Commentaries on the Main Changes to the New Trademarks Act 2019
On 27 December 2019, the Trademarks Act 2019 (“the TA 2019”) has officially come into force in Malaysia, repealing the previous Trade Marks Act 1976 (“the TA 1976”). Trademarks Regulations 2019 is also now in force, repealing the previous Trade Mark Regulations 1997. Prior to the introduction of the TA 2019, on 27 September 2019, the Government of Malaysia deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General, making Malaysia the 106th member of the Madrid System.
The Protocol officially entered into force in Malaysia on 27 December 2019, the same day the TA 2019 came into force. The TA 2019 is a total revamp and overhaul of the trademark regime in Malaysia. Below are some of the notable main changes introduced by the TA 2019:
1. SCOPE OF REGISTRABLE TRADEMARKS
Registration of Non-Traditional Trademarks (Section 2)
The TA 2019 introduced the concept of a ‘sign’ to replace the previous definition of a ‘mark’ under the TA 1976 and the scope of registrable trademarks has been expanded to include shapes, colours, sounds, scents, holograms, positioning, and sequences of motions so long as it is capable of being represented graphically and distinguishing the goods or services of the applicant for registration. Such expansion expressly recognizes the registrability of non-traditional trademarks (which was not expressly recognized under the conventional interpretation of a ‘mark’ under the TA 1976). However, some challenges may be expected for the new scope of registrable trademarks, such as scent marks to be graphically represented.
Registration of Collective Marks
In addition to certification marks which are still registrable under the TA 2019, collective marks are now registrable under the TA 2019, which essentially allows an association to register its mark as a collective mark for the protection of members of the association.
Removal of Defensive Marks and Associated Trademarks
The concepts of defensive trademarks (essentially accorded to a well-known trademark via a defensive registration to cover goods and/or services with which the said proprietor has no connection) and associated trademarks (essentially to ensure that similar marks which are held by the same proprietor as associated marks can only be assigned together), previously provided under the TA 1976 have now been abolished under the TA 2019.
Any defensive trademarks registered under the TA 1976 (whilst maintaining its registrability under the TA 2019) would no longer be immune to cancellation actions on the grounds of non-use and any associated trademarks shall cease to have effect on the commencement of the TA 2019.
2. FILING OF TRADEMARK APPLICATION
Under the TA 2019, a single application may be made with respect to goods and/or services falling in several classes in contrast with the former regime under the TA 1976 which only provides for a single application. However, registration of trademark may be delayed if objections are raised and directed to goods and services in any one of the classes applied for.
Nevertheless, the TA 2019 also introduced divisions and mergers of applications, whereby in such instances (i.e. where objections are raised and directed to goods and services in any one of the classes applied for) the applicant may file for an application to divide the said trademark applications into two or more separate applications to enable the trademark application(s) (without any objections) to proceed with registration.
Pursuant to Malaysia’s accession to the Madrid Protocol, applicant may now obtain simultaneous registration of trademarks in several jurisdictions with the filing of one application under the TA 2019, in contrast to the need for the applicant to file for separate applications in each member country in which it seeks to protect its trademark under the former trademark regime. Generally, a basic application or registration is required before filing for international application via the Madrid system.
In light thereof, prior to filing of international application via the Madrid system, the applicant is advised to take all necessary steps (including conducting trademark searches) so as to be aware of the possibilities of a central attack (i.e. if there is an attack on the basic application), whereby in such instances, the designated countries (as designated by the applicant under the international application) would also be affected.
It is also noteworthy to highlight that the term ‘international registration’ of trademark via the Madrid system used under the TA 2019 does not connote that the trademark has been registered in its literal sense (i.e. globally). Rather, it only means that registration of trademark has been accorded to the designated countries as applied and approved by the relevant trademark office(s).
3. EXAMINATION OF TRADEMARK APPLICATIONS
Under the TA 2019, a trademark is registrable in the event it does not fall within any of the circumstances in which a trademark shall be refused for registration by the Registrar of Trademark based on absolute grounds (which is similar to inherent registrability under the TA 1976) and relative grounds (which is similar to citation of prior mark under the TA 1976). Based on the above, while the examination of trademark applications have not been altered significantly, the examination of trademark applications under the TA 2019 is more structured and clearer.
4. REVOCATION BY REGISTRAR
The TA 2019 confers additional powers on the Registrar to revoke a trademark registration where, in deciding to register the trademark, the Registrar failed to take into account a notice of opposition which has been duly filed or failed to take into account an application for extension of time to file the notice of opposition.
Furthermore, the Registrar may revoke a trademark registration within twelve months from the date of registration of trademark, if the Registrar is satisfied that it is reasonable to revoke the registration, taking into account any relevant obligations of Malaysia under an international agreement or convention or any special circumstances.
5. REVOCATION BY COURT FOR NON-USE
The grounds in respect of revocation of a trademark registration for non-use have been expanded under the TA 2019 to include where the trademark has become a common name in the trade for the product or service for which it is registered in consequence of the registered trademark proprietor’s inactivity or the use of trademark is liable to mislead the public as to the nature, quality or geographical origin of those goods or services.
In addition, any use of a trademark by the registered proprietor after the expiry of three year period but within the period of three months (as opposed to the one month period under TA 1976) before the making of the application for revocation lodged by an aggrieved person shall be disregarded unless preparations of such use began before the registered proprietor became aware that the application for revocation might be made.
6. GROUNDLESS THREATS OF INFRINGEMENT PROCEEDINGS
Interestingly, the TA 2019 introduced a new provision which allows an aggrieved person i.e. recipient of groundless threats of infringement proceedings, to institute an action in court. The aggrieved person may apply for a declaration that the threat is unjustifiable, an injunction against the continuance of the threats or damages in respect of any loss he has sustained by the threats. In such circumstances, the registered proprietor has the burden to prove that the threat of proceedings is not baseless. It must be noted however, that groundless threats provisions do not apply to a manufacturer or importer of goods or supplier of services.
7. COUNTERFEITING A TRADEMARK
Counterfeiting a registered trademark was previously covered under the Trade Descriptions Act 2011. The TA 2019 now recognizes counterfeiting a registered trademark (being the act of making a sign identical with or similar to a registered trademark with the intent to deceive or falsifying a genuine registered trademark, whether by alteration, addition, effacement, partial removal or otherwise, without the consent of the registered proprietor of the trademark) as a statutory offence.
The offences of ‘alteration, addition, effacement, partial removal’ are an extension of scope provided under the TA 2019 which was not previously provided under the TA 1976.
Under the TA 2019, the registered user system (which was previously recognized under TA 1976) is now abolished and replaced by licensing regime. Evidently, the concept of registered user is not recognized as a registrable transaction under the TA 2019.
Meanwhile, grant of licence under a registered trademark is recognized as a registrable transaction under the TA 2019. Nevertheless, entries as a registered user under the TA 1976 shall be transferred under the TA 2019 (i.e. having the same effect as a registrable transaction under the TA 2019). In addition, under the TA 2019, a licence would be effective only if it is in writing and is signed by or on behalf of the grantor.
The long awaited TA 2019 marked a new era of trademark protection in Malaysia and undoubtedly brought Malaysian trademark registration regime to be consistent and in line with international trademark protection landscape.
Khairul Fazli Abdul Kadir (Partner) email@example.com
Azarith Sofia Aziz (Senior Associate) firstname.lastname@example.org