How to Overcome Provisional Refusal on Trademark Application in Malaysia
We all wish for a straightforward and smooth trademark registration process. However, it is not uncommon to encounter office action or provisional refusal from the Registry of Trademarks. Sometimes, it’s just part and parcel of the process that is difficult for us to avoid. There’s no reason to be panic or furious if you have received a letter of provisional refusal on your trademark application from the Registry.
There are many reasons causing your trademark application being refused by the Registrar, it could be of formality or substantive grounds. In this article, we are going to discuss about overcoming provisional refusal on substantive grounds.
What is Provisional Refusal on Substantive Grounds?
It is provided in Section 29 of the Malaysian Trademarks Act 2019 (“TM Act 2019”) that:-
(1) The Registrar shall examine whether an application for registration of trademark fulfils the requirements for registration under the TM Act 2019.
(2) For the purpose of an examination under subsection (1) above, the Registrar shall carry out a search, to such extend as he considers necessary, of earlier trademarks.
However, according to Section 29(5) of the TM Act 2019, if the application for registration of trademark does not fulfil any requirements, the Registrar shall inform you the grounds of provisional refusal by a written notice and you shall have an opportunity to:-
(a) make representations;
(b) amend the application so as to meet the conditions, amendments, modifications or limitations, as the Registrar deems fit to impose; or
(c) furnish additional or any other information or evidence.
Please note the above bolded words “any requirements”, it means the Registrar could refuse your application based on any grounds within the TM Act 2019, and, actually, there are many.
Based on our experiences, the most common grounds cited by the Registrar to refuse trademark applications are:-
Absolute Grounds for Refusal of Registration under Section 23 of TM Act 2019.
Relative Grounds for Refusal of Registration under Section 24 of TM Act 2019.
Absolute Grounds for Refusal
Under Absolute Grounds for Refusal, there are 18 grounds that the Registrar could probably rely on to refuse a trademark application. The issues under this ground are mostly on the inherent design or nature of the mark, not so much about other similar trademarks.
While the Registrar would still refuse registrations based on other grounds under Section 23 of TM Act 2019, we may consider the following are the most common issues faced by trademark applicants:-
Devoid of distinctive character, ie. the mark not capable of distinguish its goods or services from others - Section 23(b) of TM Act 2019
The mark is describing the goods or services - Section 23(c) of TM Act 2019
Relative Grounds for Refusal
The Registrar may raise Relative Grounds for Refusal under Section 24 of TM Act 2019 when your trademark is found to be in conflict with earlier mark(s). These earlier mark(s) could be pending or registered trademark in the Malaysian Registry of Trademarks, or locally or internationally well-known trademarks.
If a provisional refusal is raised under these grounds, the Registrar would usually list down the cited marks in his letter.
What to do When You Receive Letter of Provisional Refusal?
Firstly, ascertain the deadline. The Registrar would usually give a 2 months deadline for you to respond to the provisional refusal. If the letter is posted by ordinary mail and delay is caused while in transit, you may be left with very little time out of the 2 months deadline when you receive the letter from Registry. Hence, if you are too close to the deadline, quickly apply for extension of time to preserve your rights!
Responding to provisional refusal is a technical effort. It is not recommended to rush it through in the matter of days. It is also not recommended to do-it-yourself if you have no legal expertise or experience in dealing with such refusal before. Hence, it is highly recommended to seek assistance from a competent Trademark Agent who are legally trained.
At this point, it is worthy to note that foreign applicants are required to respond to the provisional refusal through a registered trademark agent in Malaysia.
How to Prepare the Appeal?
The Registrar would usually offers two ways for your to appeal:-
Submit written arguments; or
Apply for ex-parte hearing by filing Form TMC1.
Unlike the procedure under the repealed Trade Marks Act 1976, you only have one opportunity to substantially argue against the refusal under the present TM Act 2019. Therefore, it is highly advisable to carefully strategize the arguments against the refusal.
Written arguments is a document that you may put forward your argument as to why your trademark should not fall under the grounds for refusal raised by the Registrar. It should contain:-
Legal arguments as to why the grounds of refusal raised by the Registrar is not applicable to your trademark. Or, why your trademark should be entitled for registration.
Factual arguments setting out the background and the use of your trademark and how it would support the registration.
