Region: Malaysia

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.

17 June 2013

Federal Court recognises that fashion brands often engage in product diversification

In <i>Yong Teng Hing B/S Hong Kong Trading Co v Walton International Limited</i>, the Federal Court has affirmed a decision of the Court of Appeal finding that the respondent’s goodwill and reputation extended beyond clothing and apparel in Class 25. This case represents a victory for brand owners, as it demonstrates the willingness of the Malaysian court to keep up with trends, including product diversification.

19 November 2012

MyIPO introduces IP Official Journal

The Malaysian Intellectual Property Office is introducing an <i>IP Official Journal</i>, 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.

21 June 2012

Revamped Trade Descriptions Act introduced

The Malaysian government has introduced a revamped Trade Descriptions Act, which repealed the Trade Descriptions Act 1972. Among other things, a 'trade description' is now clearly defined as including a registered trademark. In addition, the new act has widened the scope of punishable offences and introduced significantly increased penalties.

09 January 2012

Federal Court clarifies that registrar of trademarks is not an inferior court

In <i>Yong Teng Hing B/S Hong Kong Trading Co v Walton International Limited</i>, the Federal Court has held that a decision of the registrar of trademarks is not a decision of a subordinate court under the Court of Judicature Act. Based on the decision, it seems that appeals from decisions of the registrar may be filed all the way up to the Federal Court, as the registrar does not fall within the definition of a 'subordinate or inferior court'.

10 October 2011

Assessment of damages must be based on loss of business profits

In <i>Taiping Poly (M) Sdn Bhd v Wong Fook Toh</i>, the Federal Court has considered the principles of law to be applied when assessing damages in a trademark infringement and passing off case. The court held that the principal head of damage is the 'loss of business profits' caused by the diversion of the plaintiff’s customers to the defendant as a result of the defendant’s misrepresentation.

11 May 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.

15 March 2011

No implied waiver of approval system by conduct and practice

In <i>Playboy Enterprises International Inc v Zillion Choice Sdn Bhd</i>, the High Court has ruled that, in relation to trademark licensing, no conduct or practice at variance with the contractual terms constitutes a waiver of the licensor’s right to demand exact compliance with the written terms of the agreement.

24 January 2011

Proposed amendments promise better protection of trademark rights

The government has proposed changes to Malaysia's trademark legislation and is currently in consultation with the industry to obtain feedback. Among other things, the Trademarks Bill 2010 proposes a revised regime of absolute and relative grounds of refusal to help simplify the examination procedure. The bill should result in a more effective regime for the protection and maintenance of trademark rights.

01 December 2010

High Court considers protection of geographical indications as trademarks

In <i>The Agricultural and Processed Food Products Export Development Authority of India v Syarikat Faiza Sdn Bhd</i>, the High Court has ordered the removal of the registration for the PONNI mark from the Trademarks Register. One of the issues of importance considered by the court, due to the dearth of case law on the point, was the extent to which geographical indications are protected from abusive use and claims by traders.

02 November 2010

Unlock unlimited access to all WTR content