31 October, 2019
An update on the trademark regulations under the Trademarks Bill 2019
The Malaysian Government on 27 September 2019 deposited its instrument of accession to the Madrid Protocol, which will enter into force on 27 December 2019. The accession will allow local businesses to protect their trademarks internationally in 121 countries around the world with foreign businesses also being able to seek protection of their trademarks in Malaysia through the Madrid international registration system.
The long-awaited Trademarks Bill 2019 (“new Bill”) has also been tabled and passed by the Parliament on 23 July 2019 and is expected to enter into force on the same date. This new trademark legislation will, amongst others, expressly recognise non-traditional trademarks such as shape, colour, sound and scent, the availability of multi-class applications, collective marks, provisions related to criminal enforcement procedures as well as the provisions related to the monetisation of trade marks as a form of security.
To implement the new Bill, the Intellectual Property Corporation of Malaysia (“MyIPO”) has also recently published a consultation paper on the proposed changes/new provisions to the trademark regulations under the new Bill for public feedback, which sets out, amongst others, the following:
The Malaysian Government on 27 September 2019 deposited its instrument of accession to the Madrid Protocol, which will enter into force on 27 December 2019. The accession will allow local businesses to protect their trademarks internationally in 121 countries around the world with foreign businesses also being able to seek protection of their trademarks in Malaysia through the Madrid international registration system.
The long-awaited Trademarks Bill 2019 (“new Bill”) has also been tabled and passed by the Parliament on 23 July 2019 and is expected to enter into force on the same date. This new trademark legislation will, amongst others, expressly recognise non-traditional trademarks such as shape, colour, sound and scent, the availability of multi-class applications, collective marks, provisions related to criminal enforcement procedures as well as the provisions related to the monetisation of trade marks as a form of security.
To implement the new Bill, the Intellectual Property Corporation of Malaysia (“MyIPO”) has also recently published a consultation paper on the proposed changes/new provisions to the trademark regulations under the new Bill for public feedback, which sets out, amongst others, the following:
- procedure and conditions relating to international registration under the Madrid Protocol;
- conditions for submitting all supporting documentation (including the translation and transliteration of trademark of non-roman character) at the outset of the application in order to secure the filing date;
- effect of deficiency in application, including postponement of the date of filing to the date when the deficiency is remedied;
- procedures for submission against the Registrar’s provisional refusal, which can be done by way of either a written representation or an oral hearing;
- timeframe and conditions for which an applicant is entitled to a refund of the fees paid in relation to a refused application (subsequent to a preliminary advice or search by the Registrar);
- requirement of filing affidavits of services with the Registrar in relation to opposition proceedings;
- procedure and conditions for merging of applications or registrations with the same mark, filing date, status, owner, address and are classified under Nice Classification;
- procedure and conditions for division of application or registration, based on classes or specific goods or services; and
- recognition of Court and Registrar’s power to determine if use on internet constitutes use of a sign or trade mark.
In terms of official fees, the proposed changes indicate a 60% increase in official fees to renew a trademark registration. The extent and reach of this new fee structure appear to cover trademarks already renewed, but with the actual expiry date falling due only after the coming into force of the new Bill on 27 December 2019. In such cases, a top-up fee of the difference from the current renewal fees may become payable.
Payment of official filing fees for the application process up to acceptance is now payable at the outset of the application, unlike the present Trade Marks Act 1976 where the official fee is payable in stages at the filing stage and subsequently upon acceptance.
Payment of official filing fees for the application process up to acceptance is now payable at the outset of the application, unlike the present Trade Marks Act 1976 where the official fee is payable in stages at the filing stage and subsequently upon acceptance.
For further information, please contact:
Ameet Kaur Purba, Partner, Shearn Delamore & Co
ameet@shearndelamore.com
