Malaysian Trade Marks Update– Trademarks Bill 2019

Malaysia has introduced a new Trademarks Bill 2019 (Bill) which is set to replace the current Trade Marks Act 1976. It is anticipated that the new Act will come into force on 27 December 2019.

 

Some of the key changes are set out below:

Accession to the Madrid Protocol

Malaysia is set to join the Madrid Protocol from 27 December 2019. This means that a trade mark can be protected by way of an International Application covering Malaysia, instead of filing a separate national Malaysian trade mark. This is particularly useful if there are multiple countries of interest, as it is generally more cost effective to file a trade mark via an International Application which designates more than one country, as opposed to filing national applications in each country of interest.

Multi class applications

Currently, only single class trade mark applications are accepted in Malaysia. However, the Bill will allow for multi-class applications to be filed.

Non-traditional trade marks / collective trade mark

The Bill recognises non-traditional trade mark marks such as the following, however, they must be capable of being graphically represented:

  • shape mark or its packaging
  • sound
  • scent
  • colour
  • hologram
  • positioning
  • sequence of motion

The Bill also recognises collective trade marks.

Filing Date

The date of filing will no longer be recorded as the date of receipt of a new application. It will only be recorded once all formality requirements have been met (e.g. lodgement of power of attorney).

Division and Merger of trade mark applications and registrations

The Bill will provide for the division and merger of applications and registrations. Consequently, it may be possible for trade mark owners to consolidate current single class registrations. This may assist in the reduction of future renewal costs.

Defensive and Association trade marks

Defensive and association trade marks will no longer be available.

Security Interests

It will be possible to apply for registration of a security interest over a pending or registered trade mark.

Registration conclusive period

Currently, a trade mark is taken to be valid in all respects after a period of 7 years unless the registration (1) was obtained by fraud, (2) offends against Section 14 of the current Act (Section 23 of the proposed new Act) or (3) that the trade mark was not distinctive of the goods or services. This period will be reduced to 5 years.

Infringement

  • Scope

The scope of trade mark infringement is to be expanded to cover goods or services which are similar to those registered under the trade mark. 

  • Groundless threats

Groundless threats provisions will be introduced, where it will be possible for an aggrieved person to bring an action against a person who threatens trade mark infringement without basis.

  • Remedies

The remedies available under a trade mark infringement action include damages, account of profits, injunctions (including interim injunctions) and mandatory orders.

Final Comments

As noted above, from 27 December 2019, Malaysian applications can be filed via the Madrid Protocol filing process in addition to national Malaysian applications.

If you have an International Registration and are considering seeking trade mark protection in Malaysia, you may wish to apply for a subsequent designation to extend protection of the registration to cover Malaysia, rather than applying for a separate national application.

Further, if your national Malaysian trade mark registrations have upcoming renewal deadlines due after 27 December 2019, you may also wish to consider the merging of your registrations in order to reduce future renewal and maintenance costs.

More detailed information regarding the Bill can be found in the Intellectual Property Corporation of Malaysia’s Consultation Paper at: http://www.myipo.gov.my/wp-content/uploads/2019/09/Consultation-Paper-Trademarks-Regulations.pdf