Region: Malaysia

Federal Court declines to answer questions on foreign-owned marks

In <i>Meidi-Ya Co Ltd Japan v Meidi (M) Sdn</i>, the Malaysian Federal Court has refused to answer a number of questions of law pertaining to the doctrine of first use and ownership of a foreign trademark. Among other things, the court held that the questions referred to it were not properly framed.

15 April 2009

LEO Pharma victorious against generic drug manufacturer

In <i>LEO Pharmaceutical Products Ltd A/S v Kotra Pharma (M) Sdn Bhd</i>, the Malacca High Court has held that use by a Malaysian generic drug manufacturer of the marks AXCEL FUSIDIC and AXCEL FUSI-CORTE infringed LEO Pharma's FUCIDIN and FUCICORT marks. Among other things, the court rejected the Malaysian company's claim that Leo Pharma's marks had become generic.

27 March 2009

MyIPO considers introduction of non-traditional trademarks

The Intellectual Property Corporation of Malaysia is considering extending the scope of protection of the Trademarks Act 1976 to non-traditional trademarks. Among other things, it is re-examining the various procedural stages of the trademark registration process to incorporate non-traditional trademarks.

23 March 2009

Trade description order held to be null and void

In <i>Thye Huat Chan Sdn Bhd v Thye Shen Trading Sdn</i>, a Malaysian court has set aside a trade description order on the grounds, among others, that it did not correctly identify the allegedly infringing mark. The case illustrates the fact that the courts will not hesitate to set aside such an order where the applicant has failed to comply with the requirements of the Trade Description Act.

09 December 2008

Federal Court reserves judgment in important case on foreign marks

The Federal Court has reserved judgment in <i>Meidi-Ya Co Ltd Japan v Meidi (M) Sdn</i>, a case which involves important issues pertaining to the doctrine of first use and ownership of a foreign trademark. The decision of the court is eagerly awaited by the trademark community – in particular, by foreign trademark owners.

22 October 2008

Luxury fashion house loses trademark infringement case

In <i>Consitex SA v TCL Marketing Sdn Bhd</i>, the newly established Malaysian IP Court has dismissed Consitex SA's trademark infringement and passing off claims against TCL Marketing Sdn Bhd. Among other things, the court held that there was no likelihood of confusion between Consitex's ERMENEGILDO ZEGNA trademark and TCL Marketing's EMMER ZECNA mark.

28 May 2008

First joint IP training programme for Customs and MDTCA

The first joint IP training programme for the Royal Malaysian Customs and Ministry of Domestic Trade and Consumer Affairs officials has been held at the Customs headquarters in Putrajaya. Among other things, the programme aimed to encourage the customs authorities to work in partnership with the ministry to fight counterfeiting at the borders.

08 May 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.

23 April 2008

McLaren fails to expunge MCLAREN trademark

In <i>McLaren International Ltd v Lim</i>, the Court of Appeal has dealt a serious blow to Formula 1 team McLaren International Ltd's attempt to protect its famous trademark MCLAREN. The court held that McLaren was not a person aggrieved and thus had no standing to initiate an action to expunge the identical trademark MCLAREN for clothing and shoes.

17 January 2008

No monopoly over GIORDANO mark

In <i>Walton International Ltd v Hong Kong Trading Co</i>, the High Court has affirmed a decision dismissing the opposition filed by Walton International Ltd against the registration of the mark GIORDANO. The court held that the respondent was the first user of the mark in respect of Class 9 goods in Malaysia and that Walton could not claim a monopoly over the mark.

16 November 2007

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