Region: Malaysia

‘.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

Invalid registration certificate cannot form basis of infringement claim

In <i>Ginvera Marketing Enterprise Sdn Bhd v Tohtonku Sdn Bhd</i>, the High Court has ruled that the plaintiff’s certificate of registration was invalid, as it had not been issued in compliance with the provisions of the Trademarks Act 1976 and the Trademarks Regulations 1997. Therefore, the certificate could not be used as a basis for a claim for trademark infringement.

23 July 2010

Forwarding agent found liable for trademark infringement and passing off

In <i>Philip Morris Products SA v Ong Kien Hoe</i>, the High Court has found in favour of Philip Morris Products SA in relation to its claim for trademark infringement and passing off against a forwarding agent. The judgment appears to suggest that even agents who unknowingly deal in counterfeit goods are unlikely to escape liability.

22 March 2010

Federal Court puts an end to battle over 'Mc' prefix

In <i>McDonald's Corporation v McCurry Restaurant (KL) Sdn Bhd</i>, the Federal Court of Malaysia has refused to grant US fast food giant McDonald’s leave to appeal against a decision of the Court of Appeal in which the latter had held that a Malaysian restaurant could use the trade name McCurry.

22 September 2009

McDonald's loses fight with McCurry over 'Mc' prefix

McDonald's has lost its battle over the 'Mc' prefix against the McCurry restaurant in Malaysia.

08 September 2009

Grounds of LEO Pharma decision issued

The grounds for the decision of the Malacca High Court in <i>LEO Pharmaceutical Products Ltd A/S v Kotra Pharma (M) Sdn Bhd</i> have been released. The decision, which clarified a wide range of issues relating to pharmaceutical trademarks, should be welcomed by the pharmaceutical industry.

23 July 2009

McDonald’s loses eight-year battle over 'Mc' prefix

In <i>McCurry Restaurant (KL) Sdn Bhd v McDonald’s Corporation</i>, McDonald’s Corporation has lost an eight-year legal battle over the use of the prefix 'Mc' as part of the name of a restaurant. Among other things, the Court of Appeal found that McDonald's did not have a monopoly over the use of the prefix ‘Mc’ and that the average consumer would not associate the McCurry Restaurant with McDonald’s.

08 June 2009

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