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Definition and Circumstances of Bad Faith The Malaysian Trade Marks Act does not explicitly define bad faith or specify the circumstances under which it can be presumed. However, dishonesty is considered a fundamental element for establishing bad faith. As per KHADI AND VILLAGE INDUSTRIES COMMISSION Vs GIRDHAR INDUSTRIES AND ANR. - 2023 Supreme(Online)(DEL) 7533, dishonesty is viewed as a primal prerequisite, and honest bad faith is regarded as an oxymoron, implying that bad faith inherently involves dishonesty (KHADI AND VILLAGE INDUSTRIES COMMISSION Vs GIRDHAR INDUSTRIES AND ANR. - 2023 Supreme(Online)(DEL) 7533). The Trade Marks Act requires the Registrar to consider bad faith when granting registration, particularly under Section 11(10)(ii), which involves assessing whether bad faith affected the rights related to the trademark (KHADI AND VILLAGE INDUSTRIES COMMISSION vs GIRDHAR INDUSTRIES AND ANR. - 2023 Supreme(Online)(DEL) 11183).
Proving Bad Faith in Opposition To establish bad faith, the opponent or party alleging it must demonstrate dishonesty or a similar element of fraudulent intent at the time of use or registration. Evidence of dishonest conduct, such as knowing infringement, malicious intent, or unfair advantage, is crucial (PIRELLI & CSPA vs CHIP HWA SDN BHD - 2023 MarsdenLR 1684). The burden of proof lies with the party asserting bad faith, and it is generally proven through evidence showing that the applicant or registrant acted dishonestly or with malicious intent during the application or use of the mark (KHADI AND VILLAGE INDUSTRIES COMMISSION Vs GIRDHAR INDUSTRIES AND ANR. - 2023 Supreme(Online)(DEL) 7533).
Relevant Factors and Considerations When assessing bad faith, courts and the Registrar consider whether the applicant was aware of the well-known trademark or engaged in conduct indicating an intent to deceive or unfairly benefit from the prior mark (PIRELLI & CSPA vs CHIP HWA SDN BHD - 2023 MarsdenLR 1684). The case law indicates that actual confusion need not be proven; the possibility of association or deceptive intent can suffice to infer bad faith (PIRELLI & CSPA vs CHIP HWA SDN BHD - 2023 MarsdenLR 1684).
Additional Insights from Case Law In U.S. cases referenced, the standard for proving bad faith involves a preponderance of evidence showing negligence or malicious intent, and the absence of bad faith can support extensions or defenses (Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 149; Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 150). Malaysian courts have emphasized dishonesty and the absence of proper reasons for non-use as indicative of bad faith (CHINA GREEN FOOD DEVELOPMENT CENTER vs CHEONG CHONG FONG - 2023 MarsdenLR 982, HLL RESTAURANT SDN BHD vs ZHANGJI BM SDN BHD - 2024 MarsdenLR 3141).
Proving bad faith in Malaysian trademark opposition proceedings primarily hinges on demonstrating dishonesty, malicious intent, or conduct that indicates unfair advantage or deception. The Malaysian Trade Marks Act does not explicitly define bad faith, but courts interpret it as involving dishonesty. Evidence should focus on the conduct of the applicant or registrant at the time of application or use, including knowledge of prior trademarks and intent to deceive or unfairly benefit. The burden of proof rests on the party alleging bad faith, and the standard involves preponderance of evidence, with courts considering whether the actions reflect dishonest or malicious intent rather than mere negligence (KHADI AND VILLAGE INDUSTRIES COMMISSION Vs GIRDHAR INDUSTRIES AND ANR. - 2023 Supreme(Online)(DEL) 7533, PIRELLI & CSPA vs CHIP HWA SDN BHD - 2023 MarsdenLR 1684).
