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When an individual/ company registers a trademark, he becomes the proprietor of the trademark in relation to the trade of goods or services registered under the trademark. In this regard:
- It gives the proprietor exclusive use of the trademark;
- Allows the proprietor to control who uses the trademark; or
- It allows the proprietor to bring an action against another individual who infringes upon his/ her trademark;
A trademark can also be removed. In this article, we will discuss the four ways in which a trademark can be removed.
Ways to remove a trademark
A) When the proprietor of the trademark voluntarily removes the trademark
| Who can do it? | The proprietor of the trademark. |
| Who to apply to? | The court’s registrar. |
| What can be removed? | The registration of a trademark in respect of some or all of the goods or services that are related to the trademark. |
| What are the prerequisites before the removal of the trademark? | Registrar must notify: Any individual who claims a right on interest arising from the use of the trademark; Any individual whom the trademark has been assigned or transmitted by the registered proprietor. |
B) When the registrar revokes the trademark
| When can it be done? | When the registrar becomes aware (within two months) of his failure to: Take into account any notice of opposition that was filed by any other individual who has been using the trademark way before the filling of the current application by another individual; take into account any application for an extension of time filed by any other individual in relation to the filing of the notice of opposition to the registration. The revocation must be done within one month from when the registrar is aware of his failure to take into account the opposition or application for an extension of time. However, the registrar can also revoke the registration of the trademark within 12 months from the registration if: The registrar becomes aware of the above failure later than the two months period indicated above; It is necessary to comply with any relevant obligations under an international agreement or convention to which Malaysia is a party to the agreement or convention; there are special circumstances to justify the revocation of the trademark/ register the trademark. |
| What are the prerequisites before the revocation of the trademark? | Registrar must notify: The current registered proprietor of the trademark; and any individual who claims a right on interest arising from the use of the trademark. The registrar must also give an opportunity to the individuals mentioned above to be heard. |
| What happens after revocation? | The registration is deemed to have never been occurred, and registration will be further examined to determine if it can be registered. |
C) Revocation for the non-use of a trademark
| Who can do it? | Any individual affected by the registration of the trademark (“aggrieved person”). |
| Who to apply to? | The Court. |
| What is the justification for the revocation? | The trademark has not been put to use in good faith/ no proper reason for non-use in Malaysia within three years following the date of registration; Where the use of the trademark has been suspended for an uninterrupted period of three years and there is no proper reason for non-use; In the course of the non-use/ inactivity, the trademark has become a common name in relation to the trade of goods or services registered under the trademark; or where the use is liable to mislead the public in relation to the nature, quality or geographical origins of those goods or services. |
| When it cannot be revoked for non-use? | When the use of a trademark is resumed after the expiry of three years and three months and before the application for revocation is made and provided that the proprietor has begun to prepare the use of the trademark before he became aware of the application for revocation is made. |
D) When the trademark is invalidated
| Who can do it? | Any individual affected by the registration of the trademark (“aggrieved person”). |
| Who to apply to? | The Court. |
| When can it be invalidated? | When the registered trademark does comply with the rules and regulations laid down under the Act. For example, The trademark does not contain any distinctive character; The trademark sign consists exclusively of the shape of the nature of the goods themselves; The trademark is likely to deceive or cause confusion to the public; The trademark contains/ consists of a word which is commonly used; The trademark is identical or similar to a well-known trademark which is not registered in Malaysia; When there is an element of fraud in the registration/ registration obtained by misrepresentation. |
| When it cannot be invalidated? | When there has been an honest concurrent use of the current and earlier trademark. |
| What is the effect of invalidation? | The current registration is deemed never to have been made. However, any past transaction that has been concluded as a result of the use of the current trademark will not be affected by the invalidation. |
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Make an appointment with Company Secretary for advice and consultation