2012 APAA Trademark Committee Special Topics

Transcription

1 2012 APAA Trademark Committee Special Topics "Protection of well-known marks from different perspectives" ISSUE 1: Finding of recognition of well-known marks Is there any possibility of finding a mark well-known in your jurisdiction in the case where the mark is not used in your jurisdiction but is well known in other countries? [Note] There would be a case where a mark is not used in your jurisdiction but the mark is well known in your jurisdiction through TV news, magazines and newspapers. For example, a restaurant s name or very delicious food name would apply to this case. Yes, it is expressly provided in our Trade Marks Act 1976 that there need not be use in Malaysia but that the mark must be well known to the Malaysian public and this can be established through advertisements made available to or targeted at the relevant public in Malaysia. ISSUE 2: Scope of geographic area where a mark needs to be found well-known In order for a mark to be found well known, will the mark have to be well known all over your jurisdiction or have only to be well known in part of your jurisdiction? Does the standard of finding such well-known mark vary depending on the case of excluding a third party s trademark registration or the case of excluding a third party s trademark use [Note] Sometimes a mark would be well known throughout your jurisdiction and sometimes a mark would be well-known only in part of your jurisdiction. Is it sufficient for a mark to be well known only in part of a jurisdiction in order for that mark to be protected as a well-known trademark? There are two phases of finding whether a mark is well-known. One is the phase where excluding a third 1

2 party s trademark registration and the other is the phase where excluding a third party s trademark use. Are the standards of finding a well-known mark depending on these two phases, for example, in terms of the level of the well-known status? It is possible that a mark may qualify as a well known mark even if it is well known only in part of a jurisdiction. The test is that it must be well-known to the relevant sector of the public. We do not have the two phase test mentioned above. ISSUE 3: Action against use by a third party who registered the well-known mark In the case where a third party has registered your well-known trademark earlier than you, can you exclude the third party (trademark registrant) from using the registered mark on the designated goods/services? [Note] There could be a case where a third party has applied for your well-known mark earlier than you and registered the same. It is believed that an owner of the well-known mark may invalidate the third party s trademark registration. However, can you exclude the third party (trademark registrant) from using the registered trademark on the designated goods or services even before invalidating the trademark registration? The provisions of our Act are not very clear as to whether registration confers a defence to an action for injunctive relief by a proprietor of an unregistered well-known mark. Registration confers on the registered owner the presumption of validity of ownership and entitlement to the mark and it is also expressly provided for in the Act that registration of the mark shall be a defence to an infringement action by the proprietor of another registered mark. However, the express provision of the Act which entitles the proprietor of a well-known mark to restrain by injunction the use of an identical or similar mark to the well-known mark in relation to the same goods or services where the use is likely to cause confusion is silent as to whether registration of that mark is a defence. However, as injunctive relief is equitable in nature, the Courts are likely to 2

3 be reluctant to grant an injunction to restrain use of a registered mark which resembles a well-known mark given the presumption of rights that is accorded to the registered owner. ISSUE 4: Well-known Trademarks List Is there any Well-known Trademarks List prepared by the Trademark Office or some other association in your jurisdiction? [Note] In some countries, Well-known Trademarks List is available for the purpose of easy and quick finding of well-known marks. In order to make the Well-known Trademarks List, an application system for having the well-known trademarks listed is sometimes available. Is there such a list in your region? No. ISSUE 5: Well-known mark and Domain name Can the owner of a well-known mark exclude third parties from registering and using a domain name which is identical or similar to the well-known mark? [Note] It could happen that a third party has registered a domain name which is identical or similar to your well-known trademark. In such case, is there any way of canceling the registration of the domain name? Yes, the owner of a well-known mark may seek to cancel the domain name on the basis that it is identical or confusingly similar to its well-known mark or that the domain name was registered and/or used in bad faith. Issue 6: Standards for Being Acknowledged as Well-Known When it becomes necessary to determine whether a certain mark is well-known or not, what are the generally recognized standards in your jurisdiction for determining such well-known status? (Please indicate your prioritization in the Special Topics Chart.) 3

