The much-awaited and long overdue new Malaysian Trademarks Act 2019 has now been fully implemented following its official enforcement on 27th December 2019.
This Act is a major overhaul of the previously applicable legislation, the Trade Marks Act 1976, which was built on the basis of the United Kingdom Trademark Act 1938. The recently passed bill seems to provide for a more suitable legal frame, which is compliant with international standards.
What are the key changes for applicants?
(i) Accession to the Madrid System
Malaysia became the 106th member of the Madrid System, since the protocol was enforced on 27th December 2019.
Applicants (national and foreign owners) may now file International trademark applications directly from Malaysia (acting as the office of origin) or alternatively, designate Malaysia in the international application filed from a different jurisdiction. For more information, read our article on the Madrid System basics.
(ii) Acceptance of multi-class application
One application can cover several classes of products and/or services. Multi-class applications can save costs and facilitate the administration of a trademark portfolio considering that:
– all trademark details for all designated classes are combined under one form
– a single application/registration number and date, as well as renewal date, are granted
– the formalities, for example renewals or assignments, are significantly simplified as recorded via the submission of a single form.
In case an objection or opposition is raised or filed with respect to some classes only, it will be possible to file a divisional application to allow the non-objected or opposed classes to proceed to registration without further delay. The Act also provides for the possibility to consolidate single class registrations filed under the new Act under one registration to facilitate the portfolios’ administration and reduce future renewal and maintenance costs.
(iii) A broader scope of protection
Non-traditional marks such as color, sound, scents, 3D, hologram, positioning or motion marks are now entitled to registration provided that:
– they are capable of graphic representation, and
– they can distinguish goods or services from those of others.
Collective marks are also accepted under the Act.
As per the new Malaysian Trademarks Act 2019, registered trademarks are now recognized as property and thus as a form of security just like any other property, despite their intangibility. This provision is applicable for all trademarks even if registered under the previous regime.
This law also establishes an additional guarantee for trademark applicants and owners as it recognises the principle of privileged communication. In other words, it creates a protected relationship between trademark agents and their clients since all shared information and documents would remain confidential and their disclosure cannot be forced by law.
(iv) Filing and priority date
The application date of a new application should be its filing date provided all formality requirements are met on that date. If any of these formalities are completed after the actual date of filing, the application date will be postponed accordingly.
If priority is claimed, the priority date will serve to determine the precedence of rights during the substantive examination. It will have no impact on the application or renewal date as compared to the previous legislation.
(v) Streamlined process
The statutory declaration is no longer required for trademark filings. Since a power of attorney is not mandatory either, the client’s instructions and particulars of the marks will thus be sufficient (representation of the marks, classes, specifications of goods and services, applicant’s details and priority details if any). The certified copy of the priority documents and their certified translation of marks in foreign languages are no longer required unless otherwise requested by the examiner at the examination stage.
(vi) Substantive examination procedure
The substantive examination is conducted based on absolute (inherent registrability) and relative grounds (conflict with earlier or well-known marks). Applicants are only given one opportunity to overcome the provisional refusals raised on these grounds (by filing written arguments or attending a hearing before the registrar). If after submission, the refusal is maintained, applicants who want to challenge the officer’s decision will have no choice but to file appeals before the High Court. The fees involved at that stage will be substantial higher than the ones incurred at the registry’s level as per the old system. The examination procedure appears to be more rigid under the new Act.
Letters of consent will be accepted as a way to overcome objections based on the citation of prior marks. However, they are not binding and it is expected that the registrar will reject the coexistence of marks which are deemed highly similar so as to preserve public interest.
(vii) Registration and validation of the mark
Registration Certificates will no longer be issued unless expressly requested by the trademark owner (subject to payment of additional fees). A notification of registration sealed by the Registrar shall be issued instead.
The mark is deemed definitely valid after five years of registration (as opposed to seven in the previous Act). Invalidation actions should thus be filed within the first five years of registration if intended. These new provisions are applicable to all registered trademarks even if the registration was completed under the previous regime.
(viii) Recognition of licensing
Licensing provisions replace the previous regime of the “registered users”. To be recorded and thus be deemed effective, the license should be put down in writing and signed by or on behalf of the trademark owner. Sub-licensing is also recognised under this new Act.
(ix) Expanded scope of defence against trademark infringement
The new Act enables trademark owners to initiate infringement proceedings against a sign that is identical or similar to the registered mark and used in connection with identical or similar goods and/or services. The previous law imposed that the goods or services be identical.
Secondary users can be considered as potential infringers as well if it can be established that they are aware that the mark has been used without the proprietor’s authorisation.
The available remedies (such as damages or injunctions) have been codified and sentences aggravated (up to RM1 million, jail for a maximum period of five years, or both). These provisions apply to all registered trademarks.
(x) Transitional period
For any pending application filed under the previous regime which has not been examined before the commencement of this new Act, applicants are entitled to request that the registrability of the corresponding mark be determined on the basis of the provisions of the new Act. The request for conversion of pending applications may be filed until 27th February 2020.
This conversion should be contemplated by all applicants considering that the new Act generally offers a wider scope of recognition and protection of trademarks as highlighted in this article.
However, in case of conversion, the filing date of the application will be replaced by the date on which the request for conversion is filed. Any identical or similar marks filed after the initial application date, but before the date of conversion, could thus potentially be cited. In other words, every converted application will be considered as a new application. In case of priority claim, if the priority application was filed within the six-month period preceding the conversion date, it will still be possible to claim priority. However, if the conversion date falls after the six-month priority period, priority will not be granted.
In light of the above, the conversion procedure should be adopted selectively. Please contact us for our analysis in this regard.
(xi) New fees structure
In light of all the aforementioned changes, official fees have been thoroughly overhauled and substantially increased in some cases.
At IPHub Asia, we help businesses register and protect their trademarks.