Does Malaysia follow “first to file” or “first to use” rule?

Does Malaysia follow “first to file” or “first to use” rule?

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“First to file” and “first to use” are legal concepts to determine who has the right to the grant of a trademark in many jurisdictions around the world.

Under the “first to file” rule, the right to the grant of a trademark lies with the first person to file a trademark application for protection, regardless of the date of using this brand in public.

In contrast, in the “first to use” system, it is not registration, but the actual use of the first entity to make a valid use in commerve of the particular trademark is the one that has right. In the “first to use” countries, the protection over trademarks is not accompanied with the registration.

In Malyasia, the rule that ownership of a mark must follow is the first-to-use, not the first-to-file, which is similar to the America. According to Malaysia law, in order to acquire ownership of a trademark, it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in commerce. Therefore, a party pursuing a trademark claim must meet a threshold “use in commerce” requirement.

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade. The use must be more than merely to reserve a right in a mark. Trademark protection is granted only to marks that are used to identify and to distinguish goods or services in commerce, which typically occurs when a mark is used in conjunction with the actual sale of goods or services.

This is necessary because the purpose of a trademark is to help consumers identify the source. A mark cannot serve as a source identifying function if the public has never seen the mark. As such, a mark is not worthy of protection until it is used in public in a manner that creates an association among consumers between the mark and its source.

So, if you want to protect your trademark in Malaysia, you should notice that it is not registration, but actual use of a designation as a mark that creates rights and priority over others

Please click here to know the fee of trademark registration in Malaysia. Also, you can visit here to see the procedures and required documents for trademark registration in Malaysia. Contact: info@trademarkpatent.net

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