References:- PIRELLI & CSPA vs CHIP HWA SDN BHD - 2023 MarsdenLR 1684- FIAL FINANZIARA INDUSTRIE ALTO LARIO SPA vs GALPERTI SRL - 2025 MarsdenLR 5219- COMMERCIAL MARKETERS AND DISTRIBUTORS SDN BHD vs KARELIA TOBACCO COMPANY INC - 2023 MarsdenLR 1030- CHINA GREEN FOOD DEVELOPMENT CENTER vs CHEONG CHONG FONG - 2023 MarsdenLR 982- HLL RESTAURANT SDN BHD vs ZHANGJI BM SDN BHD - 2024 MarsdenLR 3141- DELUXE CATERERS PRIVATE LTD vs FOOD STACK CONCEPTS PTE LTD - 2024 MarsdenLR 2569- KHADI AND VILLAGE INDUSTRIES COMMISSION Vs GIRDHAR INDUSTRIES AND ANR. - 2023 Supreme(Online)(DEL) 7533- KHADI AND VILLAGE INDUSTRIES COMMISSION vs GIRDHAR INDUSTRIES AND ANR. - 2023 Supreme(Online)(DEL) 11183- Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 149- Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 150
In the competitive world of branding, protecting your intellectual property is crucial. But what happens when someone tries to register a trademark that mimics yours with dishonest intentions? If you're facing a trademark opposition in Malaysia, understanding what you need to prove bad faith can be the key to safeguarding your rights. Bad faith registrations undermine fair competition and consumer trust, making it essential for opponents to build a strong case.
This article breaks down the core elements required to establish bad faith under Malaysian trademark law, drawing from established principles and analogous cases. While this provides general guidance, it's not legal advice—consult a qualified attorney for your specific situation.
Trademark opposition proceedings in Malaysia are governed by the Trademarks Act 2019 and related regulations. Bad faith is a ground for opposition under Section 14, allowing challengers to argue that the applicant's mark was filed dishonestly. Courts and the Malaysian Intellectual Property Corporation (MyIPO) assess whether the applicant acted with ulterior motives, such as confusing consumers or blocking legitimate owners.
To succeed, opponents must show more than mere similarity between marks. Bad faith involves subjective intent combined with objective circumstances. As outlined in key precedents, proving this requires concrete evidence of deceitful conduct DELUXE CATERERS PRIVATE LTD vs FOOD STACK CONCEPTS PTE LTD - High Court Malaya Kuala Lumpur (2024).
Establishing bad faith demands demonstrating specific factors. Here's what you typically need to prove:
Intent to Mislead or Deceive Show that the applicant registered the mark to confuse consumers with an existing well-known or similar mark. Evidence might include marketing materials or statements revealing knowledge of your prior rights DELUXE CATERERS PRIVATE LTD vs FOOD STACK CONCEPTS PTE LTD - High Court Malaya Kuala Lumpur (2024).
Prior Knowledge of Existing Marks Prove the applicant knew about your registered or well-known mark before filing. This could involve emails, meetings, or public records showing awareness, leading to likely consumer confusion ACQUA MINERALS LIMITED VS PRAMOD BORSE - Delhi (2001).
Circumstances of Registration Examine the applicant's behavior during filing. Red flags include:
A pattern of filings to block competitors, as seen in cases where opponents retaliate with mala fide intentions Sanjha Chulha VS Sanjha Chulha - 2022 Supreme(Del) 1766. For instance, one case highlighted claims of acting in a mala fide manner with fraudulent and dishonest intentions and in order to retaliate against the action of the appellant in filing opposition Sanjha Chulha VS Sanjha Chulha - 2022 Supreme(Del) 1766.
Lack of Bona Fide Use or Intent to Use Demonstrate the applicant hasn't used the mark genuinely or filed without plans for commerce. Unused marks filed solely to hoard rights signal bad faith DELUXE CATERERS PRIVATE LTD vs FOOD STACK CONCEPTS PTE LTD - High Court Malaya Kuala Lumpur (2024).
These elements align with international standards, emphasizing dishonest commercial practices.
Malaysian law draws from global treaties:
Analogous principles appear in domain name policies, where bad faith includes registering to sell to the owner—applicable by extension to trademarks ACQUA MINERALS LIMITED VS PRAMOD BORSE - Delhi (2001).
Comparative insights from other jurisdictions reinforce this. In U.S. proceedings, bad faith is scrutinized in extensions and oppositions, noting that parties must not act with negligence or bad faith lest privileges be abused (Am. Vitamin Prods. Inc. v. Dowbrands Inc., 22 U.S.P.Q.2d 1313, 1314 (T.T.A.B. 1992)) Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 149Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 150. Similarly, Indian courts dismiss oppositions lacking prior use proof, stressing descriptive marks don't confer exclusivity, as in the 'SANJHA CHULHA' case where failure to establish prior usage led to denial of interim relief Sanjha Chulha VS Sanjha Chulha - 2022 Supreme(Del) 1766.
