The new Malaysian Trademarks Act 2019 has finally come into force on 27th December 2019! It is a total revamp of the previous Trade Marks Act 1976 and let us go through what are the key changes that the new Trademarks Act 2019 (“2019 Act”) has brought to us.
#1: Official Fees
Costs are always our primary concern when there are changes on any regime. The good news is ----- there is no substantial increase on the filing fees. However, the 2019 Act has introduced new fee structure for new trademark applications.
In short, under the previous Trade Marks Act 1976 (“1976 Act”), trademark applicants had to pay separately for filing new trademark applications and advertising their trademarks in the Government Gazette. Unfortunately, some applicants may have omitted to apply for advertisement of their trademarks upon approval, causing their accepted trademarks being abandoned.
Now trademark applicants just need to pay one set of fees for a smooth application process up until successful registration of a trademark, eliminating the possibility of an accepted trademark being abandoned.
The 2019 Act has introduced two types of fees for filing new applications, by separating trademark applications into:-
(i) Applications with pre-approved specification of goods and services, Government Official Fees = RM970.00 (including appointment of agent); or
(ii) Applications without pre-approved (or customized) specification of goods and services, Government Official Fee = RM1,120.00 (including appointment of agent).
By all means, please feel free to contact us today to find out the details of the fees under the new Trademarks Act 2019!
#2: Non-Traditional Trademarks
Finally non-traditional trademarks can be registered in Malaysia! The 2019 Act has expanded the types of registrable trademarks such as shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof. Let the avalanche of artistic creativity begin!
#3: Accession Into the Madrid Protocol
Following the implementation of the Act, we may now register our trademarks in the member states of the Madrid Union (which currently comprises of 122 countries!) by using the Madrid System.
We should highlight that the Madrid System is a centralized filing procedure to facilitate trademark filings in the member states of the Madrid Union. It does not automatically grant trademark registration in any member states of the Madrid Union. The trademark applications are still subject to examination and approval by the Government Trademark Office of the respective countries by considering the local laws.
The key advantages of Madrid System are, by having a centralized filing procedure, it eliminates the need of engaging local trademark attorneys and liaising with the local Government Trademark Offices separately, which usually involves high costs. It also simplifies the maintenance of trademark registration, such as renewal of registration. This system means the saving of a considerable amount of time and costs with a higher level of protection achievable.
As such, Malaysian trademark proprietors may now file trademark applications in the member states of the Madrid Union by designating the desired countries through Intellectual Property Corporation of Malaysia (MYIPO). Similarly, trademark proprietors from the member states of Madrid Union may now file trademark application in Malaysia through their local Government Trademark Office.
However, the Madrid System also comes with limitations. Firstly, if the basic application in the country of origin (“Basic Application”) has been rejected, cancelled or invalidated within the first 5 years, it would result in cancellation or limitation of protection in the subsequent countries designated under the International Registration, more simply known as the Home Attack. Secondly, the goods and services of the International Registration should not be broader than those in the Basic Application. Thirdly, it is still necessary to appoint a local trademark attorney or agent if any objection or office action arises on the trademark application.
#4: New Registration Requirements
Under the 2019 Act, a trademark application will be examined based on Absolute Grounds (similar to inherent registrability under the 1976 Act) and Relative Grounds (similar to citation of prior mark under the 1976 Act).
The new requirements provide more clarities compared with the 1976 Act.
We will be sharing more details about the requirements separately. Stay tuned!
#5: Registered Trademark May Be Subject To Security Interest or Charge
The 2019 Act recognizes that a registered trademark shall be a personal or movable property and may be the subject of a security interest in the same way as other personal or movable property.
For instance, a charge may now be created on a registered trademark in exchange for financing or other considerations. It should be noted that the Malaysian Companies Act 2016 requires a company that creates a charge on a trademark shall register the charge with the Registrar of Companies, failing which the charge shall be void against the liquidator and any creditor of the company.
#6: Recognizing Counterfeiting a Trademark as an Offence
The 2019 Act also recognizes counterfeiting a registered trademark as a statutory offence (previously we had to rely on the Malaysian Trade Descriptions Act 2011). Any person who counterfeits a registered trademark commits an offence under the 2019 Act and shall, upon conviction, be liable to a fine up to RM1 million or to imprisonment for a term up to 5 years or to both. A welcome addition to the safeguarding of trademarks indeed!
#7: Licensing of Trademark
The 2019 Act defines “exclusive licence” as a licence, whether general or limited, authorizing the licensee to the exclusion of all other persons including the person granting the licence, to use a registered trademark in the manner authorized by the licence, and the expression “exclusive licensee” shall be construed accordingly. Furthermore, a “licence” includes a sub-licence.
Briefly, the exclusive licensee also enjoys the same rights and remedies as if he were the proprietor.
#8: Revocation of Registration by Registrar of Trademarks
The Registrar of Trademarks has been conferred with new powers to revoke a trademark registration, which he could not previously do so under the 1976 Act.
Under the 2019 Act, the Registrar shall revoke a registration where he failed to take into account that an opposition has been filed or any person had applied for extension of time file opposition, provided he became aware of the said failure within 2 months of filing the opposition or extension of time. In this instance, the revocation is mandatory.
On the other hand, the Registrar may revoke the registration of trademark, within 12 months from the date of registration of the mark, if the Registrar is satisfied that it is reasonable to revoke the registration, by taking into account any relevant obligations of Malaysia under an international agreement or convention, or any special circumstances. In this situation, the revocation is discretionary.
The above make up just the tip of the humongous iceberg of change. We will be sharing more about the new 2019 Act in the articles to come! Stay in the know, stay with us!
Or, contact us to find out how to register your trademarks under the new Trademark Act 2019
(1) Lawrence Tan
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
(2) Melody Cheong
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