Why should I register my Trade Mark?
Malaysia recognises common law rights of an unregistered trade mark. As such, it begs the question from many proprietors as to why should a trade mark be registered. Appended below are some benefits of having a registered trade mark:
A cause of action for trade mark infringement is only available to proprietors with a registered trade markFor unregistered trade mark, the cause of action lies in the common law tort of passing off. In most cases, it would be easier to establish trade mark infringement claim compared to passing off claim from an evidentiary point of view.
The Enforcement Division of the Ministry of Domestic Trade, Cooperatives and Consumerism (MDTCC) will only conduct enforcement raid under the Trade Descriptions Act 2011 for proprietors with a registered trade mark An enforcement raid is an administrative action by MDTCC to raid and seize counterfeit / non-genuine goods bearing the registered trade mark. 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 remedy of a Trade Description Order (TDO) is only available to proprietors with a registered trade markAn application for a TDO is made to the High Court when the alleged infringing mark is not identical to the registered trade mark whereby the Enforcement Division of the MDTCC will not conduct an enforcement raid without such a TDO.
The possibility of securitisation of a registered trade markIntellectual Property Rights, like any other property rights and assets, can be assigned, transmitted or transacted with. 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 author is one of our partner practising in intellectual property. If you require further information or assistance, he can be contacted at firstname.lastname@example.org.