Region: Malaysia

Non-use under Section 46 of the Trademarks Act clarified by High Court

In <i>Godrej Sara Lee Ltd v Siah Teong Teck</i>, the High Court has clarified what constitutes non-use of a registered trademark under Section 46 of the Trademarks Act 1976. Among other things, the court rejected the respondent's argument that non-use was excused by special circumstances in the trade; the court found that in this case non-use was not due to any peculiar or abnormal event.

14 November 2007

Trademarks (Amendment) Regulations 2007 in force

The Trademarks (Amendment) Regulations 2007 are now in force. The regulations amend the Third Schedule of the Classification of Goods and Services in the Trademarks Regulations 1997 and replace the existing classification of goods and services with the ninth edition of the Nice Classification.

30 October 2007

FlyFirefly soars to success in domain name dispute

In <i>FlyFirefly Sdn Bhd v Nikabina IT MSC Sdn Bhd,</i> a three-member panel of the Regional Centre for Arbitration Kuala Lumpur has ordered the transfer of the domain name 'firefly.com.my' to FlyFirefly under MYNIC's Domain Name Dispute Resolution Policy. The panel found that Nikabina had no right or legitimate interest in the relevant domain name and that it had registered the domain name in bad faith.

08 October 2007

Former distributor has no joy in KICKAPOO infringement claim

The Malaysian Court of Appeal has discharged an injunction granted to the former distributor of the Kickapoo carbonated drink against the drink's current distributor. The court held that as the former distributor is not the mark owner, it does not have a proprietary interest in the mark and thus its remedies lies in contract rather than trademark law.

20 September 2007

IP courts operational soon

The Minister of Domestic Trade and Consumer Affairs, Datuk Shafie Apdal, has announced that specialist IP courts are expected to be operational by the end of July 2007. There will be 15 Sessions Courts set up to hear criminal prosecutions involving IP issues and six High Courts will be granted special status in states with the highest number of IP rights infringements.

10 July 2007

Malaysia announces ambitious plans for new IP regime

The Malaysian government has launched its ambitious National Intellectual Property Policy which aims to, among other things, harness intellectual property as a new engine of growth for the enhancement of economic and social prosperity. One of the key measures to be introduced by the policy is the creation of a special Intellectual Property Court to expedite the disposal of IP-related cases.

01 June 2007

Deadline for fast-track approval missed

Malaysia and the United States have both missed the March 31 2007 deadline to submit a bilateral Free Trade Agreement to the US Congress which would have allowed for fast-track approval. Issues surrounding the protection of IP rights are thought to be a major stumbling block, but talks are expected to resume shortly.

17 April 2007

Court spins out yarn passing off decision for 16 years

The High Court has finally issued a decision in the case of <i>Dollfus-Mieg & Cie v Macy Sdn Bhd</i>, 16 years after the close of the trial. After having heard from a total of 30 witnesses, the court ruled that the plaintiffs had failed to prove their claim of passing off against the defendants. However, despite the length of time taken to come to a decision, no grounds of judgment were given by the court.

05 April 2007

National IP policy in the pipeline

The government of Malaysia has put into motion plans to formulate a national IP policy that seeks to make intellectual property a national asset and key instrument for economic growth. The first draft of the policy is expected to be made public by mid-2007 after it has been tabled to cabinet members.

25 January 2007

McDonald's turns up the heat on MCCURRY

An Indian curry house located in Kuala Lumpur, trading under the mark MCCURRY, has lost a five-year legal tussle with US fast-food restaurant chain operator McDonald's Corporation. The Kuala Lumpur High Court has ordered McCurry Restaurant to stop using immediately the prefix 'Mc', which it held to be distinctive of McDonald's.

20 October 2006

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