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The Rolling Stones and New Balance feature in Asia-Pacific Legal Updates you may have missed

Each quarter we will be running a series of pieces presenting recent Legal Updates that you may have missed. For this instalment we turn our attention to the Asia-Pacific region.

4 Nov 2020

Surge in counterfeit imports into Southeast Asia: crucial customs strategies for brand owners

Exports of counterfeit goods from China are increasingly heading to Southeast Asia. This guest analysis explores the strategies that rights holders should employ.

7 Aug 2020

Enforcement data reveals destination shift for counterfeits originating in China

The true scope of the illicit trade of fake goods is hard to define, but analysis by Rouse indicates that Southeast Asia is a fast-rising hotspot.

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11 Jun 2021

Apex court confirms that celebrities may sue for passing off of their own name

This groundbreaking decision of the Malaysian Federal Court, which is in line with decisions in other common law jurisdictions such as the United Kingdom and Australia, will be welcomed by Malaysian celebrities. Read more

10 May 2021

Court of Appeal: independent and distinct goodwill may be built up by local agent using own trademark and trade name

In a welcome development in the law of passing off in Malaysia, the Court of Appeal has confirmed that the cause of action of passing off is premised on the goodwill generated by the use of a distinctive indication of origin - whether a trademark or a trade name. Read more

3 Feb 2021

Court of Appeal holds that declarations of non-infringement are available under Trademarks Act

In a landmark decision that should be welcomed by the trademark community, the Malaysian Court of Appeal has declared that any interested party may obtain a declaration of non-infringement under the Trademarks Act 1976. Read more

6 Jul 2020

High Court cans counterfeit beer importer’s weak defence

Malaysian court’s recent ruling in favour of a brewer follows established case law on registration but notes sound public health reasons for cracking down on fake alcoholic beverages. Read more

Anti-Counterfeiting

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15 Apr 2020

Seven counterfeit hotspots in Malaysia that brand owners must be aware of

In the latest instalment in our regular series on marketplaces around the globe that are reportedly notorious for being counterfeit havens, we head to the Southeast Asian nation of Malaysia. Read more

17 Mar 2020

Trademark procedures and strategies: Malaysia

Trademarks in Malaysia are governed by the new Trademarks Act 2019 and the Trademarks Regulations 2019, which came into effect on 27 December 2019. Read more

1 Oct 2019

Apple MEMOJI lawsuit, Malaysia joins Madrid System, and TMview adds OAPI: news digest

In our latest round-up, we look at Huawei filing a lawsuit against a rival Chinese mobile maker, POW! Entertainment hitting back over Stan Lee lawsuit, Alt Legal acquiring MarkTend, and much more. Read more

18 Jun 2019

Malaysia introduces totally revamped Trademarks Bill

The Malaysian Parliament has tabled a new Trademarks Bill 2019 which could bring about significant changes to the existing regime for trademark protection and enforcement in the country. Read more

Brand management

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3 Apr 2020

New legislation brings even greater protection for well-known marks

The passing of new trademark legislation has strengthened the hand of owners of well-known and famous marks in Malaysia. Case law under the new statute is sparse, but the courts remain supportive of rights holders. Read more

17 Jul 2019

Infrequent pharmaceutical disputes have far-reaching consequences in Malaysia

While disputes over pharmaceutical trademarks are few and far between, decisions can have a significant effect on product manufacturing and public health. Read more

7 Jun 2018

New EUIPO report charts increasing sophistication and diversification of counterfeiters

The EUIPO has released a new report, compiling research since 2013, to present a comprehensive and updated picture of the scope and impact of IP rights infringement in the European Union.

22 Mar 2018

Franchising: the legislative framework in Singapore and Malaysia

The rules governing franchise agreements vary greatly across Asia. Here, we look at the different legislation related to enforcement and termination in Singapore and Malaysia. Read more

Enforcement and Litigation

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17 Feb 2020

Appellate court rules that use of a registered trademark as part of a trade name may constitute actionable infringement

In SkyWorld Development Sdn Bhd v Skyworld Holdings Bhd, the Malaysian Court of Appeal has held, for the first time, that an action for infringement can be based on the use of a registered mark as part of a trade or company name. Read more

8 Oct 2019

Is extra-territorial use sufficient to ground a claim for ownership of a trademark?

