Well-Known Marks In Malaysia

Question 1
What constitutes a well-known mark in Malaysia?

Answer 1
A well-known mark must be;
· The mark is well known in Malaysia.
· A mark registered or unregistered.
· The registered owner belongs to an individual who is a member of a country party to the Paris Convention regardless of whether he carries on business, or has any goodwill, in Malaysia.
However, the protection for well known trade marks is only invoked when the conflicting mark uses the same goods or services as that of the well known mark.

Question 2
What are the requirements and types of evidence to qualify a mark as a well-known mark in Malaysia?

Answer 2
The requirements and types of evidence to qualify a mark as a well known mark includes;
· The degree of knowledge or recognition of the mark in the relevant sector of the public.
· The duration, extent and geographical area of any use of the mark.
· The duration, extent and geographical area of any promotion of the mark including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark is applied.
· The duration and geographical area of any registrations, or any application for registration of the mark to the extent that they reflect use or recognition to the mark.
· The record of successful enforcement of rights in the mark particularly in extent to which the mark was recognized as well known by competent authorities.
· The value associated with the mark.

Question 3
What is the scope of protection for a well-known mark in Malaysia?

Answer 3
The scope of protection for a well-known mark in Malaysia;
The registration of a mark will not be allowed if: -
· It is identical or confusingly similar or constitutes a translation of a mark which is considered by the relevant authority in Malaysia to be well known in Malaysia, whether or not the mark is registered and used for identical or similar goods or services.
· It is identical or confusingly similar or constitutes a translation of a mark which is considered by the relevant authority in Malaysia to be well known based on the above stated requirements, which is registered in Malaysia, in respect to similar or different goods / services registered for; so long as the use of the mark indicates a connection between those goods and services with the proprietor of the registered well known mark, provided that the interests of the proprietor will be compromised by the use of the conflicting mark.

Question 4
What are the benefits conferred to the registered owner of a well-known mark in Malaysia?

Answer 4
The benefits conferred to the registered owner of a well-known mark;
· In Malaysia, there is no special or separate filing for well known marks. Trade mark applications for well known marks must be go through the standard trade mark examination process.
· In the event an objection is raised during the Registry’s examination of the mark or an opposition issue is raised by a third party, the Applicant may defend their mark by relying on the requirements to qualify a mark as a well known mark as stated above.
· A registered owner of the well known mark is entitled to restrain the use of the mark which were used in the course of trade in Malaysia without the registered owner’s consent and the conflicting mark resembles essential parts or is identical to the well known mark, in respect of the same goods / services, where the use is likely to cause confusion.

Question 5
What are the options of defensive trade mark protection in Malaysia?

Answer 5
The options of defensive trade mark protection;
· A well known mark may be registered as a defensive mark in all classes of goods / services in addition to the classes of goods or services in which the well known mark is actually in use.
· To register for a defensive mark in respect of any goods and services, the registered owner must have an existing registration of the mark.
· A defensive mark must have an established reputation for certain goods and services for which the mark is already registered wherein the registered owner of the mark must show that the public would incorrectly construe that the mark used in relation to other goods and services, indicates a trade connection with the registered owner.
· The registration of a defensive mark is immune to cancellation action for non-use of the mark and will not be required to show proof of use for the purpose of renewing the defensive registration, so long as the main registration is in force.
· Infringement action can be taken against unlawful use of the well known mark even though the infringing mark is used in relation to dissimilar goods / services.