Trademark

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