[The Trade Marks Act 1976 (Act 175)] was enacted based on the United Kingdom Trademark Act 1938 but that country has abolished it and from studies, the ministry [The Ministry of Domestic Trade and Consumer Affairs] found Act 175 required thorough revision. The ever-changing global trademark protection landscape required Act 175 to be reviewed in line with the current needs of traders, the business community and parties with vested interest …” - Domestic Trade and Consumer Affairs Deputy Minister, Mr Chong Chieng Jen, when presenting the Trademarks Bill 2019 for the second reading on 2 July 2019. The Trademarks Bill 2019 (“the Bill”) passed its second reading in the lower house of the Parliament of Malaysia with amendments during the second reading, and was tabled and approved at the upper house of the Parliament on 23 July 2019. The Bill is now pending Royal assent. It seems more likely than not that the new Act will come into force within the next 1 to 2 months. The Bill was also drafted to cater and pave the way for Malaysia’s long-awaited accession to the Madrid Protocol.
Some of the pertinent amendments that are anticipated to be introduced by the new Trademarks Act and a comparison with the current Act are highlighted as follows:-
The revamping of the Trade Marks Act marks a notable change to the landscape of trademark filing and registration in Malaysia, whilst Malaysia’s impending accession to the Madrid Protocol will provide brand owners with an opportunity to protect and promote their marks across 121 countries around the world which are currently member states of the Madrid system by filing one application, in one language and paying one fee. With regards the Trademarks Regulations, the key points of the Regulations (which include the procedures and fees under the new trademark regime) have been made available for public consultation until early October 2019.
On 27 September 2019, Malaysia has deposited its instrument of accession to the Madrid Protocol with World Intellectual Property Organization (WIPO), making Malaysia the 106th country to join the Madrid Protocol. The Protocol will enter into force in Malaysia on 27 December 2019.
Should you have any questions or would like to know more about any of the provisions in the Bill, please do not hesitate to contact us. Thank you!