Does Malaysia have laws to nix 'offensive' brand names or ones that cause 'public anxiety'? Lawyers explain

• Published date: 02 November 2021
• Publication title: Malay Mail Online

An award-winning Malaysian whisky recently attracted controversy over its name 'Timah' - which is the Malay word for 'tin' - with multiple ministries and government agencies stepping in to discuss the possibility of a name change with its parent company.

Environment and Water Minister Datuk Seri Tuan Ibrahim Tuan Man, who is also PAS deputy president, had last Saturday told his party that the Cabinet had decided not to allow the manufacture of any product that could cause 'public anxiety, including in the context of race and religion'.

With this in mind, the question that arises is: Does Malaysia already have laws to prevent such brand names, or will the government have to introduce new laws to enforce this seemingly new policy?

And what can companies do to avoid being caught in the same situation as the 'Timah' whisky manufacturer?

Malay Mail contacted several intellectual property lawyers to seek their views. Here's what they said:

The law is already there

Both Bahari Yeow Tien Hong and Lim Zhi Jian, who are from the same law firm, confirmed that existing legal provisions in Malaysia's Trademarks Act 2019 allow the government via the Intellectual Property Corporation of Malaysia (MyIPO) to stop a brand name from being registered as a trademark due to reasons such as possibly causing public anxiety.

MyIPO - an agency under the Domestic Trade and Consumer Affairs Ministry - administers the 'registration of trademark, or brand, or intellectual property rights (IPR) in Malaysia', Yeow said.

For businesses that want to have their brand name registered as a trademark in Malaysia, they would have to apply to MyIPO.

Citing the Trademarks Act 2019, Lim explained that MyIPO may reject a trademark application based on either 'relative grounds' (such as when a trademark being applied for is identical or similar to an earlier existing trademark) or 'absolute grounds'.

According to Lim, some of the absolute grounds include the proposed trademark lacking any distinctive character; and the proposed trademark consisting of only the name of a country or recognised geographical indicators.

Lim also listed examples of absolute grounds contained under the Trademarks Act's Section 23(5)(a) to Section 23(5)(e), including instances where the trademark's use is likely to deceive or cause confusion to the public or is contrary to any written law; or where the trademark's nature is to deceive or mislead the public about the goods or services' nature, quality or geographical origin; or where the trademarks are 'contrary to public interest' or 'morality'.

Under Section 23(5)(d), MyIPO can refuse to register trademarks that contain any 'scandalous or offensive matter' or would otherwise not be entitled to protection by any courts, while the absolute ground in Section 23(5)(e) is where a trademark contains a matter which in the opinion of MyIPO 'is or might be prejudicial' to national interest or national security.

Both Yeow and Lim agreed that the absolute grounds listed in Section 23(5)(a) to Section 23(5)(e) would most closely resemble or cover the public anxiety scenario mentioned by Tuan Ibrahim.

Lim explained that MyIPO may reject a trademark application based on either 'relative grounds' (such as when a trademark being applied for is identical or similar to an earlier existing trademark) or 'absolute grounds'. - Picture courtesy of Lim Zhi Jian

Lim explained that MyIPO may reject a trademark application based on either 'relative grounds' (such as when a trademark being applied for is identical or similar to an earlier existing trademark) or 'absolute grounds'. - Picture courtesy of Lim Zhi Jian

What happens if MyIPO objects to the proposed brand name based on absolute grounds?

Both lawyers said that MyIPO or the registrar must be convinced that a trademark is registrable before an application is allowed to proceed, adding that a proposed brand name could...