Due to the impact caused by COVID-19 pandemic, many companies have been hesitant in protecting their intellectual property owing to concerns of revenue drop or cost control.
The good news is that the Malaysian Government has rolled out the Trademarks (Waiver and Modification of Fee) Regulations 2020 and Patents (Waiver of Fee) Regulations 2020 (“Regulations”), which came into operation on 1 January 2021, to assist in mitigating the impact of COVID-19 pandemic.
In summary, the said Regulations allow applicants and proprietors of trademark and patent, who are affected by the control or prevention measures as prescribed under the Prevention and Control of Infectious Diseases Act 1988, to apply for waiver or modification of official fees for trademark and patent matters, respectively.
Trademark applicants / proprietor may apply for waiver of fees for the following matters between 1 January 2021 until 31 June 2021.
Application for amendment of name or address of application and correction of name or address of registered proprietor;
Request for extension of time other than opposition proceedings; and
Filing of documents manually
Apart from waiver of fees, it is also possible to apply for modification of fees in requesting for late renewal of trademark.
This is only applicable for registered trademark expiring between 1 January 2021 until 30 June 2021, in which the late renewal fees have been reduced from RM1,200.00 to RM1,000.00.
Patent proprietors, on the other hand, may apply for waiver of fees on surcharge for late payment of annual fee for patent or utility innovation, which expires between 1 January 2021 to 30 June 2021.
The said waiver application must be filed with the payment of annual fee within the grace period of 6 months as provided under the Malaysian Patents Act 1983.
How to Apply?
An application of waiver or modification of fees must be made in the form prescribed by the Registrar and shall provide supporting documents in support as follow:-
For Individual
He is from the is from the B40 group who is entitled for the Bantuan Sara Hidup or Bantuan Prihatin Nasional; or
His income is affected with the control or prevention measures.
For Body Corporate or Unincorporated
Has obtained approval for the extension of moratorium or any repayment flexibility from any financial institution;
Has cash flow problem affected with the control or prevention measures; or
Has pecuniary indebtedness and problem on repayment of debts affected with the control or prevention measures.
Once the requisite forms and supporting documents have been submitted, the Registrar will check to ensure that it complies with the requirements as laid down in the Regulations. If approved, the applicant is then required to make the necessary payment.
The implementation of the Regulations has undoubtedly come at a crucial time and is undeniably a much welcome initiative by business owners.
However, our humble view is it would be even better if the Government could implement more subsidy, or temporary reduction in official fees on new trademark, patent and industrial design application. This will in turn assist business owners in having better access to the intellectual property protection.
Further, we suggest that the coverage of beneficiaries should be expanded beyond the initial scope listed in the said Regulations. There are a big group of SMEs, even though they are not as severely affected, their ability to protect their intellectual property rights have been greatly handicapped due to the decrease of revenue and cash flow in recent times.
If the above suggested policies are implemented, this would undoubtedly further enhance the Government’s commitment in upholding and endorsing the Intellectual Property rights among individuals, SMEs and body corporate in Malaysia. In light of the unprecedented times ahead, we hope that further initiative can be introduced to protect the Intellectual Property rights of stakeholders in Malaysia.
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Bachelor of Laws, LL.B (Hons)
Master of Laws, LL.M
Barister-at-Law (Middle Temple)
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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