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These few weeks a viral trademark issue has been flooding our social media feeds, this being the controversial filing of a Trademark for the name ‘Daging Harimau Menangis’. In this article we will explain further on what Trademark is and how filing this Trademark could deter other businesses should it be granted.
What is a Trademark?
Governed by the new Trademarks Act 2019 (hereafter the Act) and the Trademarks Regulations 2019, a trademark refers to “… any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”[1] The definition of ‘sign’ in this matter are any letters, words, names, signatures, numerals, devices, brands, headings, labels, shape of goods or their packaging, colour, sound, scent, holograms, positioning, sequence of motions or any combination thereof.
The law only allows legal action to be taken against a trademark infringement if it has been registered. However, pending or unregistered marks may still be afforded certain common law rights in the form of the tort of passing-off as Malaysia practices the ‘first to use’ principle, of which is subject to whether the mark in question have attained goodwill and reputation in the country. Whether there is sufficient goodwill in Malaysia is a question of fact that depends on both the quantity and quality of evidence that can be tendered. In a common law action of passing-off, the burden of proof is much higher as compared to a registered trademark of which enjoys some presumption of rights in the first instance. As such, it is beneficial for an owner of a particular mark to opt for registration.
Under the Act[2], a person who claims to be the genuine owner of a trademark may apply for a registration of that trademark if they are using or intends to use the trademark in the course of trade, or if the person has authorised or intends to authorise another person to use the trademark in the course of trade.
The Act goes further to provide grounds for refusal of registration[3]. One of the grounds which may be relevant to the ‘Daging Harimau Menangis’ issue is that a trademark registration may be refused by the Registrar where the trademark consist exclusively of signs or indications which have become customary in the current language of the territory or in the bona fide and established practices of the trade. On this ground, it is arguable that the name Daging Harimau Menangis is a common term in Malaysia referring to a part of the cow which is the bottom sirloin, one of the most sought-after beef parts in the market or that it simply refers to a well-recognised dish that have for years been sold around Malaysia and Thailand. This argument however will be for the Intellectual Property Corporation of Malaysia (MyIPO) to deliberate during the examination phase.
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Enforcement of a Trademark
Once an application for a trademark has been granted the proprietor of that trademark will have an exclusive right over the trademark. This includes the prevention of any unauthorized use of that mark by a third party. Should a third party wish to use the mark, they may request to license the trademark from the proprietor.
A trademark owner may enforce their exclusive rights by commencing a legal suit at the High Court against an unauthorised user of their mark. They may also apply a Trade Description Order (TDO) at the Court by which declares that the usage of the trademark by the unauthorised part is a false trade description and as such, the officers of the Ministry can seize goods affixed with the trademarks and prosecute the unauthorised party. Further, a complaint could be lodged at the Ministry of Domestic Trade, Cooperatives and Consumerism (MTDCC) by the owner of a trademark which may result in a raid and seizure action and the Public Prosecutor may prosecute the unauthorised party.
Therefore, should the trademark for the name ‘Daging Harimau Menangis’ be successfully registered, it will prove to be difficult for other sellers to use the name as the legal proprietor may wish to carry out an action against those who do so without their permission.
However, the Act provide various examples of situations whereby a party accused of infringement may use as a defence.[4] One of which is that a person using a mark that is identical to a registered trademark and with relation to the same goods and services would not be infringing the registered trademark if the person and their predecessor in business have continuously used in the course of trade the unregistered trademark in relation to those goods and services from a time prior to the date the registered trademark was registered or, the date by which the proprietor, or a predecessor in business, or a person who was a registered user under the repealed Act, first used the trademark, whichever is the earliest.
With this defence, sellers who have been using the name daging harimau menangis in their businesses since before the ‘Daging Harimau Menangis’ trademark application was made or used by the Applicant in their trade may be able to escape liability, should an action be carried out against them by the applicant. This however will be determined by the Courts with reference to evidence submitted by the accused.
The benefits of registering a trademark is that it guarantees that you have an exclusive right of ownership upon a particular mark. Should the name ‘Daging Harimau Menangis’ be successfully registered under trademark protection the owner will be able to prevent other sellers from using that name. However, as mentioned there are particular requirements that need to be met before an exclusive right is obtained. Following the news it seems that the filing of this mark has brought upon quite an uproar among other sellers as the name Daging Harimau Menangis has been used by many sellers for years. It is unclear whether the application would be successful as it depends on the decision of the Registrar and whether the applicant will receive objections on their application. Nonetheless, the Act provide grounds that may be of assistance to parties that will be affected should the registration of this trademark be successful.
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Note: There have been updates on the application whereby the applicant stated that the trademark application is for the design arrangement of the brand logo and not for the name ‘Daging Harimau Menangis’ itself.
Please also read a similar article, “How Malaysian Trademarks Act 2019 protects Perlis Harumanis mangoes’ GI mark” .
[1] Trademarks Act 2019, Section 3 (1)
[2] Trademarks Act 2019, Section 17
[3] Trademarks Act 2019, Section 23
[4] Trademarks Act 2019, Section 55