TRADEMARK OPPOSITION ON GROUNDS OF COPYRIGHT

Trademark opposition occurs when the owner of an earlier trademark opposes a new trademark application for registration.

It is typically the first action taken by any trademark owner in order to preserve the exclusiveness of their trademark.

The Malaysian Trade Marks Act 2019 provides a number of grounds on which an opposition may be founded.

Opposing the registration of a new trademark based on an earlier right obtained under the law of copyright is relatively new to the Malaysian Trade Marks Act 2019 and is provided under Section 24 (4) (b) of the Act.

The burden of proof under this ground rests with the opponent. Therefore, to succeed under this ground, the opponent must be able to demonstrate:

(a.) the material relied on is a work eligible for copyright;

(b.) substantial effort has been expanded to make the work original in character;

(c.) the work has been written down, recorded or otherwise reduced to material form;

(d.) ownership of the work and its creation; and

(e) the use of the new trademark application for registration would constitute an infringement of copyright.

In short, opposing a trademark based on copyright essentially offers an additional basis to prevent the registration of a new trademark, particularly if the opponent does not yet have a registered trademark.

To learn more about trademark oppositions in Malaysia, kindly write to our legal team at legal@timothyjdass.com