TRADE MARKS DIVISION PERBADANAN HARTA …

1 TRADE MARKS DIVISION PERBADANAN HARTA intelek malaysia (MALAYSIAN INTELLECTUAL PROPERTY CORPORATION) MANUAL of TRADE MARKS LAW & PRACTICE in malaysia Kuala L mpur 2003 Second Edition u PREFACE malaysia Intellectual Property Corporation is a semi-governmental organization with eadquarters in Kuala Lumpur, malaysia . It is responsible for the promotion of the rotectiIt is hoped that the staff of the Malaysian Registry of Trademarks and others thening and development of the trademark system in malaysia . The Manual is printed in loose-leaf orm order to facilitate the issue of future amendments and additions, and in order tonable those who use it to insert their own personal notes and comments to correspond to the text. The Manual is designed primarily for use in malaysia ; however, it could also be useful in other developing countries with similar trademark legislation.

2 Ll rights reserved. No part of this publication may be reproduced in any form or by ny means (electronically, mechanically, by photocopying, recording or otherwise) ithout the prior permission of the copyright owner. hpon of intellectual property throughout the world through cooperation among states as well as for the administration of a number of multilateral treaties dealing with various aspects of intellectual property. concerned with trademark law and practice in malaysia will greatly benefit by having access to the exhaustive, yet easy-to-refer, material contained in the Manual, which will in turn favourably contribute towards the streng f eAaw LIST OF CONTENTS NB A full index is given at the back of the Manual. CHAPTER 1 INTRODUCTION Legal Basis Layout and Maintenanc Statutory Authoritiee of the Manual s TION The Register istry ts HAPT R 3 alaysia HAPTER 4 Use in Relation to Goods ourse of TRADE on atter Contrary to Law f the Nation ty Rights ns and Emblems HAPTER 6 Amended MARKS Practice CHAPTER 2 ADMINISTRATION & ORGANIZA The Registrar and his powers Place and Hours of Business Indexes to the Register Organization of the Work of the Reg Accounting for Fees Correspondence Forms and other Documen Address for Service Agents CE THE REGISTER Entries in the Register Registers in the Component Regions of M Registration and Other Rights Registration Certificates Duration of Registration C WHAT CONSTITUTES A TRADE MARKS Definition of a TRADE Mark Meaning of Mark MARKS must be Visible Use in Relation to Services

3 Indicating a Connection Connection in the C Connection with Goods or Services Connection with a Pers CHAPTER 5 WHAT CANNOT BE REGISTERED Prohibited MARKS Scandalous or Offensive M Prejudicial to the Interest or Security o MARKS Claiming Intellectual Proper Protected Representatio Private Rights C REPRESENTATIONS OF MARKS Form of Representation Photocopies Coloured Representations Unusual MARKS Multiple Applications Transliteration and Translation Representations of the Mark CHAPTER 7 APPLICATIONS TO REGISTER Persons Who May Apply odies ris Convention re Registration o be Constituted w ith Registered User Application he Repealed Ordinances - Transitional Provisions GISTRATION ion Procedures e Class Class Claims for Services ualification of Consultancy Services ation Services r services es f Specifications Goods or Services HAPTER 11 arance and Sound Partnerships Joint Ventures Unincorporated Bodies Government and other Official B National Treatment Under Pa Death of an Applicant befo Body Corporate about t Application Simultaneous Proposed to be Used by Him Receipt of Documents T CHAPTER 8 EXAMINATION OF APPLICATIONS FOR REGENERAL Outline of Procedure Application Numbers Computer Records Initial Contents of File Examination Report Reference Works Examination Burden of Proof Objection Procedure Post Examination Procedure CHAPTER 9 CLASSIFICATION Quick Guide To Classificat The Specification The Classification System Goods or Services in more than on Wide Claims Class Claims for Goods Classification of Services Editing Specifications Q Qualification of Advisory & Inform Qualification

