The figures obtained from the Malaysian Intellectual Property Corporation (MyIPO) shows the performance over 2017 in some sectors of the economy. MIMOS Berhad retains its top position for two years running, while Universiti Teknologi Malaysia climbs to second ranking. The rest of the list reveals some surprises and a few new entries:
By Hoh Jerick
Common and generic words are always used in the day to day process of an individual’s daily life. However, situations occur within the trademark field involving phrases such as the memorable “I’m Lovin’ It” by McDonalds that goes hand in hand with a catchy tune or even KFC’s phrase on a piece of chicken that is “Finger Lickin Good”. For promotional and marketing purposes, a phrase will be even more common with short liners to attract customers such as “Super Cheap Sale” or “Buy one get one free”.
In an undoubtedly homogenous world, a dispute involving a domain name is unavoidable as shown in the case of Celcom Planet (Celcom) v. OC Tech (OC), where the disputed domain name <shockingdeals.com.my> was put into a motion of arguments when OC registered the domain name and was allegedly using it unlawfully.
By Geetha Kandiah
Again and again, we advise clients that registering a brand that does not belong to you will only backfire. Coin your own brand, it will propel you to success and will keep you out of trouble!
Entrepreneurs, sometimes, prefer to learn the hard way. Here, in the case of GS Yuasa Corporation v GBI Marketing Sdn Bhd, it was not a client of ours, but a local company that faced the consequences. Battery manufacturing giant GS Yuasa Corporation (“Plaintiff”) took on a local company, GBI Marketing Sdn Bhd (“Defendant”), filing an application to expunge the Defendant’s registered trademark “GiSi Premium High Power” (“Defendant’s mark”) (pictured below). The Plaintiff, a public listed joint venture company, is one of the largest battery manufacturers in the world, with around 13, 560 employees and manufacturing plants and sales offices in 16 countries.
The Plaintiff uses the mark “GS” and has registered 2 trademarks in Malaysia for variations of the same (“Plaintiff’s marks”) (pictured below). Both the Plaintiff’s marks and the Defendant’s mark have been registered in Class 9, for batteries. The Plaintiff’s marks were registered in 1998 and 2000 respectively, and the Defendant’s mark was registered in 2005.
A few of the issues raised before the High Court, in this case, were whether the Plaintiff was considered to be an aggrieved party within the ambit of the Trade Marks Act 1976 (“TMA”) so as to entitle the Plaintiff to file their contention, and also whether the Plaintiff was able to expunge the Defendant’s mark on a few grounds, including fraudulent registration of the Defendant’s mark by Osima Batteries Ind Sdn Bhd (“OBI”), and likelihood of confusion in the public by the use of the Defendant’s marks on the Defendant’s goods.
The Plaintiff claimed that it has been using the mark in Malaysia since the 1960s through a Thai subsidiary of one of the initial companies before the joint venture and incorporation of the Plaintiff. Amongst the evidence of use adduced by the Plaintiff was an invoice issued in 1996 to a Malaysian distributor for the sale of storage batteries, under the trademark “GS” for cars and motorbikes. The Plaintiff also exhibited invoices from an Indonesian subsidiary, which evidenced the exportation and supply of the Plaintiff’s goods to East Malaysia through its distributor. However, the Plaintiff had censored the prices and product quantities in their invoices, stating that it was confidential information.
The Plaintiff also put forth, among others, the following allegations:
- That the Defendant was part of an international conspiracy which had fraudulently register deceptively similar trademarks in Malaysia and Indonesia, on the basis that a trademark which was similar to both the Plaintiff’s marks and the Defendant’s mark had been registered in Indonesia by a company called PT Gramitrama Battery Indonesia (“PT Gramitrama”), and the Defendant and PT Gramitrama were related companies as they shared a common director. The Plaintiff had successfully expunged PT Gramitrama’s registration at the Supreme Court of Indonesia;
- The Defendant’s mark was not distinctive as in addition to the Defendant’s mark, OBI had also previously attempted to register the trademark (“GS Premium mark”) in Malaysia, but subsequently abandoned the application; and
- In April 2015, private investigators employed by the Plaintiff investigated a company in the Klang Valley called Loong Sheng Battery & Parts Enterprise (“Loong Sheng”) and purchased products bearing the Defendant’s mark. However, Loong Sheng issued an invoice stating that the Plaintiff’s product had been purchased.
The Defendant, however, denied the Plaintiff’s allegations and stated, among others, that OBI and the Defendant were separate entities, and it did not know why OBI had abandoned registration of the GS Premium mark. The Defendant claimed that OBI had assigned the Defendant’s mark to the Defendant in 2012. In addition, the Defendant argued that the case in Indonesia against PT Gramitrama concerned different trademarks, and the appeal in the Indonesian case was pending (which was later found to be untrue).
The High Court found that the Plaintiff was an aggrieved party in this case based on, amongst others, the evidence of the use of the Plaintiff’s mark in Malaysia since 1996, which clearly proved that the Plaintiff was the first user and common law proprietor of the Plaintiff’s mark for batteries. Further, since the Plaintiff was still using the Plaintiff’s mark for its products in Malaysia, and the Defendant’s mark is registered for the same products, the Plaintiff’s business was adversely affected by the Defendant’s mark. The Defendant’s mark also was likely to deceive or confuse the public into thinking that the Defendant’s goods under the Defendant’s mark originates from or is related to the Plaintiff. Thus, the Defendant’s use of its mark caused grievance to the Plaintiff.
