Highlights of the amendments to Malaysia's Trademarks Act

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Malaysia’s Trademarks Act 2019 (New Act) recently came into force on 27 December 2019. This is a significant milestone as the New Act introduces several substantial and long-awaited changes to the trade mark legislation in Malaysia and aligns Malaysia’s trademark system with current international standards.

The following are 10 key highlights of the New Act:

  1. Madrid Protocol – Concurrent with the introduction of the New Act, Malaysia acceded to the Madrid Protocol. Applicants in Malaysia can thus now file international applications, and Applicants outside Malaysia can now designate Malaysia in an international application. Save for Myanmar, all of the ASEAN countries are now members of the Madrid Protocol.
  2. Application for non-traditional marks and collective marks – Non-conventional marks (such as shape marks, packaging marks, colour marks, sound marks, scent marks, hologram marks, positioning marks and motion marks) and collective marks are now registrable in Malaysia.
  3. Multi-class applications are available – While the old system only permitted single-class applications, the New Act introduces multi-class applications to facilitate the process of protecting a mark across several classes of goods and/or services. Provision has also been made for the division and merging of applications and registrations.
  4. Formalities – The New Act expressly provides that in the event that formalities are not complied with, the filing date will be deferred to such date that the non-compliance has been remedied. It is thus important for all information to be included at the time of filing, including the translation and transliteration of any mark in a foreign language. For collective mark and certification mark applications, the rules must also be filed within two months to avoid a later filing date being issued.
  5. Preliminary advice and search – The Registry has introduced an option for applicants to apply to the Registry for preliminary advice and search, prior to submitting a trade mark application. If an Applicant files a trade mark application using the same details after obtaining a clear report, he may obtain a refund of the filing fees if a notification of provisional refusal is subsequently issued.
  6. Acts amounting to infringement – The old law provided that trademark infringement only occurs if an identical or similar mark is used on goods and/or services which are identical to that covered by the earlier mark. The New Act now allows for trademark infringement to be established even in cases where the goods and/or services are not identical but similar, and such similarity give rise to a likelihood of confusion.
  7. Remedies for groundless threats of infringement – The New Act provides for aggrieved party to seek remedies for groundless threats of infringement. Caution should thus be exercised when issuing letters of demands.
  8. Revocation of registration – The New Act expands the grounds for revocation of a registered mark. It is now possible to revoke a registration where the mark has become a common name in trade due to the acts of inactivity of a registered proprietor, or where the use of such mark misleads the public as to the nature, quality or geographical origin of the goods or services.
  9. Registrable transactions – It is now possible for security interests to be recorded on the Trade Mark Register. Licences may also be recorded, even though it is not mandatory.
  10. Transitional provisions – Pending applications filed before the commencement of the New Act will be examined under the old law. However, there is an option to request that such an application be considered and examined under the New Act, provided that the request is filed within two months of the commencement of the New Act. For trade mark renewals due on or after 27 December 2019, the new renewal fees will be applicable.

Dentons Rodyk thanks and acknowledges Senior Associate Jie Ying Quek for her contributions to this article.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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