Trademarks Act 2019: A Wider Net for Infringement
The highly anticipated Trademarks Act 2019 (“TMA 2019”) came into force on 27 December 2019, and with that, trademark owners will be pleased to know that among the salient features under TMA 2019, there is a widened scope for trademark infringement. This widened scope is applicable to infringement of existing registered marks committed after the commencement of TMA 2019.
Establishing Infringement Under the New Act
Under the previous Trade Marks Act 1976, infringement action could only succeed if the infringing mark was identical and/or confusingly similar to the registered mark. And, trademark owners were further pressed to show that the infringing mark was applied to the same goods or services covered in the subject registration.
Now, TMA 2019 provides trademark owners with a more practical and flexible ambit to pursue an infringement action whereby an infringement can arise in the case of use of an identical or similar mark in relation to similar goods or services claimed under the registered mark.
Codification of “Use of a Sign”
TMA 2019 also codifies the meaning of "use of a sign" to include, amongst others, the following:
· Application of the sign to goods or their packaging;
· Offering or supplying services under the sign;
· Importing or exporting goods under the sign;
· Stocking goods under the sign for purposes of offering or exposing the goods for sale or of putting them on the market and using a sign on invoices; and
· Advertisements, catalogs or commercial documents.
It is, however, important to consider that uses for non-commercial purposes and news reporting will not come under this heading.
Codification of Remedies for Trademark Infringement
TMA 2019 clearly sets out the remedies previously derived from case law to include injunctions, damages, the account of profits as well as additional damages for counterfeit trademark.
It is clear that TMA 2019 is more business-friendly, whereby trademark owners are more empowered to enforce their rights by bringing about and sustaining actions for trademark infringement under the widened scope of infringement provided under the new Act. Indeed, TMA 2019 represents a significant and positive development for the Malaysian trademark regime.