This book provides readers with a comprehensive view of the legislative provisions and principles for the registration, maintenance and enforcement of trade marks as well as the general principles related to the common law action for passing off. In view of the recently enacted Trademarks Act 2019, the author has drawn on his years of experience to provide extensive commentary on the general principles and practice of trade mark law in Malaysia, as well as an in-depth treatment of the principles of passing off. Whilst the law related to trade mark matters is now governed by the new Act, the saving provisions of the same provide that the Trade Marks Act 1976 still applies to certain trade mark applications.

To address this, the book also contains several chapters that address the provisions and developments of case laws under the 1976 Act. More importantly, the author has attempted to elucidate the important provisions of the newly enacted Trademarks Act 2019 by drawing upon numerous case laws which explained the analogous provisions found in the trade mark legislation of the United Kingdom, European Union and Singapore.

Table of Contents

PART 1: HISTORICAL BACKGROUND AND GENERAL CONCEPTS

CHAPTER 1 Historical Background and Basic Concepts

CHAPTER 2 Use of a Trade Mark

CHAPTER 3 Administration of Trade Mark Registration and Related Matters

PART2: THE OLD LAW

CHAPTER 4 Registrable Trade Marks under the Repealed Act

CHAPTER 5 Prohibitions on Registration under the Repealed Act

CHAPTER 6 Dealing with the Registrar’s Objections under the Repealed Act

CHAPTER 7 Comparison of Trade Marks Under the Old Law

CHAPTER 8 Rectification of Register under the Repealed Act

CHAPTER 9 Infringement of Trade Mark under the Repealed Act

CHAPTER 10 Quasi-Criminal Sanctions under the Unamended Trade Descriptions Act 2011

PART 3: THE NEW LAW

CHAPTER 11 What is a Trade Mark

CHPATER 12 Collective and Certification Marks

CHAPTER 13 Well-known Trade Marks

CHAPTER 14 Registration Procedure and Practice under the New Act

CHAPTER 15 The Madrid Protocol

CHAPTER 16 Absolute Grounds for Refusal of Registration

CHAPTER 17 Relative Grounds for Refusal of Registration

CHAPTER 18 Revocation, Invalidation, Correction and Cancellation

CHAPTER 19 Dealings in Registered Trade Marks

CHAPTER 20 Infringement of Trade Marks under the New Act

CHAPTER 21 Defenses to Infringement of Trade Mark under the New Act

CHAPTER 22 Action and Remedies for Infringement of Trade Mark under the New Act

CHAPTER 23 Groundless Threats

CHAPTER 24 Offences and Criminal Sanctions under the New Act

PART 4: PASSING OFF

CHAPTER 25 The Action for Passing Off

PART 5: INTERNET AND DOMAIN NAME

CHAPTER 26 Internet and Domain Name