This article is intended to provide an overview of the Malaysian Trademarks Bill 2019 (“2019 Bill”). The 2019 Bill is to repeal the existing Trade Marks Act 1976 (“1976 Act”). The 2019 Bill is part of the process of Malaysia acceding to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). Malaysia and Myanmar are the remaining 2 ASEAN countries which are yet to accede to the Madrid Protocol (based on the information published herein).
The Madrid System is a one centralised system which allows an applicant to file a single application and pay one set of fees to apply for protection in up to 120 countries. It provides a convenient and cost effective solution in managing worldwide trademarks portfolio.
The 2019 Bill has undergone its first reading in Parliament sometime in April 2019, and is expected to be passed by 2019. [Update: The 2019 Bill has been passed in July 2019 and it has come into effective on 27 December 2019]
1. Protection of Non-Traditional Trademarks
With the broad definition of “sign” under Section 2 of the 2019 Bill, non-traditional trademarks such as shape of goods, colour, sound, scent etc. are registrable in Malaysia. In comparison, the Singapore Trade Marks Act (Chapter 332) is not extended to cover sound and scent.
2. Multiple Classes Application is Available
Multiple classes application is introduced by section 18 of the 2019 Bill. With a multiple-class system, brand owners only need to submit a single application for all the classes of interest. It is more convenient and easier for management. A multiple classes application will result in one registration.
3. Series of trademarks
Section 21(3) of the 2019 Bill expressly provided that a trademark which has been registered as part of a series trademark may be used independently.
4. Priority Claim
A priority claim is an allowance based the Paris Convention for the Protection of Industrial Property (one of the first intellectual property treaties). It allows an applicant of a trademark application to file subsequent application in any of the Convention country, claiming a priority of the original trade mark application within 6 months. The 2019 Bill made it clear that an applicant can only claim priority of the very first Convention application but not any of the earlier Convention application.
5. Division of Application is made possible
The 2019 Bill allows an applicant to file a request to divide an application into two or more separate applications for the registration of trademark. Such approach may be used when the application in one of the classes is facing objection or opposition.
6. Revocation of Registered Marks Based on Non-Use
Under the existing trademark law, registration of a trade mark in Malaysia can be cancelled on the ground of non-use by any aggrieved person if it has not been used by the proprietor or its registered user in respect of the registered goods for a continuous period of 3 years prior to one month before the date of the application for cancellation.
The continuous period of non-use remains as 3 years under the 2019 Bill. However, with the addition of the phrase “and there are no proper reasons for non-use” under section 46 of the 2019 Bill, it would appear that the Court may refuse to revoke the registered mark if the registered proprietor can establish that there are proper reasons for such non-use. What constitutes “proper reasons for non-use” is not provided for in the 2019 Bill, therefore, it is open for interpretation by our Malaysian Courts. As Singapore has a similar provision (section 22 of the Singapore Trade Marks Act), Singaporean Court decisions on its scope of “proper reasons for non-use” may be of persuasive value.
The grounds for revocation under the 2019 Bill are summarised as below –
(a) No use of the mark in good faith for the first 3 years following registration and there are no proper reasons for non-use
(b) No use of the mark in good faith for a continuous 3 period and there are no proper reasons for non-use
(c) The mark has become the common name in the trade for a product or service for which it is registered
(d) The mark is liable to mislead the public
7. Partial Cancellation
The 2019 Bill provides that where grounds for revocation exist in respect of only some of the goods or services for which the trademark is registered, revocation shall relate to those goods or services only. A similar provision is not found in the 1976 Act.
8. Conclusive Registration
Under the existing trademark law, the original registration of the trademark subject the several exceptions, shall be taken to be valid in all respects in all legal proceedings relating to a trade mark registered in the Register after 7 years from the date thereof. The 7 years period is shortened to 5 years in the 2019 Bill.
9. Infringement of Trademarks
Under section 38 of the Trade Marks Act 1976 (“1976 Act”), trademark infringement occurs when a third party –
(a) uses a mark which is identical or confusingly similar to the registered mark
(b) in the course of trade
(c) without the consent of the registered proprietor
(d) in relation to goods or services in respect of which the trademark is registered
Section 38 does not cover situation where the infringing mark is used in relation to goods or services that are similar to the registered goods or services.
The scope of trademark infringement is expanded by the 2019 Bill to use of an infringing mark in relation to similar goods or services and is not limited to identical goods or services only.
By virtue of section 54 of the 2019 Bill, a person infringes a registered trademark if,
(a) without the consent of the proprietor of the trademark,
(b) he uses in the course of trade, a sign –
(i) that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or
(ii) that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered
(c) resulting in the likelihood of confusion on the part of the public
The 2019 Bill has also detailed out what may fall within the definition of “use” –
“A person uses a sign if he—
(a) applies it to goods or their packaging;
(b) offers or exposes goods for sale under the sign;
(c) puts goods on the market under the sign;
(d) stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market;
(e) offers or supplies services under the sign;
(f) imports or exports goods under the sign;
(g) uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or
(h) uses the sign in advertising”
10. Groundless Threats
Provisions relating to groundless threats are provided for under the 2019 Bill. It is currently not found in any of the statutory provisions relating to intellectual property in Malaysia. It implies that before threatening a third party with infringement proceedings, one’s attention should be drawn to section 61 of the 2019 Bill.
Section 61 of 2019 Bill provides that –
“Where a person threatens another with proceedings for infringement of a registered trademark other than –
(a) the application of the trademark to goods or to material used or intended to be used for labelling or packaging goods
(b) the importation of goods to which or to the packaging of which, the trademark has been applied; or
(c) the supply of services under the trademark
any aggrieved person may bring proceedings for relief under this section”
Any aggrieved person will be entitled to the relief under the 2019 Bill unless the defendant is able to justify the threat by showing that the acts in respect of which infringement proceedings were threatened constitute or would constitute an infringement of its registered trademark and the registered trademark must not be invalid or liable to be revoked in a relevant respect.
11. Licensing of trademarks
Under the existing trademark law, a registered user (a licensee) is entitled to initiate infringement proceedings in his own name if the registered proprietor refuses or neglects to do so within 2 months after being so called upon and he shall make the registered proprietor as a defendant.
The changes brought by the 2019 Bill include –
(a) It is clearly provided under the 2019 Bill that for a licence to be effective, it must be in writing and signed by or on behalf of the grantor.
(b) A licensee is entitled to initiate infringement proceedings in his own name as if he were the registered proprietor if the registered proprietor refuses or does not take infringement proceedings within 2 months after being called upon by the licensee.
(c) The licensee however, may not, without leave of the Court, proceed with the action unless the registered proprietor is either joined as a plaintiff or added as a defendant.
(It is thus possible for the licensee to proceed with the action without the registered proprietor being joined as a party provided that permission is granted by Court)
(d) Specific provisions relating to an exclusive licence are provided for under the 2019 Bill and such provisions are not found in the 1976 Act. Under the 2019 Bill, an exclusive licensee may provide that the licensee shall have the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
Question: What happened to the existing pending or registered trademarks?
There are transitional provisions provided in the 2019 Bill. Generally, all pending applications before the commencement of the 2019 Bill shall be examined based on the purported repealed 1976 Act. Any existing registered marks kept in the Register under the purported repealed 1976 Act, shall be treated as registered trademarks under the 2019 Bill.
This article does not constitute legal advice.
