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How to protect my trademark internationally?

Updated: Mar 4, 2021

Note: This article was written at the time of Malaysian Trademarks Act 1976. With the enforcement of the new Malaysian Trademarks Act 2019, we now have more options to protect your trademarks globally!

Currently, there is no unitary system enabling a trademark owner to protect his trademark globally by one single filing. Protection of trademark is on a territorial basis. In other words, if a trademark owner wishes to protect his trademark overseas, he should register his trademark in the desired countries separately.

Some jurisdictions allow registration of trademark in several countries by filing one application (also known as  regional application). For example, European Community Trademark (CTM), African Regional Intellectual Property Organization (ARIPO) and African Intellectual Property Organization (OAPI). Failure to protect your trademark will expose your business the risks of malicious trademark hijacking by trademark squatter, lack of legal status to take action against infringer, diminishing of brand value and high litigation cost to re-acquire the ownership of trademark which you have lost to the earlier applicant. The Brand Battles – Apple vs. Proview International giant like Apple Inc. is well-known to protect its IP vigorously around the world. Unfortunately, when it first launched its iPad products in China in year 2010, the trademark “iPad” had already been registered by one Proview Technology in China as early as year 2001.   It should be pointed out that Proview Technology is believed to have registered the trademark “iPad” genuinely back in year 2001. It planned to use the mark for Internet Personal Access Device. It did not mean to hijack the trademark “iPad” against future users for a windfall gain. In the circumstances, Apple entered into a legal battle with Proview Technology to fight for the ownership of the trademark “iPad” in China. The battle had hampered the sales of Apple’s “iPad” products in China and some of the products being pulled off the shelves in some parts of China.  Eventually, both parties reached settlement by Apple paying USD60 million to Proview Technology for the ownership of the “iPad” trademark and ended the suit. What we could learn from Apple’s story is that the risk of losing a brand not necessary arising from “stealing” by competitor. We are also not able to prevent someone might co-incidentally create the same brand name with ours. McDonald’s vs McCurry McDonald’s is another role model of aggressively protecting its IP globally. One of notable trademark battle launched by McDonald’s is in Malaysia. In the case McCurry Restaurant  (KL) Sdn Bhd v McDonalds Corporation [2009] 3 MLJ 774, McCurry is a fast food restaurant which offered Indian food and other local Malaysia cuisine. McCurry did not serve any food that was available at McDonalds' outlets. McDonald’s initiated legal action against McCurry for passing off McDonalds' business as its own. McDonald’s pleaded that McCurry had copied and adopted McDonalds' distinctive “Mc” identifier for its own food and beverage outlet. Eventually, the Court of Appeal ruled in favour of McCurry. It was found that McCurry’s presentation of its business was in a style and get-up which was distinctively different from that of McDonald’s. Secondly, the foods available at the McDonalds’ restaurants all carry the prefix “Mc” but none of the food items served in the McCurry’s restaurant carry the prefix “Mc”. Thirdly, McDonald’s and McCurry served different type of food. McDonald’s served fast food (eg. burgers, French fries and soft drinks). On the other hand, McCurry only served typical Indian and local cuisine. Fourthly, the type of customers who patronise the McDonalds’ outlets were very different from those who visit McCurry’s restaurant. Therefore, the Court had drawn an irresistible inference from the totality of the evidence was that McCurry’s signboard could not result in reasonable persons associating McCurry with McDonald’s mark. The Court of Appeal further held that even if the name “McCurry” was chosen, this could not by itself lead to the inference that McCurry sought to obtain unfair advantage from the usage of prefix “Mc”. In addition, McCurry had not offered to its customers item that were labelled either the same or similar with McDonald’s. It is noteworthy that the action instituted by McDonald’s against McCurry is passing off instead of trademark infringement. The outcome of this case could be different if McDonald’s had registered the trademark “McCurry” in the first place. What is the difference between Trademark Infringement and Passing Off? Trademark infringement is governed by statutory law. It occurs when an infringer uses a mark identical or so nearly resembling with a registered trademark so as to likely to deceive or cause confusion in the course of trade. The action of passing off is a common law remedy and it is not available in all countries. The brand owner has to firstly establish its goodwill, followed by misrepresentation by the wrongdoer, lastly the damages suffered by the brand owner. The brand owner would bear a higher burden of proof as he has to first establish its goodwill and reputation under the brand, which might be difficult for new or small business. However, if the trademark is registered at the first place, it might not be necessary for him to establish his goodwill and reputation. He may take action as soon as the wrongdoer uses a mark identical or confusingly similar to the registered mark in respect of the goods and services registered. Therefore, it is necessary for all companies to take aggressive and proactive steps to protect their brand internationally to reduce uncertainties in the course of business and ensure businesses operate without obstacle.

Written by, Lawrence Tan Malaysian Trademark, Patent & Design Agent Email:

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