Use It Or Lose It: Non-Use Of A Registered Trademark In Malaysia

• Law Firm: Azmi & Associates
• Subject Matter: Intellectual Property, Trademark
• Author: Mr Khairul Fazli Abdul Kadir, Azarith Sofia Aziz and Nur Aina Syafiqah Azawawi
• Published date: 06 February 2023

Rights Conferred to a Registered Trademark:

In Malaysia, trademark matters are governed by the Trademarks Act 2019 ("TA 2019"), the Trademarks Regulations 2019 as well as the relevant case law (related to trademark) decided by the courts.

Once a trademark is registered with the Intellectual Property Corporation of Malaysia ("MyIPO") ("Registered Trademark"), the TA 2019 grants to the proprietor of such Registered Trademark:

1. the exclusive right to use such Registered Trademark in relation to the goods or services for which the Registered Trademark is registered in Malaysia; and
2. the exclusive right to authorize other persons to use such Registered Trademark in relation to the goods or services for which the Registered Trademark is registered in Malaysia.

Maintenance of the Validity of a Registered Trademark:

To maintain the rights obtained through registration of a Registered Trademark, the Registered Trademark must be renewed every ten (10) years within the prescribed time. In other words, as long as the proprietor of the Registered Trademark continues to renew the same every ten (10) years, the registration of such Registered Trademark will continue to remain valid.

Aside from the above, the proprietor of the Registered Trademark must ensure that he uses the Registered Trademark.

Revocation by Court Due to Non-Use:

It is trite law that in all legal proceedings relating to a Registered Trademark, the registration of a person as the registered proprietor of such Registered Trademark shall be prima facie evidence of the validity of the original registration of such Registered Trademark and any subsequent assignments and transmissions thereof¹.

Notwithstanding the same, under the TA 2019, an aggrieved person may apply to revoke the registration of a Registered Trademark on any of the following grounds for non-use:

1. within a period of three (3) years following the date of issuance of notification of registration, the Registered Trademark has not been put to use in good faith in Malaysia and there are no proper reasons for the non-use (Section 46(1)(a) of the TA 2019); OR
2. the use of the Registered Trademark has been suspended for an uninterrupted period of three (3) years and there are no proper reasons for such non-use (Section 46(1)(b) of the TA 2019).

Who is "Aggrieved Person"?

An aggrieved person concerns the party who has either used before a mark that is identical with or similar to the Registered Trademark sought to be expunged or at the very least...