LIMITING THE SCOPE OF THE FIRST USER PRINCIPLE
In the Malaysian context, a proprietor of a trademark is someone who has exclusive use of a mark. This exclusive use can be obtained by being the first person to use the mark in the course of trade and developing goodwill and reputation for the mark.
First user principle
The Malaysian trademark office may take into consideration the existence of prior rights when it examines any application for registration, in particular that the first user of a trademark in the course of trade is the owner of a trademark.
The first user principle stems from common law, in particular the tort of passing off. One cannot represent his or her goods or services as the goods or services of others. For example, even if you do not register your trademark, you have the cause of action against an alleged infringer on the grounds of passing off. In fact, section 82 of Malaysia’s Trade Marks Act 1976 provides that an owner of an unregistered trademark is able to bring an action against an infringer for passing off.
The first user principle is adopted in other Commonwealth countries, including the UK, New Zealand, Australia and India. In Malaysia, the established legal position under common law, that a first user of a mark is lawfully entitled to use the mark, was stipulated in the Federal Court case of Mesuma Sports Sdn Bhd v. Majlis Sukan Negara Malaysia; Pendaftar Cap Dagangan Malaysia. The Federal Court held that “[h]e who first uses a trade mark owns the said trade mark under common law and that such common law ownership would in turn entitle him to file for trade mark application as a bona fide applicant, pursuant to section 25(1) of the [Trade Marks Act 1976]”.
Jan-Mar 2019 issue
Lee Hishammuddin Allen & Gledhill