Hafiz Zubir & Co.


On my previous article on the importance of registering your business trademark, one of the importance is that the registration certificate issued to the trademark proprietor from the Registrar Office is a prima facie evidence on the ownership of the said trademark.

Under Trade Marks Act 1976, a registered trademark will have the privilege and will be protected by the provisions under the said Act. One may ask what are the remedies available to the registered trademark proprietor in the event the registered trademark is infringed?  Well, one of the actions that they can choose is to lodge a report on the infringement with the Ministry Of Domestic Trade And Consumer Affairs (hereinafter referred to as “KPDNKK”) hence the KPDNKK may conduct a raid at the premises where the infringement alleged took place and seize the said infringed trademark as evidence when the alleged infringer being charged under a criminal procedure.

In a case where the alleged infringed trademark is not a one-to-one copy to the registered trademark, the registered trademark proprietor shall obtain a Trade Description Order (hereinafter referred to as “TDO”) from a High Court. Section 8 and Section 9 of the Trade Description Act 2011 (the Act) state that:

Section 8. Prohibition of false trade description in relation to trade mark

8. (1) Notwithstanding sections 5 and 6, a trade description shall include an indication, whether direct or indirect, and by any means given, in respect of any goods or parts of goods relating to any rights in respect of trade mark registered under the Trade Marks Act 1976 [Act 175].

(2) Any person who –

(a) applies a false trade description to any goods as if the goods were subject to any rights relating to the registered trade mark;

(b) supplies or offers to supply any goods to which a false trade description is applied as if the goods were subject to any rights relating to registered trade mark; or

(c) expose for supply or has in his possession, custody or control for supply any goods to which a false trade description is applied

Section 9. Trade description order

(1) Where any person being a registered owner of a registered trade mark under the Trade Marks Act 1976 claims that his rights in respect of such trade mark are being infringed in the course of trade, by any other mark or get-up used by any other person, which is not identical with his registered trade mark but can be passed off as his registered trade mark, he may apply to the High Court to declare that the infringing mark is a false trade description for the purpose of section 8.

(2) For the purpose of subsection (1), the person referred to in subsection (1) in making the application shall identify specifically the infringing trade or other mark or get-up and the High Court may, on the application of such person, make an order declaring that the infringing trade or other mark or get-up is for the purposes of this Act, a false trade description in its application to such goods as may be specified in the order.

(3) An order of the High Court made under this section may be referred to as a trade description order.

In Pursuant to Section 9 Trade Description Act 2011, there are TWO (2) requirements that will be considered by the Court before the Court can grant a TDO.  First, the registered trademark proprietor must show that he has exclusive use over the trade mark. Second, the infringing trade mark must be identified precisely in comparison to the registered trademark. It is noteworthy that a TDO can only be applied if the trademark is registered under Trade Marks Act 1976. A certificate of registration serves as an important document to establish the ownership of the trademark and this is one of the requirements that KPDNKK will ask before any action can be taken by them.

Apart from that, the Applicant must have detailed information with regard to the infringer such as the place of business, the infringed trademark, the identity of the infringer and all the detailed information shall be included in the TDO application in Court.

In conclusion, we can see the advantage between a registered trademark and the unregistered trademark. This should be one of the advantages that must be grabbed by every business owner in order to protect their business trademark after all the investment they had put in it.

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