In another Indian ruling, marks like 'Step By Step High School' proceeded to advertisement despite refusals, underscoring that oppositions must stand on their merits without court bias Subros Educational Society VS Union of India - 2022 Supreme(Del) 559. These cases illustrate how bad faith hinges on evidence of intent and prior rights across borders.
Evidence is the backbone of your opposition. Courts prioritize:
Documentary Proof: Timelines of your prior registration/use versus theirs, plus communications hinting at bad intent. For example, assignment documents or opposition filings can reveal patterns Raaj Unocal Lubricants Limited VS Apple Energy Pvt. Ltd. - 2021 Supreme(Del) 287.
Witness Testimonies: Experts or consumers attesting to confusion likelihood. Sales data disparities, as in cases noting significant sales difference between the parties, weaken claims without strong proof Sanjha Chulha VS Sanjha Chulha - 2022 Supreme(Del) 1766.
Pattern of Conduct: Multiple filings against you or competitors, echoing retaliatory oppositions deemed fraudulent Sanjha Chulha VS Sanjha Chulha - 2022 Supreme(Del) 1766.
In anti-suit injunction contexts, courts weigh if proceedings are oppressive or vexatious, a principle adaptable to bad faith where filings harass legitimate owners Raaj Unocal Lubricants Limited VS Apple Energy Pvt. Ltd. - 2021 Supreme(Del) 287.
Opponents often falter by relying on similarity alone, ignoring intent. Descriptive marks complicate claims, as courts deny exclusivity without acquired distinctiveness (e.g., 'Sanjha Chulha' deemed descriptive) Sanjha Chulha VS Sanjha Chulha - 2022 Supreme(Del) 1766. Always document your goodwill through sales, ads, and market presence.
US analogies warn against abusing extensions via bad faith, reminding that privileges aren't for the dishonest Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 149. Ethically, lawyers must avoid supporting unjust causes, as historical quotes emphasize: BOSWELL: But what do you think of supporting a cause which you know to be bad? Gita Devi D/o Parama Ram VS State of Bihar - 2019 Supreme(Pat) 96.
To bolster your case:- Research the applicant's history for patterns.- Collect prior use evidence, like invoices and ads.- Demonstrate harm to your business.- File promptly within MyIPO timelines.
Engage IP specialists early for affidavits and expert reports.
Proving bad faith in Malaysia's trademark oppositions requires showing intent to deceive, prior knowledge, suspicious circumstances, and lack of genuine use—backed by robust evidence DELUXE CATERERS PRIVATE LTD vs FOOD STACK CONCEPTS PTE LTD - High Court Malaya Kuala Lumpur (2024)ACQUA MINERALS LIMITED VS PRAMOD BORSE - Delhi (2001). By leveraging Paris Convention protections and learning from global cases, opponents can protect their brands effectively.
Key Takeaways:- Focus on subjective intent via objective proof.- Use timelines, docs, and testimonies strategically.- Avoid pitfalls like unproven prior use.
This general overview highlights typical approaches; outcomes vary by facts. For tailored advice, contact a Malaysian IP lawyer. Stay vigilant—your trademark is your brand's shield.
References:- DELUXE CATERERS PRIVATE LTD vs FOOD STACK CONCEPTS PTE LTD - High Court Malaya Kuala Lumpur (2024)- ACQUA MINERALS LIMITED VS PRAMOD BORSE - Delhi (2001)- DELUXE CATERERS PRIVATE LTD vs FOOD STACK CONCEPTS PTE LTD - High Court Malaya Kuala Lumpur (2024)- Araujo vs Framboise Holdings Inc. - 2024 Supreme(US)(cafc) 149- Sanjha Chulha VS Sanjha Chulha - 2022 Supreme(Del) 1766- Subros Educational Society VS Union of India - 2022 Supreme(Del) 559- Raaj Unocal Lubricants Limited VS Apple Energy Pvt. Ltd. - 2021 Supreme(Del) 287
#TrademarkLaw, #MalaysiaIP, #BadFaithOpposition
has been used in bad faith. ... (5) The proprietor of a well-known trademark shall not be entitled to the right referred to in subsection (2) if the use of the trademark began before the proprietor's trademark became well-known in Malaysia unless the trademark has been used in bad faith. ... (7) In deciding whether the tra....
