Region: Malaysia

ZARA Case brings welcome non-use clarification

In <i>Industria De Diseno Textil SA v Edition Concept Sdn Bhd</i>, a court in Malaysia has dismissed a local company's action to cancel a ZARA registration owned by a Spanish fashion house. Among other things, the court clarified that the three-year non-use period required to cancel a mark runs from the date of actual registration and not the application date.

01 June 2005

Onus of proof in non-use actions rests on the applicant

In <i>E-Toyo Global Stationery v Toyo Ink</i>, a Malaysian court has held that in non-use expungement actions, the onus is on the applicant to establish a <i>prima facie</i> case of non-use. The court held that, in the case at hand, the respondents had provided evidence of some use of the TOYO trademark and it was irrelevant how limited that use had been during the relevant period.

03 May 2005

Procedural changes for the Registry of Trademarks

The Intellectual Property Corporation of Malaysia has changed its name to the Malaysian Intellectual Property Office. The office incorporates, among other things, the Registry of Trademarks, which recently introduced changes to some administrative proceedings relating to trademark registration and assignment.

28 April 2005

Malaysian Ledtronics makes light work of domain name complaint

A panellist of the Regional Centre for Arbitration in Kuala Lumpur has refused to order the transfer of the domain name 'ledtronics.com.my' to the owner of a pending registration for LEDTRONICS in Malaysia and registered marks in the United States and the United Kingdom. The panellist held that the registrant had legitimate interests in the domain name as it had incorporated the name Ledtronics prior to the complaint.

08 April 2005

Summary judgment process works for Intel

In <i>Intel Corporation v Intelcard Systems Sdn Bhd</i>, the High Court of Kuala Lumpur has upheld the plaintiff's application for summary judgment on its trademark infringement claim against a Malaysian entity using the INTEL mark as part of its company name. It is hoped that this ruling indicates a move towards greater use of the summary judgment process for trademark infringement actions.

01 April 2005

Guthrie successfully defends rain gutter infringement claim

In a case involving a UK registered design for a rain gutter, the Kuala Lumpur High Court has ruled that the shape of the design was common to the trade and thus not novel. The court awarded defendant Guthrie a declaration that no rights and/or privileges were acquired by the plaintiffs in Malaysia by virtue of the UK registration.

30 November 2004

Number of IP cases forces government to consider specialized court

The Malaysian government is considering the need for a specialized court to handle cases involving intellectual property. The move was triggered by the minister of domestic trade and consumer affairs, who is concerned about the increasing number of IP cases coming before the courts, as well as a backlog of cases awaiting resolution.

09 November 2004

Japanese wine producer toasts victory in character mark dispute

In <i>Sinma Medical Products Sdn Bhd v Yomeishu Seizo Co Ltd</i>, the Court of Appeal of Malaysia has ruled that the appellant was guilty of (i) infringing the respondent's registered trademark made up of three kanji characters (Japanese pictograms based on Chinese characters) for herbal, medicinal wine, and (ii) passing off its products as the respondent's.

22 October 2004

Wrongfully registered Multimedia Super Corridor logo cancelled

Following an order from the High Court of Kuala Lumpur, the Malaysian Trademarks Registry has effected the cancellation of a logo mark that was identical to the Malaysian Multimedia Development Corporation's logo used to promote a business hub in Kuala Lumpur known as the Multimedia Super Corridor.

25 June 2004

Consent judgment issued in TIMBERLAND passing off case

The Kuala Lumpur High Court has issued a consent judgment following a settlement agreement between Timberland Company and five defendant retailers. The judgment included an injunction restraining the defendants from using Timberland's TIMBERLAND and 'tree' design marks on clothing not manufactured by Timberland.

05 May 2004

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