Refusal Based on Earlier Marks
If the Registrar cites earlier mark which he finds conflicting with your trademark (a.k.a cited mark), its details should be carefully scrutinised in order to persuade the Registrar that it is not confusingly similar from your trademark. For example, you may carefully lay down the differences between the cited mark and your trademark, such as the differences of overall design and / or the goods and services.
Refusal Based on Descriptiveness or Devoid of Distinctive Characters
If the refusal is based on the grounds that your trademark is not distinctive or it is describing the goods or services, submission of evidence of use prior to the filing date may be of assistance. Section 23(2) of the TM Act 2019 provides that,
“Notwithstanding paragraphs (1)(b),(c) and (d), the Registrar shall not refuse to register an application of a trademark if, before the date of application for registration, the trademark has in fact acquired a distinctive character as a result of its use”
Therefore, submission of evidence of use is an attempt to prove that your trademark has acquired factual distinctiveness prior to filing the application. How much evidence is needed? There is no fixed formula in this.
Whether a trademark has acquired factual distinctiveness is a question of fact. Mere use of the trademark prior to the filing date does not mean it would automatically acquire distinctive character. The use of your trademark must be substantial and extensive enough to persuade the Registrar that it has acquired distinctive character. To put this at simpler way, the amount of evidence of use is always the more the merrier.
The Registrar would consider factual distinctiveness of a trademark from multiple perspectives, such as, how long it has been in use, annual amount of sales, expenses on advertising and marketing, the channel of sales, the awareness of public on the trademark and many more.
Exhibiting Evidence of Use by Statutory Declaration
It is important to note that the evidence of use should be submitted by exhibiting in a statutory declaration (please see Section 17(c) of Trademarks Regulations 2019). A statutory declaration is a sworn statement made pursuant to the Malaysian Statutory Declarations Act 1960. The applicant is expected to affirm this document personally before a Commissioner for Oaths. For foreign applicant, the document should be affirmed before a Notary Public.
Usually this Statutory Declaration does not contain much legal arguments but it is for the applicant to present factual information on the use of the trademark with the supporting evidence.
With regards to the type of evidence, it is advisable to include the following:-
date of first use of the mark and the evidence supporting the same;
any evidence proving the use of the mark, e.g. all advertising materials, websites, social media, interviews by e.g. media, blogs, magazines, photographs depicting the use of the mark, name cards, brochures, sample copy of invoices, and other evidence which could prove the use of the mark;
annual revenue generated
annual expenses on advertising and promotion
if any, prior registration of the trademark in other countries, especially Commonwealth countries, such as United Kingdom, Singapore, Hong Kong, India and Australia
The abovementioned list is not exhaustive, but it merely serves as a general reference. If you have more relevant evidence which may help persuading the Registrar, by all means include them in your appeal.
Appeal by Ex-Parte Hearing
This is another option to appeal against the provisional refusal. You are still expected to prepare and submit the abovementioned written submissions and statutory declaration, but this option has an additional steps, ie to have an hearing before the Examining Officer and present you argument.
The pro of this option is that you have an opportunity to present your case before the Examining Officer. From there, you may have direct communication with the officer in addressing to their concerns and persuade him that your trademark is entitled for registration and protection.
How long it takes for the Registrar of Trademarks to consider your appeal?
Once your trademark application has encountered provisional refusal, and if you are appealing by way of written arguments (first option), you should expect decision from the Registrar within 1 to 2 years after the filing of the written appeal.
On the other hand, appealing by way of ex-parte hearing (second option) may take longer. First, you will need to wait for the Registry to fix an hearing date. After the hearing, it will take another period for the Examining Officer to consider and re-examine your trademark application. All in all, if you are appealing under the option of ex-parte hearing, we expect process would take another 1.5 to 3 years.
In summary, appealing against provisional refusal of a trademark requires strategic planning. It is highly advisable to seek assistance from a competent Trademark Agent who has been legally trained in trademark registration process. Although engaging a Trademark Agent does not guarantee the successful registration of a trademark, but a Trademark Agent is in a better position to advise the dos and don’ts in preparing your appeal, considering you only have one shot in arguing against the provisional refusal before the Registrar of Trademarks.
Received a provisional refusal on your trademark registration? Don’t wait! Contact us today to secure your exclusive rights on your trademark!
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 professionals.
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