Region: Malaysia

High Court varies UBS trademark registration

The Kuala Lumpur High Court has ordered that the mark UBS held by UBS Corporation Berhad revert to its original form, which included a geometrical device and the words 'User Business System'. The application for expungement or variation had been filed by UBS AG, a global banking group, which claims rights in the UBS mark.

17 October 2006

BOSS marks for cigarettes burnt off register

Following an application for cancellation by fashion company Hugo Boss AG, the High Court has ordered the expungement of several marks that incorporate the word 'boss' for cigarettes. The court found that as the marks had not been used in relation to the goods for which they were registered, they were invalid under Section 55(2) of the Trademarks Act 1976.

03 October 2006

Bata powerless to cancel SPORTS POWER mark

The Court of Appeal of Malaysia has dismissed an appeal brought by a well-known shoe manufacturer, which owns a POWER device mark, in relation to its action to expunge a SPORTS POWER device mark used for socks and underwear. In concluding that there was no likelihood of confusion, the court emphasized that the trade channels of the two parties' goods are different.

21 September 2006

First landlord liability action filed in IP case

Malaysia has witnessed the filing of the first local landlord liability suit in an IP infringement case. While the case concerns the sale of pirated optical discs that infringe copyrights, its outcome should be monitored by mark owners whose goods are regular targets for counterfeiters; landlord liability actions may become a course of action for them too in Malaysia.

13 July 2006

Free trade agreement talks progress well

Malaysia and the United States have held the first round of free trade agreement talks. The negotiations were held between US trade representatives and officials from the Malaysian Ministry of International Trade and Industry. The negotiations involved an exchange of data and gathering of information to identify areas of potential concern, including issues relating to intellectual property.

28 June 2006

IP Office clarifies extension of UK-registered design rights

Following a decision by the High Court of Malaysia, the Intellectual Property Office has sought to put an end to the confusion surrounding the extension of registered industrial design rights. The High Court ruling approved the extension of design rights up to a total of 25 years.

23 June 2006

High Court supports registry's refusal to force company name change

The High Court has refused to order Toyo Ink Group Berhad to change its name. The court found that not only was the name distinct from the plaintiffs', but also that the Malaysian Registry of Companies has no jurisdiction over foreign-registered companies and is under no duty to be vigilant over whether foreign companies' names are similar to those registered with it.

18 April 2006

Duration of UK-registered industrial designs extended

The High Court has ruled that industrial designs registered under the UK act before the Malaysian Industrial Designs Act came into effect on September 1 1999 are extendible for fourth and fifth terms of five years each. This decision overrules a circular issued by the Industrial Designs Registration Office in 2005 that stated that UK-registered designs would not be extendible beyond three five-year terms.

09 February 2006

High Court axes action against liquor mark

The Kuala Lumpur High Court has dismissed an application for an interlocutory injunction against the user of the TWO AXE device mark for liquor. The court held that (i) the plaintiff had failed to establish any likelihood of confusion with its KAPAK mark (meaning 'axe') for the same goods, and (ii) the defendant would suffer hardship if the injunction were granted.

21 October 2005

Special IP court moves step closer to reality

The creation of a specialized IP court has come one step closer to reality with the submission of a draft proposal to the attorney general last month. It is hoped that judges trained and experienced in IP issues will help (i) dispose of the backlog of IP cases efficiently, and (ii) Malaysia to rid itself of its reputation as a top exporter of counterfeited digital products.

14 October 2005

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