark;
- there was an earlier right to the mark;
- there had been no honest concurrent use of the impugned trademark; or
- there was fraud or misrepresentation in the registration.
Regard must also be made to Section 53 of the TMA 2019, which provides that a trademark registered for a period of more than 5 years shall be deemed conclusive. Any challenge towards such registration may only be made on the following grounds:
- the original registration was obtained by fraud;
- the trademark is likely to deceive or cause confusion to the public or contrary to any written law;
- the trademark is contrary to public interest or to morality;
- the trademark contains scandalous or offensive matters;
- the trademark contains a matter which is or might be prejudicial to the interest or security of the country; or
- the trademark was, at the commencement of the proceedings, devoid of the distinctiveness of the goods or services of the registered proprietor
"Aggrieved Person"
Even if a trademark may be invalidated by the Courts, it is not an application that can be made by just any person. An application to invalidate a trademark may only be brought by an “aggrieved person”. This is clearly stated in Section 47(1) of the TMA 2019. The Federal Court in Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia; Pendaftar Cap Dagangan Malaysia (Intervener) [2015] 6 MLRA 331 clarified as follows:
"A person aggrieved is a person who has used his mark as a trade mark or who has a genuine and present intention to use his mark as a trade mark in the course of a trade which is the same as or similar to the registered trade mark that the person wants to be removed from the register. The person must be someone who has some element of legal interest, right or legitimate expectation in its own mark which is being substantially affected by the presence of the registered trade mark. The interest and right must be legal or lawful."
Conclusion
Trademarks are crucial to protecting ones brand, image, reputation and goodwill. However, such protection cannot be abused. If in the event that a trademark should not have been registered, may cause confusion to the public or is contrary to public interest and has affected the right or interest of a person, the law provides avenues to invalidate such trademarks, including recourse through the Malaysian Courts.
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