In Malaysia, the Trademarks Act 2019 ("the Act") has been enforced on 27th December 2019. With the passage, Malaysia will also accede to the Madrid Protocol on the same day.
The mentioned Act has brought many important alterations about procedure on trademark law. Some of those amendments are as follows:
- Multiple class applications are permitted;
- Registration of non-traditional trademarks such as shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof are granted in addition to traditional trademarks;
- The filing date of an application may not necessarily be the date on which the application was filed if formal requirements have not been sanctified. The filing date will be the date on which all formal requirements have been complied with;
- Applications for the registration of trademarks may be rejected on absolute and/or relative grounds;
- Filing of international applications are confessed under Madrid Protocol;
- The scope of infringement has been broadened and additional categories of remedies have been brought;
- Further offences for counterfeiting of goods and infringement have been introduced;
- A person who produces, imports, exports, distributes, sells, offers for sale, etc counterfeit goods may be responsible for imprisonment up to 5 years or a fine up to USD 235,000.00 (approximately) upon conviction;
- Applications for collective trademarks are permitted;
- Trademarks may be assigned or charged as security like other forms of personal or movable property; and
- Actions and remedies for groundless threats of infringement are available.
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.