Malaysia’s accession to Madrid Protocol had been in the talks for years until it finally became a reality on 27.12.2019 with the Trademarks Act 2019 coming into force.
By joining the Madrid Protocol, Malaysian individuals and corporations can now obtain international trademark registration across 121 countries by filing only one application.
Besides such a significant development, there are other changes introduced into the Act that repealed Trade Mark Act 1976. This article sought to give an overview of the differences between the 1976 and 2019 Acts.
Trade Mark Act 1976 | Key Differences | Trademarks Act 2019 |
Section 3 A registrable ‘mark’ covers only conventional marks such as a device, brand, heading, label, ticket, name, signature, word, letter, numeral. | Definition of trademark | Section 3 Registrable ‘sign’ is expanded to cover the shape of goods or their packaging, colour, sound, scent, hologram, positioning, or the sequence of motion. |
Section 17 Only one class allowed in one application | Number of classes of goods or services in one application | Section 18 Several classes allowed in one application |
N/A | Merger and division of applications | Section 37 and 38 The law allows the merger and division of trademark applications, providing flexibility to improve the management of trademark portfolios. |
Section 14 There are 7 grounds without distinction between absolute and relative grounds. | Grounds for refusal of registration | Section 23 and 24 There is a distinction between absolute and relative grounds. Absolute grounds involve the defects of the trademark itself (i.e., devoid of any distinctive character). Relative grounds are based on a comparison of the trademark applied with earlier trademarks (i.e., where the trademark is similar to an earlier trademark). |
Section 37 7 years from the date of registration | When will the registration be deemed conclusive in legal proceedings? | Section 53 5 years from the date of registration |
Section 46 (a) Trademark was registered without an intention in good faith to use it. (b) Non-use for a continuous period of at least 3 years from 1 month before the date of the application. | Revocation of registration by Court as to non-use of trademark | Section 46 (a) The trademark has not been put to use in good faith with no proper reasons for 3 years from the date of issuance of the notification of registration. (b) The trademark has become the common name in the trade for the product or service for which it is registered due to the inactivity of the registered proprietor. (c) The trademark is liable to mislead the public, including in respect of the nature, quality or geographical origin of those goods or services |
Section 38 A person commits trademark infringement when he uses a mark which is: (a) identical; or (b) nearly resembling (likely to deceive or cause confusion) to the registered trademark. | Trademark infringement | Section 54 (a) A person commits trademark infringement when he uses a ‘sign’ which is identical or similar to the registered trademark resulting in the likelihood of confusion on the part of the public. Uses of sign are defined in this section. For example, offering goods for sale under the sign, using the sign on commercial documents and using the sign in advertising. |
Section 40 Sets out defences to trademark infringement including: (i) Use in good faith; (ii) Earlier use before the trademark registration; or (iii) Use with express or implied consent of the registered proprietor or user. | Acts not constituting infringement | Section 55 Additional defences include: (i) usage in non-commercial purpose; or (ii) usage in news reporting or news commentary. |
N/A Remedies were derived from case law. | Remedies for trademark infringement | Section 56 Remedies are codified which include: (a) injunction;damages;account of profits; or (b) additional damages for counterfeit trademark. If a counterfeit trademark is used, when the plaintiff applies for an interim injunction, the court may order: (i) the seizure or taking into custody of suspected infringing goods; and (ii) the supply of documentary evidence relevant to the infringement. Section 58 The court may order the offending sign to be erased, removed or obliterated from any infringing goods. If it is not possible, the court may direct for the destruction of the goods. Section 59 The court may order any infringing goods to be delivered up to the plaintiff. Section 60 If the infringing goods are counterfeit goods, the court shall order their destruction if the plaintiff applies for it and no exceptional circumstances to justify any refusal. |
N/A | Remedy for groundless threats of infringement proceedings | Section 61 Recipient of groundless threats of infringement proceedings may apply for: (i) a declaration that the threats are unjustifiable; (ii) an injunction against the continuance of the threats; or (iii) damages for any loss suffered from the threats. An advocate and solicitor will not be liable to an action of groundless threats for an act in his professional capacity on behalf of a client. |
N/A | Trademark as property | Section 62 This Act recognises a registered trademark as a personal or moveable property that can be the subject of a security interest. |
N/A | Co-proprietorship of registered trademark | Section 63 This section defines the ownership and rights of co-proprietors subject to an agreement. |
N/A | Registrable transactions | Section 65 (a) A registrable transaction will be ineffective against a person acquiring a conflicting interest until it is registered. (b) A person who becomes a registered proprietor due to any registrable transaction will not get damages or an account of profits for trademark infringement, which occurs between the transaction date and application date. (c) ‘Registrable transactions’ are provided in Guidelines of Trademarks 2019. |
Trademark is an essential commodity in business, especially in companies that established goodwill. Since a registered trademark is now recognized officially as a property that can be the subject of a security interest, Business owners should consider registering their trademarks and use them as collateral when the need arises. Existing registered trademark proprietors can explore the international protection of their trademarks now that the application process can be done from Malaysia itself.
The overhaul of the legislation relating to trademarks in Malaysia had widened the net to catch intellectual property thieves. Coupled with the codification of additional remedies available to registered proprietors, Malaysia will be an attractive country for foreign trademark owners from Madrid Protocol signatories to consider registering their trademarks here.
As the Trademarks Act 2019 is still at its infancy, its new provisions have yet to be applied in court. It would be interesting to see developments in trademark disputes and the application of previous case law in light of the new Act.
- Copyright Infringement: The Case of Alustil Sdn Bhd v Vitally Sdn Bhd - April 9, 2021
- Disputes In A World Of Consumerism: Tribunal For Consumer Claims - February 9, 2021
- Small Claims: No Lawyers Needed! - December 22, 2020