Trademark Opposition 101: A Comprehensive Guide to Protecting Your Brand

INTRODUCTION

In a world where every business is vying for attention, your brand stands as a beacon of your unique identity. Where differentiation is key and competition is fierce, safeguarding your brand is not just a choice—it is a necessity. Trademark opposition is your first line of defence against copycats and confusion. It is a legal mechanism that allows you to challenge the registration of a trademark that might infringe on your brand's identity or cause confusion in the marketplace. In this article, we will dive into the essentials of trademark opposition and how you can navigate this process to protect your brand. 

WHO CAN OPPOSE?

Trademark opposition is not just limited to those who have already registered their trademarks. According to Section 34(1) of the Trademarks Act 2019 (“TMA 2019”), a registered proprietor has the right to oppose a trademark application if they or their predecessor have continuously used their trademark from a date before the applicant's use or the date of filing. In addition, Section 34(2) of the TMA 2019 allows any individual to oppose a trademark application, regardless of whether they own a registered trademark.

GROUNDS OF OPPOSITION

For registered proprietors, the grounds for opposition are quite specific. Under Section 34(1) of the TMA 2019, a registered proprietor can oppose a trademark application if they can prove prior use of the trademark before the applicant's use or filing date. On the other hand, any individual may oppose on broader grounds, provided under Section 34(2) of the TMA 2019. These grounds include objections under Sections 23 or 24 of the TMA 2019, questioning the applicant's proprietorship of the trademark, or that the trademark is identical or similar to a well-known trademark in Malaysia and is intended for goods or services that are not identical or similar.

TIMELINE

Timing is crucial in trademark opposition proceedings. The opposition must be initiated within two months from the date the opposed mark was advertised in the Gazette, as stipulated in Regulation 41 of the Trademarks Regulations 1997 (“TMR 1997”). The opposition process formally begins when a notice of opposition is filed using Form TM7. Understanding and adhering to these deadlines is essential to ensure that your opposition is considered valid.

PROCEDURES FOR TRADEMARK OPPOSITION

Navigating the trademark opposition process is akin to handling pleadings in a court action, requiring careful attention to detail and strict adherence to procedural rules. Here’s a step-by-step guide on how to oppose a trademark registration:

1. Filing a Notice of Opposition (Form TM7) The opposition process begins with filing a notice of opposition using Form TM7, as outlined in Section 35 of the TMA 2019 and Regulation 41 of the TMR 1997. This notice, accompanied by a prescribed fee of RM 450, must be filed within the prescribed period following the publication of the acceptance of the application for the registration of the opposed trademark. The notice must include a statement of the grounds of opposition, specifying any relevant grounds under Section 34 TMA 2019. If the opposition is based on the resemblance to any registered trademarks owned by the opponent, the notice must also include the registration numbers of those marks and the Gazette numbers in which they were advertised. Additionally, the opponent is required to send the notice of opposition to the applicant within the stipulated time frame.
2. Applicant’s Response: Filing a Counterstatement (Form TM8) Upon receiving the notice of opposition, the applicant has two months to file a counterstatement using Form TM8. This counterstatement, which requires a fee of RM 300, should detail the grounds on which the applicant relies to support their application, as well as admit or deny any facts stated in the notice of opposition. If the applicant fails to file a counterstatement within the specified time, the application is deemed withdrawn and will be removed from the record.
3. Filing Evidence and Exhibits Following the filing of the counterstatement, both parties have the opportunity to submit evidence to support their respective positions. The opponent must first file evidence by way of a statutory declaration, as required by Section 64 TMA 2019, within the prescribed period. Failure to do so will result in the opposition being deemed withdrawn. If there are any exhibits attached to the statutory declaration, the party filing them must provide copies to the other party upon request and at their own cost, as per Regulation 44(1) TMR 1997. The applicant then has the opportunity to file evidence in support of the counterstatement, followed by the opponent’s right to file evidence in reply, as stipulated in Regulations 40 and 41 TMR 1997.
4. Registrar’s Review and Written Decision Once all evidence has been submitted, the Registrar will invite both parties to make written submissions pursuant to Section 35(8) of the TMA 2019. Following this, the Registrar will issue a written decision, which must be provided to both parties within two months of the completion of evidence. The Registrar’s decision will determine whether to refuse registration, approve registration outright, or approve registration subject to certain conditions. The Registrar also has the power to award costs, which can be recovered as a debt if any party defaults on payment, as provided under Section 63(2) and Section 75(3) TMA 2019.
5. Appealing the Registrar’s Decision If either party is dissatisfied with the Registrar’s decision, they have the right to appeal to the High Court under Section 35(10) TMA 2019. The High Court will hear the appeal as an original jurisdiction matter, as held by the Federal Court in Yong Teng Hing (t/a Hong Kong Trading Co) v Walton International Ltd [2011] 5 MLJ 629. The parties may present further material during the appeal, but no new grounds of opposition are allowed unless by the leave of court. It is important to note that the Registrar is not required to be named as a party in the appeal but has the right to appear and be heard.

ALTERNATIVES IF THE NOTICE OF OPPOSITION FAILS

In cases where the notice of opposition fails, there are alternative legal avenues available:

1. Filing Form TMG1: This form serves as a direct appeal to the court, informing the Intellectual Property Corporation of Malaysia (“MYIPO”) that you are seeking a court order to put the registration of the trademark on hold.
2. Filing Form EOT/TMK1: If the opposition process concludes with an unfavourable decision by the Registrar, you can appeal by filing Form EOT/TMK1. This form is used to clarify matters in the court while the case is still under MYIPO’s jurisdiction. Should the court rule in your favour, you would then need to submit Form TM28 to invalidate the registered trademark and apply to MYIPO for third-party removal.

CONCLUSION

Trademark opposition is your frontline defence in protecting your brand. By mastering the process—from who can oppose to the specific procedures and timelines—you can effectively shield your trademark from threats. Stay vigilant, follow the rules, and know your options to keep your brand secure and thriving.