On 27 December 2019, the Trademarks Act 2019 (“the Act”) officially came into force in Malaysia. The Act repealed the Trade Marks Act 1976 and is seen as opportune in enabling Malaysia to adhere not only to commercial demands and sophistication of the current era, but also to international standards and procedures. The Trademarks Regulations 2019 is also now in force having been gazetted in the Government Gazette on 27 December 2019.
Some of the pertinent changes introduced by the Act are highlighted as follows:-
Malaysia’s Accession to the Madrid Protocol
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 officially entered into force in Malaysia on 27 December 2019, the same day the Act came into force.
With its accession to the Protocol, international trademark registration is now available, which provides brand owners with an opportunity to protect their marks across 121 countries which are member states of the Madrid system by filing one application, in one language and paying one fee.
Registration of Non-Traditional Mark
Under the Act, apart from registration of word and logo mark, there are now “non-traditional marks”, that is, sound, colour, shape, scent, hologram, positioning, sequence of motion, shape of goods or their packaging or any combination thereof that are registrable if they are signs that are capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of other undertakings.
Multi-Class Application
Brand owners who wish to register its trademark in several Classes now have the option of applying for registration of the trademark by way of a single application covering all the Classes of interest. This promotes convenience and efficiency in portfolio administration and management as an applicant need only keep track of one trademark application/registration instead of multiple trademark applications/registrations with possibly different filing/registration dates.
Division and Merger of Application or Registration
A trademark application or registration covering multiple Classes may be divided into two or more separate applications or registrations and separate applications or registrations may be merged into one single application or registration.
Division may be useful where, for example, the Trademarks Office issues a refusal in respect of only some of the Classes of goods or services (if a multi-Class application is filed) covered by the application. The possibility to apply for a division of the application enables the accepted Class(es) to proceed to registration without being delayed by the refusal issued in respect of the other Class(es).
These new provisions relating to division and merger will promote efficient trademark portfolio administration and management as a result of the flexibility accorded by these provisions.
Date of Filing & Priority Date
The date of filing of application for registration is deemed to be the date of registration, irrespective of priority claim. A trademark registration’s 10-year validity period is calculated from the date of filing/registration and no longer the priority date (if priority is claimed). However, a priority date (if priority is claimed) will be the basis for determining the precedence of rights.
Late Filing of Documents
The date of receipt of an application for registration of trademark that complies with the prescribed form and formalities, and accompanied by the prescribed fee is recorded as the date of filing. However, if there is late filing of document(s) required to complete formality requirements, the date of filing will be delayed. The date of filing will take on the date when the Trademark Office receives the last of any documents required to complete formality requirements.
The moral of the story is to act fast to get an early filing date!
No Documents Required to Support New Trademark Application
There is no longer any requirement to file a Statutory Declaration of Ownership, or for the matter any Power of Attorney, to support the filing of a new trademark application. The filing of new trademark application has been made even more convenient under the Act.
One Shot at Clearance
An applicant will now only have one opportunity to submit its arguments to attempt to overcome the Registrar’s Provisional Refusal (substantive examination conducted premised on absolute and/or relative grounds). The applicant can either opt to submit a written submission in reply of the Registrar’s Provisional Refusal, or request for an ex-parte Hearing in the event a Provision Refusal is issued.
Two-in-One Fee
An applicant is required to make payment of the prescribed fees for both the application and advertisement to registration stages at the time of filing its trademark application. Staggered payment of official fees is a thing of the past.
Also, there will be no refund of the advertisement to registration stage fee if the trademark application fails to proceed to registration for any reason whatsoever.
Notification of Registration of Trademark
The Trademarks Office will only issue a notification of registration when a trademark is registered. A Certificate of Registration will be issued only upon an application made by a registered proprietor using the prescribed form and with payment of prescribed fees.
Stricter Law against Infringement Action
Infringement action can now be taken against any unauthorised third party for use of a sign that is identical with a registered mark in relation to goods or services that are similar (as opposed to identical under the previous Act) to those for which the mark is registered; or for use of a sign that is similar (as opposed to identical under the previous Act) to a registered mark in relation to goods or services identical with or similar to those for which the mark is registered.
Provisions on Registrable Transactions
The concept of “Registrable transactions” is introduced by the Act which include: (i) assignment of trademark; (ii) grant of trademark licence; (iii) grant of any security interest (whether fixed or floating) over a trademark; (iv) a court order transferring a trademark; and (v) making by a personal representative of an assent in relation to a trademark.
These registrable transactions are not enforceable against another conflicting interest unless they have been recorded with the Trademarks Office.
Lower Official Fees at the Application stage if Goods/Services are picked from “pre-approved list”
Where under the previous trademark laws there was a standard filing fee which was payable when a new trademark application is filed, under the Act, there are now two different official fees, the fee is dependent on whether the goods or services are found in the pre-approved list of goods and services.
As at the time of writing of this article, the “Guidelines of Trademarks 2019” list the “Pre-Approved List” as (1) “All goods and services specified in the 11th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks established pursuant to the Nice Agreement on 15 June 1957, which came into force on 1 January 2019” and (2) “All goods and services specified in the Madrid Goods and Services as updated on 29 October 2019”.
Whilst the Trademarks Act 2019 heralds a new beginning in the way trademarks are protected and can be protected, certainty in the procedure and formality requirement is what the stakeholders will still need to seek as the mechanism of the new legal regulations are still being clarified. There will be a period of refining and sharpening the edges of this new legal tool and getting to know how to use the tool better.
We will keep you apprised with further developments.
Should you have any questions, or would like to file a trademark, please do not hesitate to let us know.
Thank you.