If there are competing applications for similar or almost similar trademarks, which applicant has the better right?
The first to use the trademark in Malaysia
The first to file for application for the trademark in Malaysia
The long user well-established outside Malaysia?
First To Use
Trademark protection is territorial in nature. Hence, a Malaysian trademark registration is only valid in Malaysia. The date of application is the material date in determining who has the better right. If you have any evidence to prove earlier use, use it. Use it to prove that you have the better right to use the mark.
The first to use the trademark in Malaysia has the better right to the trademark – “first user, first right”. The fact that similar or almost the same trademark was used in other parts of the world is immaterial. If the mark is a well-known mark, then it is possible the person who owns the well-known mark may be given the priority.
One of the main reason trade mark law is territorial is that the Courts in Malaysia only has the jurisdiction within Malaysia. If you are competing your trademark rights in Thailand with another party, you will need to go to Thailand. The Malaysian court does not have jurisdiction over the matter if it is in Thailand.
Do take note that not all countries recognise that the first user to use the identical or same trademark will automatically have the better right.
First To File
In countries such as Thailand and Indonesia, the first to apply or register has the better right over the identical or same trademark. So, if you intend to expand your business to Thailand or Indonesia, it is advisable to apply for registration for your trademark as soon as possible. If an unscrupulous trader wishes to benefit from your late application, you may or may not get your trademark rights in these countries. Worst still, you may even face a trademark infringement proceeding in those countries if you choose to go ahead trading in those countries.