In SRAM LLC v Huan Schen Sdn Bhd, the Malaysian Court of Appeal has seemingly expanded the concept of ‘use’ of a trademark to include extra-territorial use. Read more

15 Apr 2019

A LIP TATTOO too easily erased? LVMH successfully defends suit against its use of DIOR ADDICT LIP TATTOO

LVMH has defeated an action brought by local cosmetics manufacturer Shinzens, owner of the mark LIP TATTOO, against LVMH’s use of the mark DIOR ADDICT LIP TATTOO in Malaysia. Read more

26 Nov 2018

Breaking new ground: Court of Appeal rules that ‘first user’ principle is not applicable to disputes between related entities

In Pathmanathan v Portcullis (Singapore) Pte Ltd, the Malaysian Court of Appeal has held that the courts are not bound by “hard and fast legal rules” when deciding on the ownership of a trademark among related entities. Read more

Government/Policy

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27 Feb 2017

Companies Commission prohibits corporate names which may mislead as to identity of company

The Companies Commission of Malaysia has issued the Guidelines on Company Names, which apply to all applications for registration of the name for incorporation of a company or a change of corporate name. In practice, the CCM now prohibits applicants for registration of a new corporation or business from adopting a name which is identical to a registered trademark.

16 Jun 2016

Boost for tobacco brands as poll confirms consumer fears over counterfeit impact of plain packaging

One of the arguments made against the introduction of plain packaging for cigarettes and other tobacco products is that the absence of branding would exacerbate the problem of counterfeiting, with potentially unsafe products becoming more accessible. As Malaysia lays the groundwork for a plain packaging regime, a recent poll of Malaysian consumers would seem to support that concern.

30 Jul 2014

MyIPO launches IPR Marketplace Portal

MyIPO has launched the IPR Marketplace Portal, which aims to bring together and connect individuals, investors and businesses for the purpose of commercialising and trading in IP rights. Among other things, the portal enables IP owners to put their patents, industrial designs, copyright and trademarks up for sale or out-licensing.

17 Jun 2013

Malaysian valuation marketplace still in its infancy; brand owners are advised to act now

The Malaysian government recently announced the formulation of a national valuation model, targeted at helping brand-owners and lenders understand the potential value of their IP assets. Trademark counsel note that the model may take some time to roll-out so brand owners with impending transactions should act now and have valuations carried out independently.

IP Offices

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18 May 2020

MyIPO operations in the wake of the covid-19 pandemic

As of 8 May 2020, the Intellectual Property Corporation of Malaysia has resumed operations in stages and on a limited basis. Read more

12 Oct 2016

Hong Kong performs well in illicit trade rankings, despite massive counterfeit trade volume

The Economist’s Intelligence Unit and the European Chamber of Commerce in Singapore (EuroCham SG) today released a report measuring Asia-Pacific jurisdictions by the extent to which they enable illicit trade, including counterfeiting and piracy. Singapore itself has a somewhat disappointing placing, just outranking China and beaten by its larger neighbour Malaysia; while Hong Kong’s high placement is somewhat at odds with other measures of its contribution to the global counterfeiting trade.

21 Jun 2012

MyIPO introduces IP Official Journal

The Malaysian Intellectual Property Office is introducing an IP Official Journal, which will allow the publication of patents, trademarks, industrial designs and geographical indications online. What is unique in the new system is that it includes a “promotions” feature, which will enable trademark owners to advertise their products or services on MyIPO’s website.

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15 Mar 2011

‘.my’ registry launches IDNs at second level

The ‘.my’ registry has announced that it was set to release and support IDNs at the second level. The roll out will begin with Jawi, and it is envisaged that Chinese and Tamil will be added in future. The first phase of registration for Jawi IDNs, which runs from January 24 to April 30 2011, is restricted to Malaysian government agencies and government educational entities.

23 Apr 2008

'.my' second-level domain launch enters second phase

MYNIC, the registry for the '.my' domain, has launched the second phase
of its second-level domain name service. Applications for registration are now
open to the public. Pursuant to the MYNIC registration guidelines, second-level
domain names must not be identical or confusingly similar to either a registered
trademark or a business or company name in Malaysia.