The respondent plaintiff is the holder of the trademark in Italy, the home country of the parties[1]. It filed an opposition to the appellant's trademark application in Malaysia. ... [4] The principal basis upon which the appellant sought registration of the trademark in Malaysia was that it had established first use of the trademark in Malaysia. ... ....
on an application by an aggrieved person on any of the grounds as follows: (a) where within a period of three years following the date of issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the registered proprietor or with ... (ii) BAT and the Plaintiff are desirous of adding the trademark and brand "LEGENDS" to its products sold in Malaysia....
That means the Plaintiff failed to prove to the satisfaction of this Court its genuine and present intention to use in Malaysia the Plaintiffs Trademark in trading goods that fall within the same Class(es) of the Defendant's. ... agent in Malaysia, NBS Intellectual Sdn Bhd, applied to register its trademark in Malaysia under classes 5, 29, 30, 31, 32, and 33. ... (c) the trade....
issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the registered proprietor or with his consent, in relation to the goods or services for which the trademark is registered, and there are no proper reasons for non - use;" ... has failed to ensure that the Mark was used in good faith in Malaysia, and there are no reasonable r....
2) if the use of the trademark began before the proprietor's trademark became well-known in Malaysia unless the trademark has been used in bad faith. ... infringement proceedings. ... the date of issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the regi....
... as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused.” Am. Vitamin Prods. Inc. v. Dowbrands Inc., 22 U.S.P.Q.2d 1313, 1314 (T.T.A.B. 1992). ... ... Jalmar Araujo appeals from a decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (“the Board”) sustaining Framboise Hold- ings, Inc.’s (“Framboise”) #HL_....
... as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused.” Am. Vitamin Prods. Inc. v. Dowbrands Inc., 22 U.S.P.Q.2d 1313, 1314 (T.T.A.B. 1992). ... ... Jalmar Araujo appeals from a decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (“the Board”) sustaining Framboise Hold- ings, Inc.’s (“Framboise”) #HL_....
The Trade Marks Act does not define “bad faith” or delineate the circumstances in which bad faith may be presumed to be involved. Wharton’s Law Lexicon, 15 Edn adopts the following understanding of the concept of “bad faith”, from Harrison v. Telon Valley Trading Co. ... Dishonesty, in my opinion, is a primal prerequisite for bad faith to be found to e....
The Trade Marks Act does not define “bad faith” or delineate the circumstances in which bad faith may be presumed to be involved. ... Dishonesty, in my opinion, is a primal prerequisite for bad faith to be found to exist. Honest bad faith would be an oxymoron. ... consideration the bad faith involved either of ....
The appellant claims that the respondent, acting in a mala fide manner with fraudulent and dishonest intentions and in order to retaliate against the action of the appellant in filing opposition against registration of its trademark, instituted opposition proceedings against various applications preferred by the appellant to register its trademarks. 7. The appellant states that in the month of October, 2017, it became aware that the respondent had also applied for registratio....
The said mark shall be advertised within a period of four months. If there is any opposition to the said trademark application, the opposition shall be decided in accordance with law, without being effected by any of the observations made in the present order.
Defendant No. 2 also obtained the assignment of the original application filed by UNOCAL before the Registrar of Trademarks for registration of the “76” mark in its favour. No 2 instituted opposition proceedings with the Registrar of Trademarks in India, against the application of the plaintiff, and also filed its own applications for registration of the “76” trademark in India on a “proposed to be used” basis. The Registrar of Trademarks objected to the applications of Defen....
Before we quote the relevant portion, we are reminded of what Abraham Lincoln reportedly said. He said “In law it is good policy to never plead what you need not, lest you oblige yourself to prove what you cannot.” While we are quoting the relevant portion, we have deliberately masked the name of the Senior Advocate. The relevant portion of the statement of objections reads thus: "3.19 (f) (iv): "-----
BOSWELL : But what do you think of supporting a cause which you know to be bad? You are to state facts clearly; so that your thinking, or what you call knowing, a cause to be bad must be from reasoning, must be from supposing your arguments to be weak and inconclusive.
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