Malaysia's New Trademark Bill Ushers In Significant Changes

Author:Ms Esther Seow and Benita Lau
Profession:Davies Collison Cave
 
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Overview

Malaysia's Trademarks Bill 2019 ("the Bill") introduces important developments to align the country's trademark application system with international developments, and clarifies how trademark rights can be commercialised and enforced.

First read on 9 April 2019, it was passed with amendments by the Lower House on 2 July 2019, and the Upper House on 23 July 2019.

Many of the amendments under the Bill have been long anticipated. As the Act moves closer to coming into effect, we highlight the key amendments to consider.

Trademark Applications

i) International Applications

With Malaysia's accession to the Madrid Protocol on 27 December 2019, business owners can enjoy potential cost savings and the use of a centralised system when developing multi-jurisdictional protection strategies. Malaysian applicants will be able to file International Applications designating other member countries for trademark protection. Likewise, foreign applicants can designate Malaysia as a country for protection without filing directly with the local Registry.

ii) Multi-Class Applications

Under the current system, an applicant can only claim one class of goods or services for protection per application. The Bill introduces multi-class applications to facilitate the application process for multiple types of goods and services. This will also streamline the management of larger trademark portfolios.

iii) Applications for Non-Traditional Marks

The Bill expands the definition of "sign" to include what are commonly referred to as "non-traditional marks". These include sounds, colour and scents. In light of this wider scope of subject matter, businesses may wish to re-evaluate their approach to branding and explore seeking protection over any valuable non-traditional marks developed.

Financing and Fund-Raising

The Bill provides that a registered trademark may be the subject of a security interest or charge in the same way as other personal or moveable property. This promotes the use of registered trademarks to secure financing, and affirms that intellectual property assets contribute to corporate value.

Enforcement

i) Scope of Enforcement

Under the existing system, trademark infringement would only be established if an identical or confusingly...

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