Amendments give protection to well-known trademarks

Malaysia's Trademarks Act 1976 has been amended to recognize and protect well-known marks in compliance with the Trade-Related Intellectual Property Agreement (otherwise known as TRIPs). The amendments have important implications for e-businesses that wish to use their trademarks as part of their domain names.

Prior to the amendments, well-known marks had to be registered or used in Malaysia to be protected. Foreign corporations that had established goodwill in their marks in jurisdictions other than Malaysia, which then found that the marks had been registered or were being used in Malaysia by an unauthorized third party, had no recourse under the Trademark Act to stop such use.

The amended act specifically provides that the proprietor of a well-known mark is entitled to obtain an injunction to restrain unauthorized use in Malaysia of a trademark (or domain name) which is identical to, or closely resembles, the proprietor's mark in respect of the same goods or services, where the use is likely to cause deception or confusion. For the purposes of this provision, the act states that a 'well-known mark' is a mark that is well known in Malaysia as being the mark of a particular entity, regardless of whether that entity carries on business, or has any goodwill, in Malaysia.

The amended act also states that a well-known mark (domain name) cannot be registered in Malaysia by an entity other than the proprietor in respect of the same goods and services for which the well-known mark (domain name) is used by its proprietor.

The law does not, however, prohibit registration of a well-known mark (domain name) by a third party in respect of other goods and services, unless (i) the well-known mark has been registered in Malaysia, and (ii) use by the third party would indicate an erroneous connection with the proprietor of the well-known mark sufficient to damage the proprietor's reputation. Therefore, it is advisable that if a company wishes to use its well-known mark as its domain name, it should register both the mark and the domain name in Malaysia, to ensure that they are not registered in respect of different goods and services.

Janini Rajeswaran, Zul Rafique & Partners, Kuala Lumpur