Grace Teoh discusses the groundless threats provisions in the
Trademarks Bill 2019.
Back in 2014, Legal Insights examined the issue of patent trolls
and the laws available to address such issues in Star Trolls:
The Patent Menace. In December 2016, the Malaysian High Court
held in Diesel SpA v Bontton Sdn Bhd [2016] MLJU 1350 that
the Malaysian courts only had grounds to grant negative
declarations, e.g. that the plaintiff's bona fide use
of the plaintiff's own name does not infringe the
defendant's registered trademark, if Parliament amended the
Trade Marks Act 1976 to provide a remedy for groundless threats of
infringement.
Parliament must have found the issue sufficiently threatening in
Malaysia and has taken steps to provide a solution, starting with
the Trademarks Bill 2019. Section 61 of the Trademarks Bill 2019
will provide the remedies for groundless threats of infringement
proceedings when the Bill comes into operation.
