Region: Malaysia

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

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

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