Click here to download the PDF version: Trademarks Bill 2019.
Dear Valued Clients and Business Partners,
We are pleased to highlight the following legal update from our Intellectual Property Practice Group.
In the midst of acceding to the Madrid Protocol, Malaysia has introduced the Trademarks Bill 2019 (“the Bill”) which, if passed by Parliament, will replace the Trade Marks Act 1976 (“TMA”). The Bill had its first reading on 9 April 2019 and is expected to be presented for second reading in the next Parliamentary session in July 2019.
The introduction of the Bill seeks to revamp the TMA in its entirety. This long overdue amendment to the trade mark laws will also help Malaysia become an attractive base for trade mark filings.
A brief comparison between some notable amendments that the Bill seeks to introduce and the previous provisions under the TMA are highlighted as follows:
| AMENDMENTS UNDER THE BILL | PREVIOUS PROVISIONS UNDER THE TMA |
| Recognition of non-conventional trade marks namely shape, colour, sound and scent marks. | Only provides for registration of conventional trade marks. |
| Protection of collective trade marks and certification trademarks. | Only provides for protection of certification trade marks. |
| Introduction of international trade mark registration procedure i.e. a single filing procedure for a trade mark across various other jurisdictions within the Madrid system. | Not available. |
| Provides for multi-class application. | Provides for single-class application. |
| Introduction of provisions in relation to monetisation of trade marks. | Not available. |
| Introduction of provisions in relation to criminal enforcement procedures. | Not available. Provisions in relation to criminal enforcement procedures are provided under the Trade Descriptions Act 2011. |
| Trade mark infringement action can be taken against infringers for goods/services that are RELATED to the goods/services claimed under a registered trade mark. | Trade mark infringement action can only be taken against infringers for goods/services that are IDENTICAL to the goods/services claimed under a registered trade mark. |
| Provides for remedies for groundless threats of infringement proceedings. | Not available. |
| Definition of “earlier trademark” to include a registered trademark or a protected international registration designating Malaysia or was a well-known trademark.
|
Absence of definition of “earlier trademark”. |
| No longer available. | Defensive Trade Marks. |
In light of the above-mentioned and with the introduction of the Bill, the Malaysian trade marks landscape will undergo a significant change. Nevertheless, there is still a long way towards the enforcement of the new trade mark legislation, particularly when the trademark regulations covering all the new procedures and systems as set out in the Bill have yet to be introduced. We will keep you updated on further developments upon the completion of the said regulations.
Should you require any further information on the impact of the Madrid system and/or the Bill in relation to the protection of your trade marks in Malaysia, please do not hesitate to contact us.
Thank you.
This Alert is issued for the information of the clients of the Firm and covers legal issues in a general way. The contents are not intended to constitute any advice on any specific matter and should not be relied upon as a substitute for detailed legal advice on specific matters or transactions.