Malaysia's Trademarks Bill 2019 ("the Bill") introduces important developments to align the country's trademark application system with international developments, and clarifies how trademark rights can be commercialised and enforced.
First read on 9 April 2019, it was passed with amendments by the Lower House on 2 July 2019, and the Upper House on 23 July 2019.
Many of the amendments under the Bill have been long anticipated. As the Act moves closer to coming into effect, we highlight the key amendments to consider.
i) International Applications
With Malaysia's accession to the Madrid Protocol on 27 December 2019, business owners can enjoy potential cost savings and the use of a centralised system when developing multi-jurisdictional protection strategies. Malaysian applicants will be able to file International Applications designating other member countries for trademark protection. Likewise, foreign applicants can designate Malaysia as a country for protection without filing directly with the local Registry.
ii) Multi-Class Applications
Under the current system, an applicant can only claim one class of goods or services for protection per application. The Bill introduces multi-class applications to facilitate the application process for multiple types of goods and services. This will also streamline the management of larger trademark portfolios.
iii) Applications for Non-Traditional Marks
The Bill expands the definition of "sign" to include what are commonly referred to as "non-traditional marks". These include sounds, colour and scents. In light of this wider scope of subject matter, businesses may wish to re-evaluate their approach to branding and explore seeking protection over any valuable non-traditional marks developed.
Financing and Fund-Raising
The Bill provides that a registered trademark may be the subject of a security interest or charge in the same way as other personal or moveable property. This promotes the use of registered trademarks to secure financing, and affirms that intellectual property assets contribute to corporate value.
i) Scope of Enforcement
Under the existing system, trademark infringement would only be established if an identical or confusingly similar trademark is used for the identical goods or services for which the earlier trademark is registered. The Bill expands a registered proprietor's scope of enforcement by providing that use of a similar sign in relation to goods or services similar to those registered for will amount to infringement if this results in a likelihood of confusion on the part of the public.
ii) Criminal Offences
Further, the Bill contains new provisions on criminal offences relating to unauthorised use of registered trademarks, including the false application of a registered trademark and false representation that a mark is a registered trademark. Offenders may be subject to fines and/or custodial sentences.
iii) Remedies for groundless threats
The Bill also sets out the remedies available in respect of groundless threats of infringement proceedings. An aggrieved person may apply for a declaration that the threats are unjustifiable, an injunction against the continuance of the threats, or damages.
Brand owners with an interest in the Malaysian market can look forward to increased flexibility and clarity in relation to the trademark protection framework and may wish to re-examine their protection strategies in this jurisdiction.
This update was prepared by Davies Collison Cave Asia with verification by Advanz Fidelis, both members of QANTM IP, and was first published on INTA Bulletin Vol. 74 No. 19 on 1 November 2019.
10th December 2019
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.