8 Oct 2007

FlyFirefly soars to success in domain name dispute

In FlyFirefly Sdn Bhd v Nikabina IT MSC Sdn
Bhd, a three-member panel of the Regional Centre for Arbitration Kuala Lumpur has ordered the transfer of the domain name 'firefly.com.my'
to FlyFirefly under MYNIC's Domain Name Dispute Resolution Policy. The panel found that
Nikabina had no right or legitimate interest in the relevant domain name and
that it had registered the domain name in bad faith.

12 Jul 2005

MYNIC considers reintroducing '.my' 2LDs

MYNIC, the manager of the '.my' domain space, is considering reintroducing
second-level domain names. It closed on June 24 a one-month consultation period
on its proposal, which envisages to re-launch 2LDs in two phases: (i) a pre-registration
period to allow registrants of 3LDs to register the equivalent 2LDs, and (ii)
a second period open to the general Malaysian public.

Portfolio Management

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2 May 2018

Good news for foreign mark owners: trademark hijacking thwarted by High Court

The Malaysian High Court has ruled that an authorised distributor is not allowed to hijack a trademark belonging to its manufacturer or supplier by registering the mark in its own name.

1 Mar 2018

Franchising: a global guide to brand monetisation

In the first of a two-part series, we outline the legislative framework for franchising in nine jurisdictions across Asia and South America. Read more

11 Dec 2017

Protecting and enforcing design rights: Malaysia

The protection of industrial designs in Malaysia is governed by the Industrial Designs Act 1996 and the Industrial Designs Regulations 1999, which came into force on September 1 1999. Read more

24 Nov 2016

Protecting and enforcing design rights: Malaysia

The protection of industrial designs in Malaysia is governed by the Industrial Designs Act 1996 and the Industrial Designs Regulations 1999, which came into force on September 1 1999. Read more

Trademark law

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6 Feb 2018

Apex court: TDOs may declare that goods are imitations

The Federal Court has considered the meaning and significance of Section 9 of the new Trade Descriptions Act 2011.

24 Oct 2017

Apple and Samsung back in court, trademark preparation for Singles Day, and an NBA legend’s counterfeit haul: news round-up

In the latest round-up, we look at the next step in a long-running IP feud between Apple and Samsung, a call for plain packaging in United Arab Emirates, and much more. Read more

23 Nov 2016

IP Court holds that 3D mark is a device

Three-dimensional (3D) trademarks are notoriously difficult to register in Malaysia because the existing law does not specifically provide for the registration of shape marks. However, many 3D trademarks have been filed by taking advantage of the non-exhaustive definition of a mark under the Trademarks Act 1976.

14 Dec 2015

Malaysia

The protection of industrial designs in Malaysia is governed by the Industrial Designs Act 1996 and the Industrial Designs Regulations 1999, which came into force on September 1 1999. The industrial designs law is a standalone regime and bears little similarity to the patent legislation. Applications undergo formal examination only, although objections of a substantive nature are occasionally raised.

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17 Sep 2021

@WTR_Alerts RT @OWNR_TRADEMARK: Emma Raducanu, the brand: why trademark protection needs to be a priority for tennis superstar. Read https://t.co/Lzzg… Read more

17 Sep 2021

@WTR_Alerts European Union - Legal Update Alert: In a victory for Apple Inc, which sought to invalidate the mark E*MESSAGE, the… https://t.co/AlKBGbjzeU Read more

17 Sep 2021

@WTR_Alerts RT @RandyMo01933793: This feature of 3M's Colette Durst in the World Trademark Review is just as inspiring as it informative! #Proud3Mer #3… Read more

16 Sep 2021

@WTR_Alerts RT @LCLD_rgrey: LCLD Diversity Professional Jeremiah DeBerry, Partner & Director of D&I #LCLDMember @Mayer_Brown, shares the three key conc… Read more

Malaysia

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Anti-Counterfeiting

Brand management

Enforcement and Litigation

Government/Policy

IP Offices

Online

Portfolio Management

Trademark law

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