We understand that the most important aspect of your business is its identity- its trademark. We also understand that you have invested a lot of time, money and effort into building a strong and recognizable brand as it is today.
Trademark theft occurs when another company or your competitors attempt to use your registered name, logo or symbol without your permission, or when they create an image so similar to your registered trademark that your existing/potential customers might confuse that new image with your existing brand.
Hence, we understand and acknowledge your frustration when the other company appears to be taking advantage of your market position and the reputation attached to your brand identity. Let us be frank with you, trademark theft is just a few of the nuisance you as business owners have to deal with, as your brand grows bigger. The bigger you are, the worst it is.
Below are the things to consider before you sue.
(1) Is the other person aware that he/she is using your trademark?
If you suspect someone is using your trademark without authorization, you should immediately issue a ‘cease and desist letter’ to the other person before taking further action to put a stop to the acts of trademark infringements. You can even do it on your own, or our team can guide you through to ensure all bases covered. Often, disputes like these can be solved through communication and compromise without having to go to Court.
Nonetheless, it should be emphasized that even if the other persons may have no such intention, and was completely honest. They may still be guilty of infringement if their usage of the trademark is likely to deceive or to cause confusion on the ordinary people.
That said, if their intentions are disgraceful, they could ignore your letter, and continue trading using your trademark. In this case, the next question you must ask yourself before you sue is – Whether I have registered the trademark?
(2) Are you the registered owner of the trademark?
You will not have standing to pursue the cause of action of trademark infringement if the particular trademark you are claiming is not registered under your name. Assuming that you did, then the registration of your trademark will give you the statutory exclusive right to use those marks to the exclusion of the other person. In other words, no one will be allowed to use your registered trademarks without your permission.
(3) Do you have a good case?
In Malaysia, the relevant provision of the law relating to trade mark infringement is provided for in Section 38(1) of the Trade Marks Act 1976. The law states that a registered trademark is infringed by a person who, not being the registered proprietor or registered user of the trademark, uses a mark which is identical or so nearly resembling it as is likely to deceive or cause confusion in relation to goods or services in respect of which the trademark is registered.
Simply put, in order to establish infringement of a trade mark under the law, you must prove the following 5 requirements:
- For obvious reasons, you must be sure that the other person is neither the registered proprietor nor the registered user of the trademark;
- The other person is using the mark in such a manner as to render use likely to be taken either as being used as a trademark or as importing a reference to the registered proprietor or the registered user or to your goods or services;
- The other person is using the mark in the course of trade;
- The other person is using the mark in relation to goods or service within the scope of the registration; and
- The other person is using a mark so identical with or so nearly resembling the your registered trademark as is likely to deceive or cause confusion to ordinary people.
It should be highlighted that the test in determining whether the mark is likely to ‘deceive or cause confusion to ordinary people’ is by making a visual comparison between the your mark and the other persons’. This means you must judge them, both by their look and all the surrounding circumstances. You must also consider what is likely to happen if each of the trademarks is used in the normal way as a trademark for the goods of the respective owners of the mark.
In the case of satisfying all of the 5 requirements above, then there is a likelihood that you may have a good case against the other person, and to succeed at the trial of the action on infringement.
If you believe that you or your business is a victim of trademark infringement, contact our lawyers today for a professional legal advice.
Disclaimer: The above article is intended for general informational and education purposes only and not for the purpose of providing legal and professional advice. Got a question on the Malaysian trademark law? Contact members of Chern & Co. at firstname.lastname@example.org.