Section 76 — TRADEMARKS ACT 2019

(a)

whether or not the trademark has been registered in

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Malaysia, or an application for the registration of trademark has been made to the Registrar; and

(b)

whether or not the proprietor of the trademark carries on business, or has any goodwill, in Malaysia.

(2)

Subject to subsections (5) and (6), the proprietor of a well-known trademark shall be entitled to restrain by injunction the use in Malaysia, in the course of trade and without the proprietor’s consent, of any trademark which, or an essential part of which, is identical with or similar to the proprietor’s trademark—

(a)

in relation to identical or similar goods or services, where the use is likely to cause confusion; or

(b)

in relation to any goods or services, where the use of the trademark would indicate a connection between those goods or services and the proprietor, and is likely to damage the interests of the proprietor.

(3)

A proprietor of a well-known trademark may apply to the

Court for a declaration of invalidation of a registered trademark on the grounds that the registered trademark is identical with or similar to a well-known trademark in Malaysia and the registered trademark is registered for any goods or services which are not identical or not similar to those in respect of the well-known trademark—

(a)

if the use of the registered trademark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known trademark;

(b)

there exists a likelihood of confusion on the part of the public because of such use; and

(c)

the interests of the proprietor of the well-known trademark are likely to be damaged by such use.

(4)

A proprietor of a well-known trademark may apply to the

Court for a declaration of invalidation of a registered trademark on

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the grounds of fraud in the registration or that the registration was obtained by misrepresentation.

(5)

The proprietor of a well-known trademark shall not be entitled to the right referred to in subsection (2) if the use of the trademark began before the proprietor’s trademark became well-known in Malaysia unless the trademark has been used in bad faith.

(6)

The proprietor of a well-known trademark shall cease to be entitled to the right referred to in subsection (2) if the proprietor of the well-known trademark has acquiesced for a continuous period of five years in the use of the trademark in Malaysia, being aware of that use, unless the trademark has been used in bad faith.

(7)

In deciding whether the trademark, has been used in bad faith, it shall be relevant to the Court to consider whether the person who used the trademark had, at the time he began to use the trademark, knowledge of, or reason to know of, the proprietor’s well-known trademark.

(8)

Nothing in subsection (2) shall affect the continuation of any use referred to that subsection in good faith of a trademark that was begun before 1 December 1997 (when the relevant provisions of the TRIPS Agreement entered into force in relation to the

Malaysia).

(9)

Nothing in subsection (3) shall affect the continuation of any bona fide use of a trademark begun before the commencement of this Act.

(10)

For the purposes of this section, “use”, in relation to a trademark, means use within the meaning of subsection 54(3).

Permitted use of well-known trademarks