In order to find out whether the Defendant’s registration had been obtained by fraud, the High Court decided to lift the Defendant’s and OBI’s corporate veil. The Court found that the 2 conditions to lift the parties’ corporate veil were satisfied in view of the allegation that the Defendant’s registration was fraudulent in nature, and it was in the interests of justice to determine whether this was true. Upon lifting the corporate veil, the Court discovered that the Defendant and OBI constituted one single entity, as both companies had the same business, registered address and business address, shared common directors and shareholders, and had the same company secretary. In addition, the assignment document was signed by the 2 common directors, had a common witness, and stated the same address for both parties. Worse still, the assignment consideration sum was only RM 10, which did not make commercial sense, and there was no evidence of negotiation between the parties or even proof of payment of the RM 10 consideration by the Defendant to OBI.
Interestingly, in regard to the Plaintiff’s act of redacting certain portions of their evidence, the Court viewed that it would only draw adverse inference against the Plaintiff if the Plaintiff had censored material evidence. In this instance, since the redacted information was irrelevant, it was not contrary to law.
In view of the above, the High Court held that the Defendant’s mark was fraudulently registered, and accepted the Plaintiff’s submission that OBI, the Defendant and PT Gramitrama had conspired to register trademarks which were confusingly similar to the Plaintiff’s mark in Malaysia and Indonesia. The court accordingly, issued orders which included the expungement of the Defendant’s mark from the trademarks register.
Recently Intellectual Property (IP) practice in Vietnam and Myanmar has undergone attention-grabbing developments that are crucial and important. To be specific, the developments were mainly on the change in Regulations of IP in both the countries – basically the patent offices have made amendments to relevant Regulations to reflect the change in Patent (PT) and Industrial Design (ID) practice in the respective countries.
The National Office of Intellectual Property (NOIP) of Vietnam has amended the national phase entry date to Vietnam by completely eliminating the late entry provision provided before. Previously, the patent office had allowed late entry into Vietnam whereby it was possible to enter Vietnam within a 6-month grace period after the 31-month national phase deadline.
However, effective from 15 January 2018, the 6-month grace period has been revoked and will no longer be applicable in Vietnam. Simply put, any applications to be filed after the 31-month national phase deadline will no longer benefit/enjoy the 6-month grace period. Therefore, national phase applications must be filed by the 31-month in order to be able to claim priority from the PCT application.
Next, effective from 15 January 2018, 6-months grace period for requesting for substantive examination for patent and/or utility solution applications are no applicable. The patent office has concluded that a request for substantive examination has to be filed by the due date of 42 months from the priority date for patent or 36 months from the priority date for utility solution which date are not extendable.
Last but not least, the patent office has confirmed that it is mandatory to file Vietnamese language translation at a time of filing the patent and/or the utility solution applications. Generally, any delay or any extension for filing the Vietnamese language translation will no longer be entertained and/or accepted by the patent office.
If you need any clarification on the above matter or on any other IP matter, please contact us at firstname.lastname@example.org.
KASS is pleased to announce that it has opened its third overseas branch office in Yangon, Myanmar. As more and more Malaysian businesses are exporting products and services to Myanmar, we as a leading Intellectual Property firm in Malaysia have often been approached to register their Trademark (brand), Designs and Patents in Myanmar.
To satisfy the growing need for personalized Intellectual Property services in Myanmar, KASS recently opened a branch office in Yangon, the commercial capital of Myanmar.
Myanmar is the largest country in mainland South-East Asia with a total land area of 676,578 square kilometres. It stretches 2200 kilometres from north to south and 925 kilometres from east-west at its widest point. Known and notable global brand names from the USA, Europe and other countries have manufacturing plants in Myanmar and there are more and more companies venturing into this fast-developing country.
KASS Myanmar is headed by a dynamic Burmese lawyer who is experienced in Intellectual Property registration and enforcement of Intellectual Property rights in that country.
All instructions and enquiries on Intellectual Property matters in Myanmar should be directed to our head office in Kuala Lumpur and we will respond to your instructions.
Few things to know about IP protection in Myanmar:
- There, currently, is no IP law in Myanmar.
- Trademarks can be ‘applied for’ in Myanmar but this entails the filing of a Power of Attorney and Declaration of Ownership at their ‘Registry’.
- After the Trademark ‘application’ is made, a Cautionary Notice is filed to inform the public of the existence of the trademark.
- Patents and Designs are ‘filed’ in the same manner as Trademarks. However, recently, the Registration Office announced that they no longer accept Patent or Design applications (by filing, we mean the filing of Declaration of Ownership) –this started with effect from 22 September 2017. They are waiting for the new Patent Law and new Industrial Design Law to be enforced soon.
- Renewals are ‘filed’ in the same manner as how the initial application is made.
- All of the above will change when the new IP law is enforced, which should be sometime in this year (2018).
- Moving forward, with our direct presence in the Golden Land, we will keep you abreast with further updates on their new IP laws. The draft laws will hopefully be open to public opinion and further revisions to ensure that Myanmar’s intellectual property rights law and related regulations will be more efficient and structured for both, local and foreign IP owners.