Protection of Well-Known Trademarks in Malaysia: Compliant with Paris Convention, TRIPS and TPP?

Abstract

The Trans-Pacific Partnership Agreement (“TPP”) was concluded in New Zealand on February 3, 2016 by twelve countries, namely, Australia, Brunei, Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States of America and Vietnam. The TPP chapter on intellectual property, among other things, required the parties to provide protection for well-known trademarks. In wake of this there's a need to examine if the current protection for well-known trademarks in Malaysia is consistent with that mandated by TPP. Part II of this paper discusses the rationale behind providing special protection to trademarks that are well-known. Part III sets forth the standard of protection mandated by Paris Convention for the Protection of Industrial Property (“Paris Convention”) and the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”) and then examine if Malaysia’s law on well-known marks in Malaysia fully complies with this standard and suggest amendments required if any. Part IV describes the level of protection required by TPP, examines if the current protection that Malaysia provides is consistent with these requirements and suggests changes in the law to resolve inconsistencies if any. In the process of assessing Malaysia’s compliance with these international conventions with respect to the protection of well-known marks, the law of other countries like Singapore and U.K. have been looked into. Also, the recommendations have been made keeping in mind the consideration that other traders in Malaysia are not unduly disadvantaged.