IP Litigation

Trade mark Infringement (only for
Registered Mark)

Remedy Under Trade Mark Act 1976
(Civil In Nature)

  1. The remedy available under Trade Mark Act 1976 is only for registered proprietor of a mark.
  2. The remedy for a registered proprietor is available under Section 38 of the Trade Mark Act 1976 whereby a registered trade mark is infringed by a person who (“infringer”), not being the registered proprietor of the trade mark or registered user of the trade mark, have used a mark which is identical with or nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or service in respect of which the trade mark is registered.
  3. The use of the mark by infringer, is likely to be taken either as being use as a trade mark upon goods or in physical relation or in an advertising circular or other advertisement, as importing a reference to a person having the right either as a registered proprietor or registered user.
  4. In order to commence an action against the infringer, the mode of application shall be by way of Writ of Summons.
  5. In event that the infringer is able to show that they are the “first user” of the trade mark in Common Law, they are entitled to have the mark removed by way of a Court Order.
  6. The elements in Registrable Trade Mark under Section 10 of the Trade Mark Act 1976 is usually used as a defence against infringement of trade mark.

Criminal in nature

  1.  The remedy available under Trade Description Act 2011 can be seen in Section 8 of the Act whereby any person who applies a false trade description to any goods as if the goods were subject to any rights relating to registered trade mark or supplies or offers to supply any goods relating to trade mark or exposes for supply or has in possession, custody or control for supply any goods which a false trade description is applied, commits an offence.
  2.  Any person is a corporate body who is convicted under Section 8 of the Act shall be liable to a fine not exceeding RM15,000 for each goods bearing the false description and for a subsequent offence, to a fine not exceeding RM30,000 for each goods bearing the false trade description.
  3. Any person is not a body corporate who is convicted under Section 8 of the Act shall be liable to a fine not exceeding RM10,000 for each goods bearing the false trade description or to imprisonment for a term not exceeding  3 years or to both. And for a second or subsequent offence, to a fine not exceeding RM20,000 for each goods bearing the false trade description or to imprisonment for a term not exceeding 5 years or to both.
  4. In order to commence enforcement under the Trade Description Act, the mode of application shall be by way of Originating Summons  [Ex Parte] supported by Affidavit.

Unregistered Mark

Passing Off

  1. Passing off action is a comman law tort available for unregistered mark or business that has acquired business goodwill and reputation.
  2. In order to succeed in passing off action, the Claimant must proves the following:
    1. (a) that there is goodwill and reputation on the Claimant’s business goodwill and reputation;
    2. (b) that there must be a false representation to the public to have the public believe that the goods/services of the Defending party are that of the Claimant;
    3. (c) that there must be some likelihood deception or confusion by the Public  as a result of the misrepresentation by the defending party.
  3. To commence a passing off tort action against the defending party, the proper mode shall be by Writ of Summons.
  4. The Defence against Passing off usually lays within the elements to prove passing off.

Cancellation Action Under Section 45

  1. Section 45 of the Trade Mark Act 1976 is a remedy available for a person aggrieved by the non-insertion in or omission from the Register of any entry or by any entry made in the Register without sufficient cause or by entry wrongfully remaining in the Register.
  2. The above application is made by a person aggrieved by the situation illustrate above, by applying to Court to have the registered trade mark expunged or vary from the entry of the Register

Cancellation Action Under Section 46 of the Trade Mark Act 1976

  1. Section 46 is a remedy available for a person aggrieved by the registration of a trade mark without intention in good faith or non-use for the trade mark for continuous period of 3 years before 1 month of the filing of the application under this particular section.
  2. In order to succeed in Section 46 and 46, the Applicant is required to prove that they are the aggrieved party. A party who have actual interest in the said Trade Mark i.e. evidence of use of the Trade Mark in local jurisdiction of Malaysia
  3. Subsequent to that, the Applicant is required to produce a survey report/investigation report conducted throughout Malaysia  for a continuous of 3 years to prove non-use of the trade mark by Respondent.
  4. Both Section 45 and Section 46 are commenced by way of Originating Summons supported by Affidavits.

Patent

Patentability

  • An invention is patentable if it is new, involves an inventive step and is industrially applicable.
  • An invention is new/novel if it is not anticipated by prior art.
  • Prior art consist of everything disclosed to the public, anywhere in the world by written publication or by oral disclosure, or by use or in any other way, prior to the priority date of the patent application claiming the invention. Or the contents of a domestic patent application n having an earlier priority date than the patent application referred to.
  • The elements to patentability are usually used as defence against Patent Infringement.

Infringement of Patent

  • Section 58 of the Patent Act 1983 provides that any infringement of a patent shall consist of the performance of any act such as to exploit a patented invention by making, importing, offering for sale, selling, using, stoking by other than the owner of the patent and without the agreement of the owner.
  • However infringement proceedings may not be instituted after five years from the act of infringement.
  • Usually expert evidence is required to be tendered in Court.
  • To begin Patent Infringement action,  the Claimant has to commence a Writ Summons action.

Action begun with Writ of Summons

  1. The Plaintiff has to file the Writ of Summons together with a Statement of Claim which contains all the particular and facts pertaining to the dispute.
  2. Once the Plaintiff extracted the sealed copy of the Writ of Summons, the Plaintiff has 1 month to serve the sealed copy of the Writ of Summons and the Statement of Claim to the Defendant.
  3. The Defendant has 14 days to file their defence and/or counter claim against the Plaintiff.
  4. The Plaintiff has 14 days to file their reply to the Defence and/or defence to the Counter Claim.
  5. Thereafter the Court will fix a date for case management to give a pre-trial case management.
  6. The Court will usually allow the parties two (2) months to file their respective Bundle of Document, to sort out the Agreed Issues To Be Tried, the Agreed Facts.
  7. The Court will also fix the matter for Full Trial which will be usually 6 months away from the date of the filing of the Writ Summons.
  8. Upon Full Trial, witnesses from both sides of the parties shall attend and give testimony on oaths.
  9. Thereafter the Court will fix a date for parties to exchange their Written Submission on legal points and will fix a date for hearing/clarification/decision.
  10. The whole process will take about 9 months.

Action begun with Originating Summons

  1. The Applicant has to file the Originating Summons supported by Affidavit which contains all the particular and facts pertaining.
  2. Once the Applicant has extracted the sealed originating summons from Court, the Plaintiff shall serve the Originating Summons to the Respondent before the return date (1st hearing date, which is usually a month away from the date of filing of the Originating Summons).
  3. The Respondent thereafter shall have 21 days to file their affidavit in reply if they intended to challenge the Applicant’s affidavit.
  4. Thereafter, the Court usually allows parties to file an additional 2 affidavits respective.
  5. Once affidavits are exhausted. The Court will fix a hearing date for the Originating Summons and the hearing will usually at the 4th months after the filing of the Originating Summons. However if the affidavits contained conflicting averment, the parties are allowed to cross examine the deponents of the Affidavits by fixing a date for cross-examination.
  6. The Court will also give direction to the parties to exchange their submission.
  7. The Court will usually give their decision on the 6th or 7th  month after the filing of the Originating Summons.

Action begun with Originating Summons (Ex Parte)

  1. The Applicant has to file the Originating Summons supported by Affidavit which contains all the particular and facts pertaining.
  2. Once the Applicant has extracted the sealed originating summons from Court, the Court will fix a date for hearing of the Originating Summons and to decide whether to grant the relief applied by the Applicant.
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