Highlights Of The Amendments To Malaysia's Trademarks Act

Author:Mr Catherine Lee

Malaysia's Trademarks Act 2019 (New Act) recently came into force on 27 December 2019. This is a significant milestone as the New Act introduces several substantial and long-awaited changes to the trade mark legislation in Malaysia and aligns Malaysia's trademark system with current international standards.

The following are 10 key highlights of the New Act:

Madrid Protocol - Concurrent with the introduction of the New Act, Malaysia acceded to the Madrid Protocol. Applicants in Malaysia can thus now file international applications, and Applicants outside Malaysia can now designate Malaysia in an international application. Save for Myanmar, all of the ASEAN countries are now members of the Madrid Protocol. Application for non-traditional marks and collective marks - Non-conventional marks (such as shape marks, packaging marks, colour marks, sound marks, scent marks, hologram marks, positioning marks and motion marks) and collective marks are now registrable in Malaysia. Multi-class applications are available - While the old system only permitted single-class applications, the New Act introduces multi-class applications to facilitate the process of protecting a mark across several classes of goods and/or services. Provision has also been made for the division and merging of applications and registrations. Formalities - The New Act expressly provides that in the event that formalities are not complied with, the filing date will be deferred to such date that the non-compliance has been remedied. It is thus important for all information to be included at the time of filing, including the translation and transliteration of any mark in a foreign language. For collective mark and certification mark applications, the rules must also be filed within two months to avoid a later filing date being issued. Preliminary advice and search - The Registry has introduced an option for applicants to apply to the Registry for preliminary advice and search, prior to submitting a trade mark application. If an Applicant files a trade mark application using the same details after obtaining a clear report, he may obtain a refund of the filing fees if a notification of provisional refusal is subsequently issued. Acts amounting to infringement - The old law provided that trademark infringement only occurs if an identical or similar mark is used on goods and/or services which are identical to that covered by the earlier mark. The New Act now allows for trademark...

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