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NEW TRADEMARK ACT 2019

Malaysia has enacted the TRADEMARK ACT 2019 (ACT 815) recently. The new Act has completely repealed the old Act 1976.

The Malaysian Intellectual Property Corporation (MyIPO) has announced the enforcement of the new Act on 27 December 2019.
With effect from 1st January, 2020 there are several changes to take note of under the new Act and Regulation:

1) The revision of the new application and matters of proceeding official fees.

2) Accession to the Madrid Protocol. Malaysia joined the Madrid Protocol effectively on the 27 December 2019. The Madrid system covering the International Registration of Trade Marks and the Madrid has a total of 122 contracting member countries. The new Act allows the possibility of an International Registration of Marks via the MyIPO through the Trade Marks Agent.

3) Expansion of non-conventional Trade Marks registration. The new Act allows the registration of non-traditional marks such as sound, scent, holograms, positioning, shape and packaging, motion and colour.

4) Multi-classes application. i.e., merger application/registration. A single trade mark registration can be divided into two or more applications or merged into one application or registration.

5) Series Marks. A maximum six (6) series of trade mark only allowed for a single application.

6) Response to the Registrar’s objections to the registration of trade mark. The new Act states that every applicant has one chance to respond to the queries/objections by way of submitting a written submission or requesting for an ex-parte hearing with the Registrar. If the written submission or hearing for the registration of trade mark fail and upon receiving a final refusal notice from the Registrar, the applicant will take resort to appeal to the High Court.

7) Heavier Penalty for Criminal offences. Under the new Act, counterfeit a registered trade mark bring about both criminal and civil proceedings. The new Act also place heavy responsibility on the importers, wholesalers, retailers and consumers to be cautious about selling their products. It is highly important for the trader to register their trade mark before allowing them to display the goods/services on sale at hyper marts, retail chains, online shops platform.
Criminal offences such as the anti-counterfeiting laws, offences relating to false use of a registered trade mark and many others may result a severe penalty.

8) Counterfeit a trade mark. Making a sign identical or similar to a registered trade mark with the intention to deceive or falsifying a genuine registered trade mark by alteration, addition, effacement, etc. Under S.99 of the new Act 2019, any person counterfeiting a registered trademark will be liable for an offence and on conviction, be liable to a fine not exceeding RM1 million or to imprisonment for a term not exceeding 5 years or both.

9) Falsely applying a registered trade mark. Applying the registered trade mark or a sign likely to be mistaken for that trade mark. In relation to goods, the goods are not genuine goods of the registered proprietor. Under S.100, for a body corporate fine RM15,000 and for a person fine RM10,000 for each of the goods bearing the falsely applied registered trade mark or to imprisonment for a term not exceeding 5 years. In relation to services, for a body corporate fine RM100,000 and for a person fine RM70,000 for services bearing the falsely applied registered trade mark or to imprisonment for a term not exceeding 3 years.

10) If your trademark is still at pending stage (not registered), please do not display the word / letter “Registered” or “®”. Failing such, you will risk being fine not exceeding RM10,000 upon conviction. We always recommend to put the letters “™” until the trade mark has been registered.