4 Of Rental or Hire Services Qualification of Mail Orde Telecommunication Services Parts and Fittings Precise Punctuation Materials in Different Class Wholly or principally o Terms to be Avoided in Permissible General Descriptions of CHAPTER 10 REGISTRAR S PRELIMINARY ADVICE Matters Covered CTHE SEARCH FOR PRIOR RIGHTS Similarity Criteria - General principles Comparing cases Imperfect Recollection Appe Essential feature Composite MARKS Idea of MARKS Device MARKS s - Confusion Comparing Goods and Services ce and the NICE classification the same description" in the ority erations HAPTER 12 NOT AVAILABLE nce Required n Declarations Honest Concurrent Use HAPTER 15 ons redtance General ition Related MarkContextual Confusion of MARKS Comparison of Goods and Servi Goods of the same description Services of the same description Closely related goods and services Cross Search List Occurrence of the phrase "goods or service ofAct Co-pending Conflicts - Right of PriConflicting MARKS - Other Consid House MARKS C CHAPTER 13 USE & OTHER CIRCUMSTANCES Factual Distinctiveness Mode of Giving Evidences Nature and Extent of Evide Form of Evidence - Main Declaratio Form of Evidence - Supporting Examination of Evidence Any Other Circumstances Other Special Circumstances Advertisement CHAPTER 14 INHERENTLY DECEPTIVE MARKS Intrinsic Deception Direct Reference Variation Clauses Composition of the Goods Geographical Origin Literary and Artistic Works Evidence of Use CTHE REGISTRAR S DISCRETION Statutory Basis Nature of the Discretion Non-discretionary Decisi Discretion is Unfette Withdrawal of Accep Disclaimers ns.

5 Modificatio Modification Prior to Advertisement rk Modification of a Registered Ma Special Conditions itions Blank Space Cond Varietal Condition Packaging Condition Light Cond Music Groups Star MARKS Section 21 Condition Consents CHAPTER 16 SERIES OF MARKS Definition Advantages of a Series Registration What Constitutes a Series HAPTER 17 SSOC inances Equivalent Use s SIONS istorical Background ted Use t TRADE Connection gistered User Canceling or Varying Renewal Fees ons of MARKS MARKS not forming a Series Association Advertisement CAIATION Requirements for Association Effect of Association Registration under the Repealed Ord Registration Procedure Rules of Association Dissolution of Association Limit of Appeal CHAPTER 18 ASSIGNMENT & TRANSMIS Historical Background Goodwill The Application Procedure Examination of Documents of Title Assignments with Goodwill Assignments without Goodwill (In Gross) Registrar s Prior Approval Part Assignments Entries in the Register Some Problem Cases CHAPTER 19 REGISTERED USER H Permit Procedure Contrary to the Public Interes Entries in the Register Unregistered TRADE MARKS Section 26(1)(b)

6 Cases Quality Control does not Establish a Associated Companies Rights of a Registered Proprietor Rights of a Re Rights of Third Parties Assignments CHAPTER 20 RENEWALS Duration of Registration When Renewal may be made Registrar s Notices Renewal and Late Renewal The Repealed Ordinances Removal for Non-renewal Status of Unrenewed TRADE Mark Restoration and Certificates and Representati CHAPTER 21 MAINTENANCE of the REGISTER Original Entries Recordable Changes Changes of Address morandum Other Certificates Registers RS ing an Application for Registration als es Files s 6 Cases ces in the TRADE the Same Description Incontestability Use where Form of TRADE changes MARKS Publici Juris Change of Name Voluntary Cancellation Entry of a Disclaimer or Me Certificate of Validity Modification of a Registered Mark Trusts CHAPTER 22 REGISTRAR S CERTIFICATES Seal of Office Sealed Copies as Evidence Certificate of Registration Regional CHAPTER 23 APPEALS & RELATED MATTE Right of Appeal Right to a Hear Right of Audience Responses to Objection to Statements of Grounds Court Procedure Citation of Refused Applications Extensions of Time - Ex Parte Extensions of Time - Inter Partes Inter Partes Appe CHAPTER 24 OPPOSITIONS Who May Oppose Opposition Fil Procedure Costs Security for Costs Burden of Proof Admissibility of Evidence Viva Voce Evidence Evaluation of Evidence Section 14 and Section 19 - The Difference Interlocutory Proceedings Appeals CHAPTER 25 RECTIFICATIONS Causes of Action Procedure Person Aggrieved Burden of Proof Undefended Action Contested Section 4 Use in

