Yay! You have finally received the approval on your trademark application from Government Trademark Office after months of wait (sometimes up to a year!).
It has now being published in the Government IP Journal for two months.
And.... BOOM! Someone thwarted your ‘smooth trademark registration plan’ and you receive a notice of opposition just a few days shy of the end of that two-month publication period! What to do next?!
Here’s a quick guide to everything you need to know when someone opposes your trademark registration.
A smooth trademark registration in Malaysia will take approximately 12 – 18 months from the date of filing. It will go through a series of examination before it matures into registration.
The formality on the application and the inherent nature of the trademark as a whole will first be examined by the Registrar of Trademark. Once the Registrar accepts (aka approves) your trademark application, it will be published in Intellectual Property Official Journal for two months. During this time, the public may raise opposition against your trademark application.
Grounds of Opposition
Section 34 of the Malaysian Trademarks Act 2019 (“Trademarks Act”) allows any registered proprietor or any person to oppose a trademark application.
A registered proprietor may oppose a registration if he has continuously used the trademark from a date before the use of the applicant's trademark; or from a date before the filing date of the applicant's application.
Notwithstanding above, any person may oppose the registration of a trademark on any grounds below:-
i) absolute and relative grounds of refusal;
ii) the applicant is not the proprietor of the trademark; or
iii) it is identical or similar to a well-known trademark
1. Filing Notice of Opposition
Procedurally, the opposition proceeding begins with filing of notice of opposition. Regulation 23 of Malaysian Trademarks Regulations 2019 ("Trademarks Regulations") requires the opponent to file a notice of opposition which is form TMD1 together with the statement of grounds of opposition within 2 months from the date of publication of the mark. Upon filing of the notice of opposition, the opponent shall serve a copy of the said notice and grounds of opposition to the applicant.
Within 14 days from the date of receipt by the applicant, the opponent shall file with the Registrar an affidavit of service, where it shall contain proof of the date of receipt by the applicant of the notice of opposition.
2. Filing of Counterstatement
Once notice of opposition is received by the applicant, he shall by virtue of Regulation 24 of Trademarks Regulations, file a counterstatement in Form TMD6 within 2 months from the date of receipt of the opponent's notice of opposition to counter the opponent's grounds of opposition.
Likewise, the applicant shall serve a copy of the counterstatement to the opponent. Within 14 days after the opponent received the counterstatement, the applicant must file an affidavit of service with the Registrar, where it shall contain proof of the date of receipt by the opponent of the counterstatement.
3. Filing Evidence in Support
Evidence in Support for Opposition
After both parties have exchanged their respective grounds in opposing and supporting the registration of the trademark, they will now enter into the stage of exchanging evidence in to support their claims.
Regulation 25 of the Trademarks Regulations provides that, the opponent shall then file evidence in support of opposition within 2 months from the date of receipt of counterstatement from the applicant. Such evidence shall be submitted by way of a statutory declaration ("SD"), certifying that the facts and evidence in the SD are true. The opponent shall also serve a copy of the said SD to the applicant, followed by filing of an affidavit of service with the Registrar, to prove that the applicant has received the SD.
Evidence in Support of Application for Registration of Trademark
Upon receiving the Opponent's SD, it is now the applicant's turn to file evidence in support of his application, pursuant to Regulation 26 of the Trademarks Regulations. The applicant shall file the same within 2 months of the receipt of the opponent's evidence in support of opposition, in the form of SD. The applicant shall always remember to serve a copy of the SD to the opponent and file an affidavit of service within fourteen days from date of receipt by the opponent, evidencing that the opponent has received the SD.
Evidence in Reply by Opponent
If necessary, Regulation 27 of the Trademarks Regulations allows the opponent to file evidence in reply by way of statutory declaration, in response to the applicant's SD within 2 months from the date of receipt of the applicant's SD.
In this regard, the opponent’s reply shall only limited to the matters stated in the applicant's SD.
4. Written Submission
Once the parties have completed the exchange of evidence, the Registrar shall issue a notice to opponent and applicant to submit a written submission, within 2 months from the said notice, pursuant to Regulation 30 of Trademarks Regulations.
5. Decision
According to Regulation 33 of Trademarks Regulations, the Registrar shall consider all the evidence, exhibits and any written submissions from both parties and then within 2 months to communicate his decision in writing to the parties of the opposition proceedings.
In this regard, the Registrar shall decide whether:-
(a) to refuse to register the trademark;
(b) to register the trademark absolutely; or
(c) to register the trademark subject to such conditions, amendments, modifications, disclaimers or limitations as he thinks fit.
(Section 35(8) of the Trademarks Act)
If either party is not satisfied with the Registrar’s decision, he may appeal to the court within 1 month from the date on which the Registrar’s written grounds of decision is issued to the parties.
Security for Costs
It is worthy to point out that, pursuant to Section 35(13) of the Trademarks Act, if a party does not reside or carry-on business in Malaysia, the Registrar or the Court may require him to give security for costs of the proceedings. In default of such security being given, the opposition, application, or appeal, as the case may be, could be deemed withdrawn.
The procedures involved in trademark opposition proceeding requires meticulous attention to details as a missed deadline on any steps may render your application withdrawn.
You may leave it to the expert to deal with your trademark related matters or contact us today!
Written by,
IP Legal Executive
Bachelor of Laws
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
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