Trademark in Malaysia

Trademark in Malaysia

SINGAPORE: A panel appointed by The Kuala Lumpur Regional Centre for Arbitration (KLRCA) has ruled in favour of PropertyGuru Group’s ownership of the domain name propertyguru.com.my in respect of the complaint filed by AllProperty Media Pte Ltd (“PropertyGuru”) against the use and registration of the propertyguru.com.my domain name in May by Think Media Sdn Bhd, a Malaysian company acquired by the iProperty group of companies in 2010.

It was ruled that iProperty had acted in bad faith and was requested to transfer the propertyguru.com.my domain back to PropertyGuru by August 4.

The panel comprising three legal specialists in intellectual property ruled:

• The propertyguru.com.my domain name was identical to PropertyGuru's "PropertyGuru" trademark, and was confusingly similar to PropertyGuru's propertyguru.com.sg and propertyguru.com.my trade marks.
• PropertyGuru had established goodwill and reputation with end users and real estate developers in the "PropertyGuru" trade mark in Malaysia since mid 2008.
• iProperty had used and registered the propertyguru.com.my domain in bad faith.
• iProperty, being a competitor of PropertyGuru, was fully aware of PropertyGuru's prior use, goodwill and reputation in the "PropertyGuru" Trademark in Malaysia.
• The registration and use by iProperty of home-guru.com.my which was closely similar to homeguru.com.my belonging to HomeGuru Sdn Bhd, the Malaysian company which forms part of the PropertyGuru group of companies further supported an inference of bad faith by iProperty in using and registering the propertyguru.com.my domain
• iProperty had failed to demonstrate any rights and legitimate interests in the propertyguru.com.my domain name

As a result, the panel directed iProperty to transfer the propertyguru.com.my domain name to PropertyGuru.
“The panel appointed by KLRCA has clearly ruled that we are the rightful owners of propertyguru.com.my and that iProperty had acted in bad faith in relation to this. We are delighted that justice has been served and that we can continue to focus on providing the best possible service to our end users and advertisers," said PropertyGuru Group CEO Steve Melhuish .

As a result of iProperty's use of the propertyguru.com.my domain name, PropertyGuru had no choice but to operate its Malaysian website using the "homeguru.com.my" domain last year.

source: http://www.mmail.com.my/content/78791-propertyguru-wins-back-domain-name