7 Good Faith Special Circumstan Goods or Services of Ambit of Section 45 Appeals etc. CHAPTER 26 CERTIFICATION TRADE MARKS The Mark The Rules CHAPTER 27 DEFENSIVE TRADE MARKS Procedure Search and Association n as Indicating a C ction Ordinary Registration of ame Mark APPENDIX 1 CROSS-SEARCH LIST APPENDIX 2 AMENDMENTS TO CLASS 42 AND CREATION OF CLAS ES 43 TO 45 APPENDIX 3 AWARD OF COSTS INTER PARTES PROCEEDINGS APPENDIX 4 TABLE OF CASES REFERENCES Registrability Requirements Certification Requirements Procedure Statement of Case Opposition Post Registration Matters Definition Takeonne SSN I CHAPTER 1 - INTRODUCTION Legal Basis This Manual is a reference work on the law and practice on all matters relating to the registration of TRADE MARKS under

8 The current laws of malaysia . It is ublished primarily for the use of Assistant Registrars and pabove in the Office of the stra (The egulations), the applicable case law stemming from judicial and quasi-judicial interpreting the statutory provisions, the Registrar s Practice Notes published in the Government Gazette from time to time, and internal instructions examining staff. n given to the Registrar by the TRADE MARKS Act 1976. essary, revised pages will / or changes made to the disk copy. To facilitate their incorporation, the lished in loose-leaf form. Also, in some of the longer chapters, groups are reserved for possible additions; these are always expressed Regi r of TRADE MARKS , but is also available for use by lawyers and practitioners concerned with the prosecution of applications to register TRADE MARKS in malaysia and with the maintenance of registration rights granted under the applicable laws in force.

9 The Manual is based on the TRADE MARKS Act 1976 (the Act), as amended 994, the TRADE MARKS Regulations 1997, made under section 83 of the Act1 Rdecisions issued by the Registrar for the guidance of The Manual is intended primarily for the guidance and instruction of the staff of the TRADE MARKS Registry. All matters arising for the Registrar s decision under the Act will be decided within the law and on their own facts so far as they are established. The statements of practice contained in the Manual do not fetter in any ay the general discretiow [ - ] Layout and Maintenance of the Manual .10 Whenever amendments to the Manual become nec1be issued andManual is pubof paragraph numbers in square brackets, thus: The Government of malaysia does not guarantee to maintain future updates of the Manual for sale to practitioners. Each member of the Registry staff holding of a copy of the Manual is responsible for keeping it up-to-date and in good condition.

10 [ - ] Statutory Authorities Section 1(2) of the Act states: This Act shall apply throughout malaysia . It thus applies to each of the component regions of malaysia , which are defined in section 3(1) as the regions of West malaysia , Sabah and Sarawak. The Act came into force on 1st September, 1983. Prior to that date, separate Ordinances relating to TRADE MARKS had effect in each component region, and these were repealed by section 84. However, special provisions were made for applications for registration, which were filed under the repealed Ordinances while they were still in force, and to registrations obtained from such applications, even if the MARKS concerned were not actually entered on the register until after 1983. These special provisions are dealt with, as required, in the relevant chapters of the Manual. Because the statutory provisions applicable in malaysia use language similar to that employed in the corresponding legislation of the United Kingdom, and some other jurisdictions, decisions of the judicial authorities there, while not binding in malaysia , constitute persuasive authoriti