On 2 July 2019, the Trademarks Bill 2019 was passed by the Dewan Rakyat (House of Representatives) and by the Dewan Negara (Senate) on 23 July 2019. The Trademarks Act 2019 (“new Act”) will come into force on a date to be appointed by the Minister of Domestic Trade and Consumer Affairs by notification in Gazette.

The Malaysian trade marks landscape is expected to undergo significant transformation once the archaic Trade Marks Act 1976 (“1976 Act”) is repealed. Some of the noteworthy changes are set out below.

1. Accession to the Madrid Protocol

Trade mark owners will now be allowed to seek protection of their trade mark in any member of the Madrid Union simultaneously by filing one application with a single office, in one language and by paying one fee. The Madrid Protocol simplifies registration and will benefit trade mark owners locally and abroad. At present, the Madrid Union has 104 members, which includes all ASEAN countries except Malaysia and Myanmar.

2. Recognition/Registration of Non-Traditional Trade Marks

The definition of “trademark” is expanded to include unconventional marks such as scent, sound, shape of goods, motion marks and colour, which can be graphically represented.

3. Introduction of Multi-Class Applications

Application in multiple classes can be made in a single application in contrast with the process under the former regime which only provides for a single-class application.

4. Filing Date

Regardless of any priority claim, the date of filing of an application shall be the actual day when all forms and payment are made to the Registrar along with the transliteration, translation or any information required by the Registrar (if the mark consists of non-Roman characters). Claims for date of priority shall have no effect on the filing date except for conducting earlier trademarks searches in the course of examination.

5. Protection of Collective Marks

In addition to the certification marks which are still registrable under the new Act, there is now an introduction of registration of collective marks.

6. Recognition of Trade Mark As A Form of Security Interest

A registered trade mark is recognised as a personal or movable property which may be the subject of a security interest in the same way as other personal or movable property. In other words, a registered trade mark may be the subject of a charge in the same manner as other personal or movable property.

7. Introduction of criminal enforcement or penalties

The provisions in relation to criminal enforcement or penalties against infringement and counterfeiters are consolidated within the new Act as opposed to the current position where such provisions are provided separately under the Trade Descriptions Act 2011. Any person who uses a registered trade mark without the consent of the registered proprietor shall be liable to imprisonment and/or fine not exceeding RM 1 million.

8. Groundless threats of infringement proceedings

A claimant may claim for a declaration that the threats of infringement are unjustified, an injunction against the continuance of the threats and damages for any loss suffered as a result of the threats.

Infringement of Trade Marks

Unlike the 1976 Act, infringement of trade marks under the new Act occurs even if the goods/services of the infringers are not identical but similar to those goods/ services registered.

10. Conclusiveness of registration

Registration of a trademark becomes conclusive after a period of 5 years (instead of 7 years under the 1976 Act) in all legal proceedings.

Comments

The new Act will undoubtedly ease the expansion of business internationally by trade mark owners while making them less vulnerable to counterfeiters based overseas. The new Act has received positive response from the public as it is in line with the development of the global commerce market.

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