Malaysia’s new Trademarks Act 2019 – a new dawn arises

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Following our recent article Malaysia’s New Trademarks Act 2019 (“new Act”) we are pleased to update that the very much anticipated new Act has now come into force following its official enforcement on 27th December 2019.

Here is a summary of the notable key changes under the new Act:

  • Accession to the Madrid Protocol allowing one single application in one language to register a trademark in a total of 122 countries;
  • Multi-Class Applications to cover goods and services in more than one international class;
  • Recognition of non-traditional marks such as colour, scent and sound;
  • Recognition of collective marks such as clubs and trade unions;
  • Recognition of trademark as a form of security interest;
  • Expansion on the scope of trademark infringement;
  • Notification of registration via a seal by the Registrar;
  • Replacement of system of registered user with statutory recognition of licensing;
  • Reduction of the registration conclusive period from 7 years to 5 years;
  • Communication made between a registered trademark agent and the person appointing him to act as the agent will be privileged

In addition, the Intellectual Property Corporation of Malaysia also issued several new guidelines which function to navigate and provide a more procedural understanding on the new Act. These include the Malaysia, Guidelines of Trademarks (Transitional Matters) 2019, Guidelines of Trademarks 2019 and the Trademarks Regulations 2019.

Special focus should shift on the latest Guidelines of Trademarks for Transitional Matters 2019, where these guidelines currently serve the purpose of assisting applicants in registering their trademarks in accordance to the new Act. Among some of the matters highlighted in the guidelines are:

Conversion of pending applications

In the event where an application for trademark registration has been filed under the previous Trademarks Act 1976(“old Act”) but has not been examined by the Registrar on the commencement of this new Act, the applicant may give notice to the Registrar to have the registrability of the trademark determined in accordance with the provisions of the new Act by filing an application for conversion of pending application within 2 months from the commencement of the new Act, before 27 February 2020.

As the new Act offers a wider scope of recognition of marks and with the expansion of the definition ‘sign’, Applicants may consider converting their pending applications for its registrability to be examined under the new Act.

Amendments of assignment

In the event where an application for registration of an assignment has been filed but is yet to be determined, the Registrar may require the registered proprietor to file an amendment of assignment in order to ensure all requirements under the new Act are to be complied with before determining the said application.

These new requirements include:

  • The name and address of the assignee;
  • The date of the assignment;
  • A description of the right assigned where the assignment is in relation to any trademark right;
  • The signature of the parties or on behalf of the parties to the assignment.

Unless expressly required by the Registrar, the registered proprietor must not add or amend any particulars to the assignment such as:

  • The signature by both assignor and assignee;
  • The deed of assignment duly signed by the assignor and assignee; or
  • Any proof of title to the satisfaction of the Registrar.

So as long as the application complies with all the requirements and guidelines, the Registrar shall proceed to determining it.

Amendments of registered users

Similarly, where there is an application for registration as a registered user which is yet to be determined, the Registrar may also request the registered proprietor to file an amendment to licencing in ensuring that all requirements of the new Act are complied with.

These new requirements include:

  • The name and address of the licensee;
  • Where the licence is an exclusive one;
  • A description of the limitation where the licence is limited;
  • The duration of the licence;
  • The application must be signed by or on behalf of the grantor of the licence or be accompanied by such documentary evidence to establish the transaction.

Defensive trademarks

Under the new Act, applicants can no longer file an application for registration of a defensive trademark. However, it is imperative to note that defensive trademarks which have been registered under the old Act shall continue to be treated as an existing registered mark under the new Act.

Conclusion

As highlighted from the above, the enforcement of this new Act as well as new guidelines and regulations thus, marks a brand-new landscape of trademark filing and registration in Malaysia. If you would like to discuss these amendments, do not hesitate to contact us further.

This article was written by Chen Hui Ken and Amy Chan.

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