The Registration System, 1961 Historically, since 1961, trademark protection in Indonesia adopted the "first-use-principle" whereby a trademark is registered to the proprietor based on its first use in the jurisdiction. There was no protection for well-known marks. The situation for well-known mark owners was unsatisfactory as illustrated by an important case that occurred in 1996 […]
Shape Marks Accepted in Indonesia
The Indonesian Trade Marks Office has recently informed that it will now consider the registration of 3D/shape marks, even if no amendment to the current Trade Mark Law will be done. No written regulations will be issued regarding this matter even if article 1.1 of the Indonesian Trade Mark Law, which states that a mark […]
Brand Protection On “Export Only Goods” In Malaysia
Goods may be manufactured in Malaysia for the purpose of distribution overseas only and not in Malaysia. Such brands are usually known as Export Brands. The question remains as to whether such brand owners could do so safely without being liable to infringement actions. Historically such "Use" for export purposes only did not constitute infringement […]
Non-Conventional Trade Marks in Malaysia: 3-D marks
Trade Mark protection has advanced significantly from the days when marks consisted primarily of words, letters, logos or reproduction of images in two-dimensional forms. In many countries throughout the world, amendments to legislation as well as continually evolving trademark practices have extended the scope of trademark protection to include non-conventional trademarks such as three-dimensional marks, […]
Singapore courts reject "Mc" "Mac" monopoly by McDonalds
A U.S. based fast food giant, McDonald's Corp has failed in a series of legal battles to stop a Singaporean company, Future Enterprises Pte Ltd ("FE") from using the marks "Mc" and "Mac" in their products. The Singapore Court of Appeal in the case of McDonald's Corp v Future Enterprises Pte Ltd [2005] 1 SLR […]
Protecting Intellectual Property in Malaysia - Law or Enforcement
It was recently commented by the Penang Local Government, Traffic Management and Environment Committee chairman, Chow Kon Yeow that 'Although intellectual property laws in Malaysia are in place and confirmed with international standard for intellectual property protection needs, enforcement initiative by relevant government agencies is required to effectively protect both foreign and local investors' intellectual […]
The Protection Of Kanji Characters In Malaysia – The Yomeishu Saga
Background The proprietors of Kanji character trade marks in Malaysia can take comfort from a decision of the Malaysian Court of Appeal which upheld the decision of the High Court where it was held that the wide usage of the phonetic sound of the combination of the Kanji characters in question among the local Chinese […]
Interlocutory Injunctions in Trade Mark Cases - Is the American Cynamid test still applicable in Malaysia
It is well established in law that an interlocutory injunction is ancillary to a cause of action and therefore it is only a party who has a cause of action who can apply for an interlocutory injunction (Siskina v Distos Compania Naviera SA [1979] AC 210). The primary objective of an interlocutory injunction is to […]
Amendments To The Trademark Act And Rules In Singapore
The Trade Marks Rules and Act have been recently amended and have come into force on the 1st of January 2006. The following concerns the main amendments that are the most likely to interest you. An application for registration will be treated as withdrawn if the applicant fails to respond to the Registrar's queries or […]
Caterpillar Inc successfully protects its "CAT" Trade Mark in Singapore
In the recent Singapore High Court decision of Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) [2006] SGHC 58, Caterpillar Inc, a US incorporated company sued the defendant who had formerly traded as business known as Catplus International. The plaintiff alleged that the defendant's use of the CATPLUS marks in respect of […]