Reforming Aural Similarity in Malaysian Trademark Law: Structuring Judicial Discretion through Mandatory Phonetic Particularisation

Abstract

The background of this study focuses on the subjective nature of judicial determinations of aural similarity in Malaysian trademark law. The likelihood of confusion assessment under the Malaysian Trademarks Act 2019 [Act 815] (TA 2019) involves visual, conceptual, and aural comparisons, but judicial reasoning on sound remains intuitive and unarticulated, despite courts citing the established test from Re Pianotist Co’s Application (1906) 23 RPC 774. This methodological shortfall creates a significant knowledge gap, undermining the transparent application of the ‘imperfect recollection’ doctrine and diminishing decisions’ predictability. This  study aims to  analyse how aural similarity is assessed across registration, opposition, infringement, and passing-off proceedings under both the Malaysian Trade Marks Act 1976 [Act 175] (TMA 1976) and the 2019 Act, and to propose the procedural reform of Mandatory Phonetic Particularisation (MPP). This study uses a qualitative doctrinal methodology to examine Malaysian and Commonwealth case law, analysing judicial reasoning through linguistic and acoustic insights. It finds that while Courts often achieve valid outcomes, they tend to rely on subjective listening instead of clear phonetic justification. The study proposes MPP as a practical framework that requires specific sound-based features, helping to structure judicial discretion. Significantly, MPP is grounded in the existing evidentiary framework of Malaysian Evidence Act 1950 [Act 56] (EA 1950), eliminating the need for statutory amendments. The study concludes that MPP enhances doctrinal coherence, transparency, and procedural fairness, offering a novel, interdisciplinary reframing of a core legal doctrine to strengthen trademark adjudication in Malaysia and comparable jurisdictions.