17 June 2021
On 28 May 2021, the Malaysian Prime Minister announced that Malaysia will enter a total nationwide lockdown for all social and economic sectors from 1-14 June.
Following the announcement, the Intellectual Property Corporation of Malaysia (“MyIPO”) issued its operating guidelines during the total lockdown1 , and made variations to its Practice Direction No. 2/20202 . The variations to the Practice Direction take effect from 1 June 2021 onwards.
There are several notable variations that were made to the Practice Direction, amongst which are:
1. It is now possible to file a notice of opposition or counterstatement with the Registrar.
The variation made to the Practice Direction allows an opponent to file a notice of opposition and its statement of grounds by way of an email.
The applicant for a trademark which is being opposed can also now file a counterstatement by way of an email.
Payment of the prescribed fee can be made through instant online transfer.
2. An applicant for a trademark registration, opponent, registered proprietor may file or serve a document to the Registrar by way of an email.
Following the variation made to the Practice Direction, an applicant for a trademark registration is now able to file or serve the Registrar documents which are not subject to any payment of the prescribed fee. Therefore, a reply to the Registrar’s objection letter and 4 a written representation to a provisional refusal can now be filed by email to nopaymentcd@myipo.gov.my.
Any opponent or applicant for a registration of a trademark may now file evidence in support of opposition or other documents under the opposition proceedings by way of an email to nonpaymentoppo@myipo.gov.my.
3. An applicant for the registration of a trademark or registered proprietor may now file or serve any application to Court on the Registrar by way of an email.
4. The following forms and their corresponding payment may now be filed according to the procedures set out in the Practice Direction No.2/2020:
| Forms | Matter |
| TM7 | Notice of Opposition |
| TM8 | Counterstatement to a notice of opposition |
| TM27A | Application for an extension of time (for opposition proceedings) |
| TMD1 | Notice of Opposition against the registration of a trade mark, collective mark or certification mark |
| TMD2 | Notice of Opposition against an amendment of an application for registration of a trademark which has been published where the amendment affects the representation of the trade mark or the restriction affects the goods or services covered by the application for registration |
| TMD3 | Notice of Opposition against an application to amend the regulations governing the use of a registered collective mark or certification mark |
| TMD4 | Notice of Opposition against the change of classification by Registrar |
| TMD5 | Notice of Opposition against the correction of protected international registration designating Malaysia |
| TMD6 | Filing of a Counterstatement |
| TMK1 | Request for an extension of time |
| TMK2 | Request for an extension of time for opposition proceeding |
Contact Us For Further Information Regarding Intellectual Property Law Matters.
For further information, please contact:
Karen Abraham, Partner, Shearn Delamore & Co
karen@shearndelamore.com
1www.myipo.gov.my/wp-content/uploads/2021/06/PELAKSANAANOPERASI-SEMASA-PKP-3.0.pdf.
2www.myipo.gov.my/wp-content/uploads/2021/06/Practice-Direction-2- 2020-VA2-2021FAIR.pdf.