4 Example of answer---adcbe a. the sales figures or market share figures of the products bearing the trademark, b. market survey results, c. listing in a famous trademark directory, d. advertisements, evidence showing media exposure, e. foreign registration certificates f. others [Note] There can be many phases (examination, opposition, invalidation, etc.) where your trademark office or courts have to determine whether a certain mark is well-known. Normally, as trademark practitioners, we try to obtain and submit all available materials ranging from the sales figures or market share figures of the products bearing the trademark, market survey results, listing in a famous trademark directory, advertisements, evidence showing media exposure, foreign registration certificates, etc. In most cases, all the above factors would be considered in their totality but, is there a certain type of evidence that can be more powerful and persuasive than others in your jurisdiction? You may wish to prioritize the above-enumerated examples in the order of the most effective to the least effective. The Courts are to follow the criteria under Regulation 13B of the Trade Mark Regulations 1997 in coming to the decision as to whether a mark is well-known:- (a) the degree of knowledge or recognition of the mark in the relevant sector of the public; (b) the duration, extent and geographical area of any use of the mark; (c) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the mark applies; (d) the duration and geographical area of any registrations, or any applications for registration, of the mark to the extent that they reflect use or recognition of the mark; (e) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well-known by competent authorities; (f) the value associated with the mark. 4

5 There is no established judicial precedent on the priority given to each of the criteria listed but in terms of weightage, the criteria are likely to rank as follows:- a. the sales figures or market share figures of the products bearing the trademark, d. advertisements, evidence showing media exposure, b. market survey results, e. foreign registration certificates c. listing in a famous trademark directory, f. others Issue 7: Registration of Well-Known Trademarks before the Trademark Office Has your IP office ever reviewed the possibility of adopting a system where you can apply for registration of well-known marks? If not, what is your opinion about having this system in your jurisdiction? [Note] There are countries such as China which have a system for filing and registering well-known marks, when they meet certain very high criteria of requirements. Has there ever been any discussion about adopting a system similar thereto in your jurisdiction, and if yes, please share the pros and cons of such discussion with us. If not, please let us have your personal opinion on having such a system. Assuming that you have such a system, what would be the advantages and disadvantages? What degree of special treatment do you believe should be given to those marks registered as well-known marks. For instance, should the effect of registered well-known marks extend to dissimilar goods? Is it justifiable to allow stronger civil and criminal remedies for those marks? No, not to our knowledge. The Registrar of Trade Marks has so far refrained from making any declaration that a particular mark is well-known. This is often left to the Courts decision when parties commence legal proceedings. Although having a list of well-known marks is beneficial, presently, we do not think having such a list maintained by the Trade Marks Registry is viable as we lack well-trained examiners who are capable of assessing the evidence that is required to establish well-known marks. 5

6 Issue 8: Scope of Protection of Well-Known Registered Marks When a well-known mark is also registered, what should be the scope of protection of those well-known registered marks? Should it be broader or narrower than the trademarks that are registered but not very much known to the public? [Note] There can be two conflicting views on this question. Do you believe that the well-known status of a registered mark would be more likely or less likely to cause confusion? The case of McCurry Restaurant (KL) Sdn Bhd v McDonalds Corporation [2009] 3 MLJ 774, although premised on passing off showcases the ills of a famous mark when it comes to the issue of confusion in its traditional sense. As McDonalds is famous for its fast food Western food, the Malaysian Court of Appeal had held that there is no likelihood of confusion by the use of McCurry for an Indian restaurant though premised on the same fast food concept. Our view is that the issue on the likelihood of confusion must be assessed differently when it comes to well-known marks, whether they are registered or otherwise, which would be judged by the likelihood of association/endorsement and debasement of the value of a well-known trade mark, rather than the application of the traditional concepts of confusion. [END] 6

7 2012 APAA Trademark Committee Special Topics Chart "Protection of well-known marks from different perspectives." October29, (1) (2) Australia Bangladesh Hong Kong India Indonesia Japan Korea Malaysia Y Y/ N/A N N Y a,,d, b, e, c, f N N/A New Zealand Pakistan Philippines Singapore Sri Lanka Taiwan Thailand Vietnam [Note]: 1) Y means YES 2) N means NO 3) M means YES and NO 4) N/A means Not Applicable Prepared by Su Siew Ling & Joanne Kong, Tay & Partners, Malaysian Group 7