Malaysia joins the Madrid Protocol and has a new Trademarks Act

The Protocol has entered into force for Malaysia and the new Trademark Act 2019 has also come into force, which ensures it’s compliance with the Protocol.

The Trademarks Act 2019 has also changes the scope of infringement, invalidation and revocation by the Registrar and provided for new criminal offences.

Trademark owners in Malaysia can now use the Madrid System, which means they can protect their trademarks in over 120 territories of the system by filing a single international application in one language and paying one set of fees in a single currency. On the other hand, trademark owners applying for international trademark from other countries are now able to designate Malaysia, which helps to reduces bureaucracy and costs. Trademark owners of active/existing international trademarks are also able to apply for a subsequent designation and extend protection to Malaysia.

Take Away Points

1. The accession to the Madrid Protocol brings about a fundamental change to Malaysia’s trademark law in that previously trademark applications in Malaysia could only be made directly with the Intellectual Property Corporation of Malaysia (MyIPO).
2. The amendment to the Trademarks Act 2019 has changed the current single-class filing system to the multi-class system, allowing trademark owners to file for registration of their trademarks in multiple classes of goods and services in a single application.
3. The amendment to the Trademarks Act 2019 provides for an expanded scope of trademark protection, whereby protection is now accorded to 3D marks, shape of goods/packaging, sound, scent, colour, holograms, positioning and sequence of motion.
4. In line with the amendments recently made to the Madrid Protocol for international registration, a trademark application or registration in Malaysia can be divided into two or more separate applications or registrations, and conversely, multiple applications or registrations can be merged.
5. Malaysia has chosen to make five declarations as part of its accession to the Madrid Protocol, as follows:
   1. Article 5(2)(b) of the Madrid Protocol which extends the provisional refusal period to eighteen (18) months. This means that the provisional refusal (what is generally/domestically/nationally referred to as the examiner's report, must be sent before the end of the eighteen (18) months after MyIPO is notified of the designation.
   2. Article 5(2)(c) of the Madrid Protocol which allows MyIPO to send a notification to the International Bureau informing them that a provisional refusal based on an opposition may be issued on a Protocol application after the eighteen (18) month time limit. This means that there is a possibility that if the opposition period has not yet occurred and more than eighteen (18) months have passed since the date of notification of designation, MyIPO will be able to send a notification of provisional refusal based on an opposition if a statement of opposition is filed on that Protocol application.
   3. Article 8(7)(a) of the Madrid Protocol which provides for the ability to charge individual fees. These fees will be the equivalent of the national fees, only in Swiss Francs (CHF).
   4. Rule 7(2) of the Common Regulations which requires international trade mark applications or subsequent designations of Malaysia to include a Declaration of Intention to Use the mark in Malaysia.
   5. Rule 20bis(6)(b) of the Common Regulations which mandates that the recording of licenses is provided for by domestic law but the recording of these licenses in the International Register alone has no effect.

Changes in trademark prosecution and rights by the Trademarks Act 2019

6. With respect to the grounds of refusal are now categorized into “absolute grounds” and “relative grounds”.
7. “Absolute grounds” are similar to the grounds for prohibition on registration that under the previous Trade Marks Act 1976 as “likely to deceive or cause confusion, commonly used word(s), offensive matter etc. For “absolute grounds” an additional ground for refusal is where a mark consists of a sign or indication which is customary in the country or in the bona fide and established practices of the trade.
8. “Relative grounds” are similar to the grounds for prohibition on registration that under the previous Trade Marks Act 1976 as objections in respect of citations of prior similar or identical trademarks and well known trademarks. Here express provision has been made for the recognition of common law rights under the law of passing off for both unregistered marks and trademarks that infringe copyright and/or industrial design laws. The Registrar will also recognise consent given by the owner of an earlier conflicting mark after taking into account public interest and the likelihood of confusion.

Regulatory Changes

9. The responses to office actions are now limited to written submissions, with the right to ex parte hearings that was available previously being removed.
10. The filing date is now upon the formality requirements being completed.
11. Physical certificates of registration will no longer be issued except upon request. A notification will be issued electronically bearing the seal of the Registrar.
12. The period of establishing conclusive ness has been reduced to 5 years.

Transactional Matters

13. Licenses would only be effective if they are in writing and signed by /or on behalf of the Licensor.
14. There is no mandatory requirement to record the assignment, however recordal will mean notice to the public is deemed to have been given.
15. An exclusive licensee will have rights and remedies that are concurrent with an assignee in respect of infringement proceedings.

Security Interest

16. Trademark is recognised as a form of security and can be assigned and charged.
17. Registration of the interest allows protection against a third party acquiring a conflicting right .
18. The transactions that can be registered are assignments, licenses, charges (security interest and assents by personal representatives.
19. Trust are recognised where express trusts are registrable and implied and constructive trust recognized.

We at Marks & Clerk (Malaysia) would be happy to assist in any way we can for trademark matters in Malaysia.