Trade Marks Act 1976

Proposed Trade Marks And Patents (Including Utility Innovations) Fees Revision

The Intellectual Property Corporation of Malaysia (MyIPO) is proposing to increase the filing fees of numerous applications in respect of trade mark and patents (including utility innovations) applications. The reason for the increase is due to “The escalating costs of upgrading the ICT system“.

The revision introduces the waiver of certain patents searching fees (online) and the reduction of certain fees for trade marks and patents. Meanwhile for certain patents and trade marks fees, an increase at an average of 5% to 50% is also proposed.

The most notable change for trade mark filing is the combination of application and advertisements fees (proposed rate of RM990 for efiling). The current fees structure requires applicants to pay the application fee (RM330 for efiling) and upon approval, the advertisement fees must be paid (RM600 for efiling). There is no indication as to whether the advertisement fees will be refunded if the application is not accepted.

I do not know whether this proposal will be rolled out and when it will be rolled out.

For more details, please see Consultation Paper – Proposed Trade Marks And Patents (Including Utility Innovations) Fees Revision

Battle of the Satay Celup Restaurants


Ban Lee Siang restaurants – used with permission of sixthseal.com

Ban Lee Siang is a well known satay celup restaurant in Melaka. It consists of two adjoining shops operated by two different owners who are brothers. The shop was started by their other brother in 1987.

Although both restaurants are named “Ban Lee Siang”, they are both known as Restoran Makanan and Minuman Ban Lee Siang and Restoran Ban Lee Siang. The former was taken over by the Plaintiff in 1997 and the latter was started by the Defendant in 2004.

In 2012, the Plaintiff filed a lawsuit against the Defendant over the use of the name Ban Lee Siang. The Plaintiff alleged that he is the exclusive and registered proprietor whereas the Defendant is merely a licensee. The Plaintiff terminated the licence via a letter.


The Plaintiff’s registered trade mark

However, the Defendant alleged that he is a joint proprietor of the trade mark as he had purchased the business jointly with the Plaintiff and their mother.

The High Court held that:-

1. Based on the evidence provided, the trade mark BAN LEE SIANG was not only sold to the Plaintiff but also to the Defendant and their mother (paragraph 15);
2. The Defendant is a honest concurrent user (pursuant to s. 40(c) of the Trade Marks Act 1976 (TMA)) but also entitled to file an application under s. 20 of the TMA to be a joint proprietor (paragraph 16); and
3. Since the Plaintiff did not object to the use of the trade mark from the date of establishment of the Defendant’s restaurant until the date of the letter terminating the alleged licence, this shows that the Plaintiff had indeed allowed the use of the trade mark. Thus, following s. 40(c) and (dd) of the TMA, there is no trade mark infringement (paragraph 17).

Download: Chua Cheng Kiat b/s Kedai Makanan dan Minuman Ban Lee Siang v Chua Cheng Ho b/s Restoran Ban Lee Siang

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