chapter  20
10 Pages

Dilution of a well-known trademark as ground for refusal of registration of an identical or similar mark for different goods or services in Malaysia

WithTay Pek San

The first respondent, who is the proprietor of a registered well-known trademark, applied to expunge the registration of a similar trademark belonging to another proprietor in respect of different goods which are in different classes. The decision provides guidance on the principles applicable in the protection of well-known trademarks in Malaysia so that traders, in their zest to promote and sell their products and services, are aware of the limits of legally permissible acts. In determining whether the first plaintiff’s trademark was well-known, the court considered whether the criteria laid down in regulation 13B of the Trade Marks Regulations 1997 were exhaustive. The judicial commissioner who presided on the case, Wong JC, found that the first plaintiff’s trademark was a distinctive mark and also a well-known trademark in Malaysia. The plaintiffs alleged that the defendant’s trademark was similar to theirs and this would result in confusion or deception among traders, customers, and the general public.