September 2, 2022 In International, Trademark

The New Malaysian Trademark Bill – 2019

2019 has brought in many changes in Malaysia. One among them is the replacement of the Trademarks Act 1976 (Act) with Trademarks Bill 2019 (Bill). The Trademarks Bill 2019 was passed on the 2nd of July 2019. Mentioned below are some notable changes under trademark law.

Registration of non-traditional trademarks

The updated Malaysian trademark registration bill 2019 now recognizes non-traditional trademarks such as scent, holograms, sound, color, the shape of products or their packaging and sequence of motion, provided:

a) it can differentiate goods or services from that of others; and

b) be graphically represented.

Over the years, there had been uncertainty over the registration of shape marks in Malaysia. The new update made through new Malaysian trademark bill 2019 is expected to align Malaysian trademark law with that of other countries across the globe.

Date Of Filing Trademark

The filing date of trademarks in Malaysia was initially recorded as the first date of applying. As per the updated Malaysian trademarks bill, if the document requirements of the trademark application are fulfilled on later days after submission of the application, last of those days will be considered as the filing date. It is therefore vital to make sure all the documents required are filed right at the time of filing the trademark so as not to delay the filing date.

Absolute and Relative Grounds Of Refusal

The substantive grounds of refusal are divided into two categories – Absolute Grounds of Refusal and Relative Grounds of Refusal. The absolute grounds are largely similar to the acts that lead to a prohibition on registration. Use of trademarks that can cause deceptions, confusion or any offensive matter can be the reason for absolute refusal of the trademark. For the shape marks appended in the Bill, there are few notable additions under the absolute ground of refusal as well. The new Malaysian trademark bill 2019 prohibits registration of shapes that:

a) results from the type of the products itself;

b) to obtain a technical result

c) gives any substantial value to the products

However, the relative grounds of refusal are similar to the existing law that is objections will be placed of the mark applied for is identical or similar to any existing marks.

Recognition of Collective Marks

The new trademarks bill extends recognition and rules concerning the collective marks for associations like societies, trade unions, and clubs.

Recognition of Trademark as Security Interest

Despite being intangible, the new trademark bill recognizes trademarks as security interest that which is movable or personal property. To be precise, trademarks are assignable as security and subject to charge. Consequently, the security interest of the trademark is expected to be registered or protect the chargee or assignee against a third party acquiring conflicting interests without knowing about the security interest.

Still, in doubt? Contact your nearest trademark registration experts for detailed information on trademark registration in Malaysia and the amendments that have been made in the trademarks bill.