Description

Law of Trade Marks and Passing Off in Malaysia is an updated and revamped version of the authors earlier work, Trade Mark Law and Practice in Malaysia, published in 2001. However, in the course of updating the same, the author has substantially expanded on its scope of coverage. A number of the chapters have been almost completely re-written for the new publication. New chapters on the various aspects of the Trademarks Act 2019 have been included. Besides that, the author has included a more extensive treatment of the principles of passing off. The work is written with a number of objectives in mind. First, like its predecessor, it aims to present a comprehensive account of the principles and practice of trade mark law in Malaysia. In this connection, since there is a new Act which came into force on 27 December 2019, the book hopes to set out the principles, comprehensively, both under the repealed Trade Marks Act 1976 and the new Trademarks Act 2019. Since the publication of the Trade Mark Law and Practice in Malaysia in 2001, there is a significant body of case laws issued by the Malaysian courts including from the apex court. In view of the saving provisions which are found in the new Act, certain trade mark applications are still to be dealt with under the old law.As such, it is deemed necessary to include an updated account of the law under the repealed Trade Marks Act 1976. All relevant case laws emanated under the repealed Trade Marks Act 1976 have been carefully considered and their significance explained. Besides that, the book attempts to elucidate the meanings of the important provisions of the newly enacted Trademarks Act 2019 by drawing upon 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 I: 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

PART II: 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 Registrable Trade Marks under the Repealed Act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 Prohibitions on Registration under the Repealed Act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 Dealing with the Registrar’s Objections under the Repealed Act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 Rectification of Register under the Repealed Act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 Infringement of Trade Mark under the Repealed Act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 III: 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: Defences 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 IV: PASSING OFF
CHAPTER 25: The Action for Passing Off

PART V: INTERNET AND DOMAIN NAME
CHAPTER 26: Internet and Domain Name

About the Author(s)

The author, Teo Bong Kwang, is one of the founding partners with the intellectual property and technology firm of Wong Jin Nee & Teo. He was called to the Malaysian Bar in 1987. He is also a registered Patents Agent, Registered Trade Marks Agent and Registered Industrial Designs Agent.

Over the long span of his years of practice, the author has served in various intellectual property organisations and chambers of commerce including being a member of the Executive Committee of the Malaysian Intellectual Property Association (MIPA) and the Society of Alumni of Association of Overseas Technical Scholarship Malaysia (AOTS), the Assistant Secretary of the Licensing Executive Society Malaysia and the Deputy Chair of the Legal Committee of the Chinese Chamber of Commerce and Industry of Kuala Lumpur and Selangor.

The author was one of the members of a special committee set up by the Intellectual Property Corporation of Malaysia (MyIPO) to review the Trade Marks Act 1976. His areas of specialisation include IP litigation, alternate dispute resolution and advising generally on intricate and novel issues related to intellectual property laws. He has vast experience in litigations involving trade mark, patent, copyright, industrial design, trade secret, confidential information, information and communication technology, pharmaceutical and food laws. He presently heads the litigation and patent teams within Wong Jin Nee & Teo.

The author has been consistently identified as one of the ‘leading individuals’ in Intellectual Property in Malaysia for many consecutive years by The Asia Pacific Legal 500, Chambers and Partners, Benchmark Litigation, Whos Who in Trade Mark, WTR 1000 The Worlds Leading Trade Mark Professionals, IAM The Worlds Leading Patent Professionals and many others.
The author has published several books including the first local text book on trade mark law and practice known as Trade Mark Law and Practice in Malaysia (Butterworths, 2001). The said work has been widely consulted by law students, trade mark examiners and IP law practitioners. It has been cited with approval by the Malaysian High Courts in many cases.

Teo Bong Kwang is also the Advisory Editor to a publication known as MLJ Trade Marks and Service Marks Handbook which was published by Malayan Law Journal in May 2003. He is currently one of the Malaysian correspondents for World Trademark Review. He has regularly contributed articles and write-ups on IP related issues to local newspapers and magazines as well.

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