30 July 2019
The Malaysian Parliament has passed the Trademarks Bill (“Bill”), the implementation of which will bring about evolutionary changes to the trademark laws in Malaysia. The Bill is more comprehensive than its predecessor, the Trade Marks Act 1976, and incorporates more than 20 sections from the Trade Descriptions Act 2011 (“TDA”).
Key features of the Bill include:
- Introduction of Malaysia’s obligations under the Madrid Protocol, which allows trademark owners to file international registrations via Malaysia;
- Introduction of new trademark filings, including multiple class filings and protection of collective marks;
- Broadening of the definition of trademark;
- Introdcution of an absolute ground for refusal of registration;
- Introduction of relative grounds for refusal of registration;
- Introduction of a lower threhold of infringement of trademarks;
- Rendering it more difficult to challenge the validity of a trademark registration;
- Segregation of rectification into two different proceedings: invalidation and (non-use) revocation;
- Codification of licensees‘ entitlement to certain statutory rights whether recorded or not; and
- Consolidation of provisions concerning criminal enforcement of trademark rights currently under the TDA.