Many business owners in Malaysia view that once they have registered their business name or tradename with the Companies Commission of Malaysia (“CCM”) they have successfully secured and protected their tradename. This is not the case as the scope of protection of tradename and trademark are different.
In Malaysia, a business name is used to identify a business, governed under the Companies Act 2016 and fully administered by the CCM. While trademark is used to identify a good or services and to distinguish it from others. Trademark is governed under the Trademark Act 2019 and under the purview of the Intellectual Property Corporation of Malaysia (“MyIPO”).
Many incidents happen whereby you may have successfully registered your tradename with the CCM and someone else may have registered your tradename as their trademark with the MyIPO prior to you. So what is the problem if you did not secure your trademark first? Although you may have successfully registered your tradename under the CCM, you will not enjoy full protection if the use of your tradename may be subject to legal proceedings for trademark infringement, passing off and/or unlawful interference with trade of a registered trademark by the registered trademark owner.
In the recent Court of Appeal case between SkyWorld Development Sdn Bhd & Anor v Skyworld Holdings Bhd & Ors [2020] 3 MLJ 294, the Plaintiff had appealed against the High Court decision in dismissing the Plaintiff suit against the Defendant for trademark infringement, passing off and unlawful interference with trade. In this case, the Plaintiffs are the registered owner of the mark “SkyWorld” since 2014 for businesses in relation to real estate and property development. The Defendants on the other has been using “Skyworld” and “Sky World” in relation to their company name and domain and their purported development project in Sabah.
The Court of Appeal judges had unanimously allowed the appeal and held that an action for infringement can be founded upon unauthorised use of a registered mark as part of a tradename or company name. In coming to that conclusion, the Court of Appeal had also greatly discussed the difference between a trademark, company name, business name and domain name. Although the law in Malaysia in relation to the tort passing off of similar nature has been discussed before, there were no case laws in regards to the trademark infringement over the unauthorised use of a registered trademark as part of a tradename or company name. For the first time, in determining the position for Malaysia in respect of this matter the Court of Appeal has referred to other common law jurisdictions like Australia, India, Singapore and the United Kingdom in determining that an infringement act could be founded on the unauthorised use of a registered trademark as part of a tradename or company name.
It is important, especially for a business owner to know the difference between a tradename and trademark and the importance to secure both. It is also advisable for all new business owners to be mindful and do their proper due diligence in selecting their tradename, trademark and domain name.
