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Jul 10, 2019
Lee Lin Li and Chong Kah Yee, Tay & Partners, Malaysia
First published at

Licensing and securitisation under the Trademarks Bill ...

Lee Lin Li and Chong Kah Yee, Tay & Partners, Malaysia, First published at www.lexology.comThe long awaited Trademarks Bill 2019 (“Bill”) which is modelled on the Trade Marks Act of the countries which have acceded to the Madrid Protocol introduces significant and substantial changes to the current Trade Marks Act 1976 including amendments to the law on assignment and licensing of trademarks. Essentially, it introduces a new concept of “registrable transaction”, replaces the current system of registered user with a licensing regime and recognises trademarks as personal and moveable property which may be the subject of a security interest.
The Bill introduces a new concept of “registrable transactions” which is defined as “transactions determined by the Registrar in the guidelines or practice directions”. It is noted that “registrable transactions” are not limited to transactions in relation to registered trademarks, but also cover dealings in relation to pending applications.
Although the Registrar has yet to issue any guidelines or practice directions as to what constitutes “registrable transactions”, it may be relevant to refer to the Singapore Trade Marks Act that provides a list of “registrable transactions” that include: (i) an assignment of a trademark or any right
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