Malaysia recognises common law rights of an unregistered trademark. As such, it begs the question from many proprietors as to why should a trademark be registered. Appended below are some benefits of having a registered trademark:
A cause of action for trademark infringement is only available to proprietors with a registered trademark. For unregistered trademark, the cause of action lies in the common law tort of passing off. In most cases, it would be easier to establish trademark infringement claim compared to passing off claim from an evidentiary point of view.
The Enforcement Division of the Ministry of Domestic Trade will only conduct enforcement raid under the Trademarks Act 2019 for proprietors with a registered trademark. An enforcement raid is an administrative action by the Ministry to raid and seize counterfeit / non-genuine goods bearing the registered trademark. Such administrative action is more cost-effective compared to initiating a civil suit before the High Court. Such administrative action would be recommended where the infringers will likely not respond to civil action.
The possibility of securitisation of a registered trademark, like any other property rights and assets. There have been efforts made to convince financiers in Malaysia to accept intellectual property rights as a form of security in providing financing to proprietors of such intellectual property rights. It is very likely for the financiers to require certificate of registration as proof of ownership of such intellectual property rights.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
