If a trademark registration owned by Company A is assigned to Company B, can Company B recover damages for past infringements?

If A assigns the rights to a mark to B while on infringement was going on, B will not be a party to the past infringement under Malaysian Law. B will have rights only after putting the infringer on constructive notice (which will be after such an assignment is dated and filed at the PTO). Infringement of a property right cannot follow with an IP right transfer or assignment.

A fresh notice of infringement will have to be issued to the infringer by B and thereafter damages will start.

For more information, contact us at: malaysia@mirandah.com

Assess damages

How does the High Court assess damages?

1) The most common way to assess damages will be based on profit loss. The judge and the lawyers will take this as the easiest route of assessment of loss of profit. This is in 90% of the cases. This is how the damages was given by the High Court.

2. In very rare cases the winning party will ask for profit that the winning party would have gained otherwise. I say this is rare as the winning party usually would have to prove that they actually lost. If a plaintiff wins the infringement action hypothetically, if they go on (2) they will be not able to prove that they lost profits when in actual fact, the plaintiffs sales would have gone up tremendously in the years that the infringement went into the market.

So (1) would be the way to assess damages in most or all the cases.

For more information on intellectual property consulting, contact us at: malaysia@mirandah.com