Accession To Madrid Protocol; New Trademark Laws

Author:Ms Alejandra Camacho Luna
Profession:Fross Zelnick Lehrman & Zissu, PC
 
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On September 27, 2019, Malaysia acceded to the Madrid Protocol as the 106th member of the Madrid System. Malaysia's accession follows from its obligations under the ASEAN Economic Community and commitment to the ASEAN Blueprint 2025. The Madrid Protocol will enter into force in Malaysia on December 27, 2019.

Concurrently, the Malaysian Trademark Act 1972 was extensively modified and will be replaced by the Malaysian Trademark Act 2019 (MTA). The MTA will also enter into force on December 27, 2019. In general, the MTA recognizes new types of trademarks, grants broader protection to trademark holders, and modernizes trademark proceedings with respect to formalities and deadlines. Salient amendments to the MTA are discussed below.

New Trademark Concepts and Regulations:

The MTA recognizes non-traditional marks such as three-dimensional marks, color, sound, scent, and holograms. Collective marks and multi-class applications are now available. Current trademark owners may divide and merge applications and registrations, including consolidating single-class registrations into multi-class ones, which will reduce future maintenance costs. The MTA includes new absolute and relative grounds of refusal. For example, registration may be refused on the ground that a mark is generic and/or commonly used. Subject to examiner's discretion, consent letters may be accepted to overcome blocking citations. The MTA recognizes that trademarks are personal property and, thus, may be the subject of a security interest. Broadened Protection for Trademark Holders:

Under the MTA, applicants have the right to make representations, amend the application, or provide additional evidence in response to a refusal. In the past, trademark holders had the right to receive a written refusal, but not a rectification right. Trademark owners may presently file infringement actions or assert a well-known mark against the use of an identical/similar mark for identical goods and services. The MTA allows trademark holders to take action against third parties that use an identical/similar mark for related goods and services. The MTA provides new infringement remedies, such as damages, accounting of profits, injunctions, and mandatory orders. The MTA consolidates...

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