Region: Malaysia

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

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

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