An Update On Malaysia’s Trade Mark Law.

The new Trademarks Act 2019 (“new Act”) and Trademarks Regulations 2019 (“Regulations”) came into force on 27 December 2019, leading to the implementation of long awaited changes to the trade mark law in Malaysia. The more notable changes under the new Act are:

 

1) Implementation of the international filing procedure under the Madrid Protocol;

2) Recognition of non-conventional trademarks such as sound, smell and 3D shape marks;

3) Introduction of the filing of multi-class trade mark applications;

4) Recognition that a registered trade mark may be the subject of a security interest in the same way as any other personal or moveable property;

5) Remedy for groundless threats of infringement proceedings.

 

A copy of the new Act and the revised official fees for trade mark matters under the new Regulations can be found from the links below:

 

http://www.myipo.gov.my/wp-content/uploads/2019/12/ACT-815- TRADEMARKS-ACT-201.pdf

 

http://www.myipo.gov.my/wp-content/uploads/2020/01/Peraturan-Cap- Dagangan-2019.pdf

 

The Intellectual Property Corporation of Malaysia (“MyIPO”) has issued the Guidelines of Trademarks (Transitional Matters) 2019 (as updated on 6 January 2020), to facilitate the transition of trade mark applications filed under the previous Trade Marks Act 1976 to the new Act.

 

Amongst others, the Guidelines provides that:

 

1) The official fee for the renewal of a registered trade mark (RM1,000 for each class in case of timely renewal) under the Regulations is applicable to any renewal of existing registered trademarks under the Trade Marks Act 1976 that is due for payment on or after 27 December 2019. This is regardless of whether the renewal fees were paid before or after 27 December 2019.

 

The Guidelines further provide that the renewal fees or the difference of the renewal fees for any existing registered trademarks, which are due between 27 December 2019 to 27 March 2020, must be paid to MyIPO by 27 March 2020. If the renewal due date is after 27 March 2020, the registered proprietor may pay the difference of the renewal fees before the end of the renewal due date. (Paragraph 7 of the Guidelines.)

 

For example, if a trade mark is due for renewal on 28 March 2020 and the registered proprietor has made payment of RM550 (the official fees for e-filing of timely renewal under the Trade Marks Act 1976) before 27 December 2019, the registered proprietor shall pay the difference of RM450 by or on 28 March 2020.

 

2)  An application for registration of a trade mark under Section 25 of the Trade Marks Act 1976 which has yet to be examined by the Registrar by 27 December 2019 may be converted and examined in accordance with the new Act. The applicant may also file an application for conversion of a pending application together with the payment of the prescribed fees within two months from 27 December 2019.

 

However, it is noted that where the applicant gives notice of his intention to convert the pending application, the date of receipt of recorded by the Registrar for the application for registration of the trade mark will be determined in accordance with section 22 of the new Act. (Paragraph 4 of the Guidelines.)

 

3)  In the event that an application for registration of an assignment or a registered user is pending or has yet to be finally determined by the Registrar before 27 December 2019, the Registrar may examine the application in accordance with the new Act. (Paragraphs 5 and 6 of the Guidelines.)