CONTROL OF NAMES / WORDS
Paragraphs 15 and 16 are newly introduced into the Revised Guidelines.
Paragraph 15(i) states that federal/ state/ department/ local government agency (collectively “
Authority”) may apply to control the use of certain names/ words based on (a) legal authority with “the act that is regulated”; or (b) an application and justification provided by the Authority to preserve the interests and public order or moral principles or to avoid confusion.
The list of entities comprised in the Authority and the checklist for the information and documents to be submitted by the Authority for an application to control the use of a name/ word are set out in
Lampiran 1 and
Lampiran 2 respectively of the Revised Guidelines.
The statements in
Lampiran 1 appear to conflict with paragraph 15(i) of the Revised Guidelines. The former states that words listed in
Lampiran 1 are controlled by the respective authorities named in
Lampiran 1 and that supporting documents from the relevant Authority are to be attached before an applicant submits a name search application, whereas paragraph 15(i) suggests otherwise. Perhaps paragraph 15(i) ought to be clarified to state that: (i) the authorities named in
Lampiran 1 already control the names/ words listed under their respective names; and (ii) in addition to
Lampiran 1, an Authority may apply under paragraph 15(i) to the SSM for the control of other names/ words.
Paragraph 15(ii) permits a business entity or any party (including a foreign company) that has registered a word under the Trademarks Act 2019 with the Intellectual Property Corporation of Malaysia (MyIPO) to apply to the SSM to control the use of a name/ word.
Lampiran 3 of the Revised Guidelines provides a checklist for an application to be submitted by a business entity or the proprietor of a registered trademark to the SSM for the control of a particular name/ word in respect of which the applicant is the registered trademark proprietor.
Paragraph 16 provides that an applicant for a new name or a change to a company’s name that contains controlled words must submit a letter of consent from the agency or business entity that controls the relevant word, for consideration by the Registrar.
LAMPIRAN 1
In addition to other slight variations in the listed phrases, a new paragraph 24 has been included in
Lampiran 1 stating that the Prime Minister’s Office – Performance and Acceleration Coordination Unit (PACU) as the Authority for the phrase “MADANI”.
LAMPIRAN 3
Among others, the name/ word for which control is sought by a registered trademark owner must be an invented word or a combination of words, and must not be a common word or place name. In addition, the applicant must provide justification for seeking control of the name/ word.
OTHER AMENDMENTS
In addition to the above amendments, the drafting of certain parts of the Revised Guidelines has been refined and certain phrases have been changed.
COMMENTS
The most interesting revision under the Revised Guidelines is the introduction of paragraph 15(ii) which allows business entities and owners of registered trademarks to apply to the SSM for the right to control the use of words in respect of which they have a registered trademark.
It is hoped that the SSM will clarify the operation of Lampiran 1
inter se paragraph 15(i) of the Revised Guidelines.
Article by Tan Wei Liang (Partner) and Francine Ariel Paul (Senior Associate) of the Corporate Practice of Skrine.