The Intellectual Property Corporation of Malaysia (MyIPO) has recently announced that the Malaysian Trademarks Act 1976 will be amended to bring the Act into substantive conformity with international practices. Our attorneys attended a brief discussion with MyIPO and representatives from various local organizations in relation to the amendments, which will be presented at the House of Representatives (“Dewan Rakyat”) in December 2010. The amendments are expected to come into force by end of year 2011. We present below the pertinent changes that will be incorporated into the Act:
Non-traditional Trademarks
Non-Traditional Marks will be accepted as trademarks under the amended Trademarks Act. This change will be beneficial to brand owners who have 3D marks, scent marks, sound marks, animated marks and other non-conventional marks as they can now secure trademark protection for such marks.
Multiple Class Applications
Multiple Class Applications will be introduced in the amended Act. For those not familiar with what a multi-class application entails, it is a single trademark application which allows the selection of more than one class of goods/services. Thus, instead of making several trademark applications (for one trademark under one class), the owner of the mark can now make a single application (for one mark in many classes). The trademark has to be identical for a multi-class application.
Whether there will be any cost benefit to applicants of a multi-class application has yet to be decided. Many parties who were present at the discussion (including ourselves) requested for a cost benefit in the multi-class applications as this would encourage applicants to utilise the option. MyIPO will be considering this request and may incorporate the benefit before the bill is tabled at the Parliament.
Madrid Protocol
Malaysia will accede to the Madrid Protocol and provisions in the amended Act will incorporate the International Registration system. This is in line with our country’s obligation to accelerate the establishment of an ASEAN Economic Community by the year 2015, as one of the actions to expedite the process includes accession into the Madrid Protocol. As known to many, the Madrid Protocol simplifies registration of a trademark in several countries and will be beneficial to trademark owners locally and abroad.
Expedited Examination
Similar to the changes proposed for the Patents Act, the amended Trademarks Act will incorporate provisions for “expedited application”. Each expedited examination will be treated on a case by case basis by the Registrar who will determine whether the expedition is necessary. The fast track application will have the trademark registered provisionally within 3 months. If a priority trademark application affects the trademark that was registered through the fast track, then the “provisionally” registered mark will undergo examination again.
Monetization and Securitization
Again, in line with the amendments proposed for the Patents Act, the amended Trademarks Act will allow trademark owners to mortgage their trademarks or use them to secure loans.
Reformed Examination Procedure
Although not much information was provided with respect to how the current examination procedure will be changed, MyIPO informed us that the Act will be amended to ensure that the trademark application process is a speedier one. The Acceptance Form issued to applicants will no longer be required and the stage of waiting for the mark to be published in the Government Gazette will be reduced. The possibility for online publication through MyIPO’s own IP Official Journal is being considered.
Authorised User
The terminology used in the current Act, “Registered User”, will be changed to “Authorised User”. The change in terminology will provide a clear position on whether an authorised user of the mark has to be registered before any use of the mark can be considered as “use by the proprietor”.
Border Measure
Changes to provisions on border measures will be introduced in the new Act and the changes will provide for simpler and more effective measures for trademark owners to enforce their rights. However, as improving our current border measure procedures will involve the Customs Authority, MyIPO will be in discussion with our Customs Authority to take this suggestion to the next level.
On the whole, the amendments proposed for both the Malaysian Patents and Trademarks Acts are encouraging as they are in favour of business owners and well-established international practices. The proposed amendments will be fine-tuned further and thereafter tabled at the House of Representatives. We will continue to attend further discussions (if any) and support amendments that have our clients’ interest at heart. Keep an eye out for our future report(s), once the amendments are finalised and in force.
- Spotting Seiko in Seiki? - May 17, 2016
- The Non-Use of PARLIAMENT in Malaysia - April 25, 2016
- [Business Today] The Recipe to Success… - October 20, 2015
