Trademark dispute settlement in Malaysia: A comparative analysis with the TRIPS and the Paris convention

Abstract

Trademark is a mark, name, sign, smell or a sound, which distinguishes goods and services of one undertaking, from goods and services of other undertakings. Malaysia had the trademark ordinance 1950; which is repealed by the trademark act 1976 and thereunder, the trademark regulations are made in 1997. The trademark dispute arises between the parties, at the time of the registration of the trademark and at later stages; when the infringement of the registered trademark is occurred. The aggrieved party may settle the trademark dispute in Malaysia, through the civil procedure, the administrative procedure and through the criminal procedure; to protect his right of trademark in Malaysia. The substantive law; dealing with the civil procedure of the trademark dispute settlement in Malaysia; includes the trademark act 1976 and the Specific Relief Act 1950 and the procedural laws include the Order 87 of the Rules of the Court 2012 and the Order 100 of the Rules of the High Court 1980. The substantive criminal law; for the settlement of the trademark dispute through the criminal procedure; in Malaysia; is the Trade Description Act 2011 and the procedural law is the code of criminal procedure 1935. The trade description act states that a false trade description includes the trademark infringement and the false trade indication is also an infringement which is a misleading statement in an advertisement for the purpose of trade. The administrative procedure runs under the trademark regulations 1997, the intellectual property corporation of Malaysia act 2002 and the relevant provisions of the trademark act 1976 and the relevant provisions of the Customs Act 1967. The Paris convention contains provisions related to the border measures and the Agreement Trade Related Aspects of Intellectual Property Rights TRIPS includes a comprehensive chapter on the enforcement of Intellectual Property (IP) rights in member states. This article compares the current trademark dispute settlement structure in Malaysia with the relevant provisions of the TRIPS and the Paris Convention. Key words: Intellectual Property (IP), trademark, intellectual property corporation of Malaysia (My IPO), trademark Act 1976, trademark regulations 1997, trade description Act 2011.