News Archive (8)Oct 21, 2019 (Newsletter Issue 15/19)
Accession to Madrid Protocol
On September 27, 2019, the Government of Malaysia deposited its instrument of accession to the Madrid Protocol.
By this, local brand owners in Malaysia can begin using the Madrid System to protect their marks in the 121 territories of the System’s other 105 members by filing a single international application.
The deposit includes declarations under Articles 5(2)(b) and (c) of the Protocol (extension of the refusal period to 18 months and beyond for oppositions), Article 8(7)(a) of the Protocol (individual fees), and under Rules 7(2) (intent to use) and 20bis(6)(b) (recording of licenses in the International Register has no effect in Malaysia), of the Common Regulations.
The Protocol will enter into force for Malaysia on December 27, 2019.
Source: www.wipo.int
Sep 05, 2019 (Newsletter Issue 12/19)New Trademarks Act 2019 SoonThe long-awaited Bill of the new Trademarks Act 2019 was tabled in the Malaysian Parliament on April 11, 2019 and approved with some amendments by the Lower House (Dewan Rakyat) on July 2, 2019, and by the Upper House (Dewan Negara) on July 23, 2019.
Some of the key changes are the following:
- Accesssuib to the Madrid Protocol & multi-class applications
- Recognition of non-traditional trademarks
- Application date will be the filing date
- Examination on absolute and relative grounds
- Notification of Registration is issued
- Non-Use Revocation by Registrar
- Registration of Registered User Abolished
- Registration conclusive after 5 years instead of 7 under the current Act
- Remedy for groundless threats of infringement proceedings
- Conclusion & Transitional Provisions
It is expected that the new Act will come into effect by the last quarter of 2019. Procedural clarification will be given by the Trademark Regulations 2019 which have not been released.
For further information, please check the article of our contributor the law firm Henry Goh & Co. Sdn Bhd from Malaysia hereSource: www.henrygoh.com; www.spruson.com Sep 05, 2019 (Newsletter Issue 12/19)
Time to Response Extended
Pursuant to Notice 4/2019, the Registrar of the Malaysian Trademark Office informs that the deadline to make payment or to response to any office actions issued by the Registrar between October 1, 2018, until June 30, 2018, has been extended to September 30, 2019. This notice shall not be applicable to the opposition proceedings and renewal matters.
Source: www.myipo.gov.my
Apr 04, 2019 (Newsletter Issue 5/19)New Version of IP Online Search Tool LaunchedThe Intellectual Property Corporation of Malaysia (MyIPO) launched a new version of its IP Online system.
The "Advanced search" screen includes more than 30 different search fields. Compared to the previous version of IP Online, it includes a number of additional features, e.g. to narrow a search according to a specific legal status, a certain application type (national application, PCT application, utility model etc.) or even according to the date of the next payment of renewal fees. For dates, users can search with single days or date ranges. The search interface also includes a number of help functions for specific search fields, e.g. an integrated search tool for IPC or CPC classes or a function to search for a specific applicant. While IP Online is provided free of charge, registration is required to access some of the search functions.
The IP Online search tool can be accessed hereSource: www.epo.org Jul 31, 2012 (Newsletter Issue 12/12)
10th Edition of Nice Classification
The Malaysian Trademark Office has adopted the 10th Edition of Nice Classification as of January 1, 2012. Applications filed after December 31, 2011 are classified according to the 10th Edition.
Application filed before January 1, 2012 are classified according to the 9th Edition of Nice Classification. The Trademark Office also indicated that there will be NO re-classification of applications filed before January 1, 2012.
Source: Simonian IP, USA
Feb 21, 2012 (Newsletter Issue 3/12)
Industrial Design Regulation Updated
The Malaysian Intellectual Property Corporation (MyIPO) has introduced some changes to the Industrial Design Regulations, effective on February 15, 2012.
Changes are:
1) Electronic filing of design applications and other documents throughout the prosecution of a design application with MyIPO are allowed. A document which is electronically filed is deemed to be effected at the time the document is accepted by the electronic filing system.
2) Increase of official fees, ranging between 30-50% for all stages of the prosecution process.
3) One copy of the representation of the design is now needed for the filing process. Previously 6 copies were needed.
4) While previously a Power of Attorney (Form ID 10) was needed for each individual application, a Letter of Authority has been introduced now, which will allow the agent to sign the foirm ID 10 for a number of design applications. The Letter of Authority will be needed at the filing stage to secure the finling date and application number. If the original letter cannot be obtained in sufficient time, a copy of the letter will be accepted by MyIPO, with the condition that the original will soon follow.
Source: KASS International Sdn Bhd, Malaysia
Aug 01, 2011 (Newsletter Issue 10/11)
Notices on Extension of Time
The Intellectual Property Corporation of Malaysia issued Notices on Extension of Time for trademark matters effective from July 1st, 2011
The Notices apply across all applications/registrations which may require any form of extension of time, e.g. for filing responses to Office Actions or taking any proceedings under the Trademarks and Patents Acts and Regulations. A request for extension will be granted for a period of one (1) month up to a maximum of six (6) months from the initial deadline.
Any further requests for extension of time will not be entertained unless accompanied by a statement of case in the form of a Statutory Declaration with reasonable grounds for the Registrar’s consideration.
If the applicant is unable to respond within the granted extension of time, the applicant shall be deemed to have abandoned his application.
