Following our recent Malaysia Update on the Bill of the Trademarks Act 2019, the long awaited bill was passed after the second reading on 2 July 2019.
This article seeks to highlight the key changes (substantive and procedural) in the law and to help clients familiarise themselves with the new trademark protection regime which will come into force soon.
- Accession to the Madrid Protocol & Multi-Class Applications
At present, anyone seeking to register a trademark overseas must register the trademark separately in each country where trademark protection is required. The new Act empowers the Minister to make regulation to give effect to the provisions of the Madrid Protocol in Malaysia which makes it possible to file a single application in one language and paying one fee to register a trademark in up to 120 countries.
Multi-class trademark applications will become available allowing a trademark owner to file a single application covering goods and/or services in more than one international class.
- Recognition of Non-Traditional Marks
Under the new Act, the scope of registrable trademarks has been expanded to include non-traditional marks such as colour, sound, scent, hologram, positioning, shape of goods or their packaging, sequence of motion or any combination thereof as long as the mark is capable of being represented graphically and meets the usual test for registrability that the mark is capable of distinguishing the owner’s goods or services from those of others.
- Filing Date
A filing date will only be recorded upon fulfilling the mandatory formality requirements. Hence, we recommend that marks which are not in Roman characters, the national language or English language be accompanied by the certified translation and transliteration of the mark to obtain an earlier filing date.
- Examination Procedure
Substantive examination will be based on both absolute grounds (e.g. the mark is devoid of distinctive character, the mark consists exclusively of signs or indications that may serve in trade to designate the characteristics of the goods and services) and also on relative grounds (i.e. the mark is identical with an earlier trademark).
The new Act also recognises consent by the owner of an earlier conflicting mark proprietor, although the Registrar retains the discretion to accept such consent, taking into account the interest of the public and the likelihood of confusion.
- Notification of Registration
The Registrar no longer issues a Certificate of Registration, which will now only be issued upon request. Instead, the Registrar shall issue a notification of the registration with the seal of the Registrar.
- Non-Use Revocation
A registered trademark is vulnerable to cancellation for non-use if the mark has not been used in the three year period prior to filing the non-use application except if steps have been taken to commence use before the proprietor becomes aware of the non-use action. Also, the registered proprietor cannot rely on any use of the mark after the expiry of the three year period but within the period of three months (one month under the current Act) prior to the filing of the non-use action.
The grounds to revoke a trademark on the grounds of non-use have also been expanded to include revoking a mark which has become a common name in the trade for the product or service for which it is registered as a consequence of inactivity. A mark can also be revoked where, as a result of use, the mark is liable to mislead the public in respect of the nature, quality or geographical origin of the goods.
- Registration of Registered User Abolished
The present system of recording the registered user of a trademark is abolished. However, it will be possible (but not mandatory to record a licence. A license shall be deemed effective so long as it is in writing and is signed by or on behalf of the grantor. It is advisable to record a licence as every person shall be deemed to have notice of the license if it is entered in the Register. Sub-licensing is also expressly recognised under the new Act.
- Security Interests
The new Act recognises security interests and a registered trademark may be the subject of a charge in the same way as other personal or movable property. Until an application has been made for the registration of the granting of a security interest over a registered trademark or any right in or under it, it is ineffective as against a person acquiring a conflicting interest in or under the registered trademark in ignorance of the transaction.
- Presumption of Validity
A trademark registration is deemed conclusive after five years (seven years under the current Act) and shall be taken to be valid in all respects unless the registration is obtained by fraud, offends Section 23 of the new Act (absolute grounds for refusal of registration) or the mark was not distinctive at the commencement of any legal proceedings.
- Privileged Communication
The new Act also imposes a duty on trademark agents that all communication made including any record or documents used during the communication between a registered trademark agent and the person appointing and authorising him to act as the agent are privileged communication as a communication between a solicitor and his client.
- Conclusion & Transitional Provisions
Applications which have not been examined before the commencement of the Act shall be considered for registration under the repealed Act, with an option for the applicant to apply to the Registrar claiming to have the registrability of the mark determined in accordance with the provision of the new Act. However, if an application is pending publication at the commencement of the new Act, the provisions on oppositions under the new Act shall apply.
The Trademarks Act 2019 is not yet in force, and will come into operation on a date to be appointed by the Minster by notification in the Gazette. Different dates may be appointed for the coming into operation of different parts or provision in the Act.
If you would like to discuss these changes further, please contact us.