Source: KASS International Sdn Bhd, Malaysia
Feb 21, 2011 (Newsletter Issue 3/11)Trademark Regulations ChangedThe Intellectual Property Corporation of Malaysia (MyIPO) has announced some major amendments to the Trademark Regulations, introducing several new Regulations and amendments effective by February 15th, 2011.
Major amendments effects for example the
- Procedure and schedule of fees
- Introduction of electronic filing
- Expedited examination
For more information about the updated Trademark Regulations please click here
Source: www.myipo.gov.my and
KASS International Sdn Bhd, Malaysia Trademark protection in Malaysia is governed by the Trade Marks Act 2019, Trade Mark Regulations 2019 and Guidelines of Trade Marks 2019 which came into force on 27 December 2019.
The 2019 Act applies all new applications filed on or after 27 December 2019. Transitional provisions apply to existing applications and registrations filed under the Trade Marks Act 1976 and care must be exercised to ensure compliance with the relevant provisions. A notable point is that pending applications filed before the commencement of the Trade Marks Act 2019 will be examined under the repealed Trade Marks Act 1976. Apart from statute law, the principles of “common law” also apply.
Member of Madrid Protocol as of December 27, 2019.
Trade mark protection is obtained by registration. It can also be acquired by sufficient public recognition.
ClassificationNice classification, 12th edition
What is Registrable as a TrademarkIn general, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion of any combination thereof,is registrable as a trademark provided that the sign
- (a) is capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of other undertakings;
- (b) is not devoid of any distinctive character
- (c) does not consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purposes, value geographical origin, other characteristics of goods or services or the time of production of goods or of rendering of services or
- (d) does not consist exclusively of signs or indications which have become customary in the current language of the territory or in the bonafide and established practices of the trade.
- (e) if it a shape, does not consist exclusively of:
- i. the shape which results from the nature of the goods themselves;
- ii. the shape of goods which is necessary to obtain a technical result; or
- iii. the shape which gives substantial value to the goods.
The Malaysia Trade Marks Act 2019 also prohibits the registration of a sign which:
- (a) consist exclusively of the name of a country or contains/consists of recognized geographical indications;
- (b) is likely to deceive or cause confusion to the public or contrary to any written law;
- (c) is of such a nature as to deceive or mislead the public as to the nature, quality or geographical origin of the goods or services;
- (d) is contrary to public interest or morality;
- (e) contains or consists of any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;
- (f) contain a matter which in the opinion of the Registrar is or might be, prejudicial to the interest or security of the country;
- (g) contains or consists of the name or representation of another person whether living or dead, where consent from the person or representative of that person (if he/she is deceased) is not furnished;
- (h) contains or consists of a flag of a country, national emblem, emblem, insignia or royal arms unless the application furnishes the Registrar with the authorization of the competent authorities or international intergovernmental organization
- (i) contains or consists of a word which is commonly used as or is the accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, or which is declared by the World Health Organization as an international non-proprietary name (INN) which is deceptively similar unless it is used –
- a. denote only a brand or to make the element or compound as made by the proprietor of the trademark or the licensee as distinguished from the element or compound as made by others; and
- b. in association with a suitable name or description open to public use; or
- (j) contains or consists of any signs or similar signs to the word, "Patent", "Patented", "By Royal Letters Patent", "Registered", "Registered Design" and "Copyright" or words to the like effect in any language or
- (k) any sign as prescribed, including signs listed under regulation 4(1) of the Regulations.
The following trademark types are registrable: trademarks, collective marks and certification marks.
An application to register a trademark has to be filed with the Registrar of Trade Marks.
Multi-class applications are accepted.
Applicants who do not reside or carry on a business principally in Malaysia must appoint a local registered trademark agent.
A power of attorney is not needed.
Foreign applicants do not need a domestic company or business registration.
The application process is subject to a two-stage examination process. At the first stage, formal examination is conducted to ascertain that the necessary information and documents have been provided. Once there is compliance with the formalities, the application will proceed to the second stage for substantive examination which includes an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is about 12 months if there are no objections or oppositions.
The Registrar has discretion to decide whether to accept or refuse the application. If the application is accepted, the mark will proceed to publication in the national Gazette for 2 months for opposition purposes. If the application is objected by the Registrar, a provisional refusal will be issued, the applicant is given two months to respond by:
- (a) filing a written submission or by applying to the Registrar for a hearing;
- (b) amending the application for registration of the trademark to meet the conditions, amendments, modifications or limitation imposed or directed by the Registrar; or
- (c) furnishing additional or other information or evidence by way of a statutory declaration and/or orally.
The applicant may apply for an extension for a maximum of six months to respond to the provisional refusal.
A total provisional refusal will be issued if the applicant’s response in writing or at the hearing does not satisfy the Registrar that the requirements of registration have been fulfilled.
An appeal against the Registrar’s decision lies with the High Court.
National:The opposition period is 2 months from the publication date of the trademark application in the national Gazette. An interested party can apply for an extension of time for a maximum of two months.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Trademark DurationThe duration of a trademark is 10 years from the date of application and is renewable for periods of 10 years each.
Grace Period for Trademark RenewalPractical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official application fee for registration of a trademark is MYR 950 per class for applications claiming descriptions adopted from the pre-approved list and MYR 1,100 per class for applications claiming descriptions not adopted from the pre-approved list.
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Practical details on trademark licensing are available in our publication
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More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
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Sep 10, 2024
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