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Petaling jaya, Malaysia (MY)
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Kuala Lumpur, Malaysia (MY)
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Latest News: Okt 21, 2019 (Newsletter Issue 15/19)
Accession to Madrid Protocol
On September 27, 2019, the Government of Malaysia deposited its instrument of accession to the Madrid Protocol.

By this, local brand owners in Malaysia can begin using the Madrid System to protect their marks in the 121 territories of the System’s other 105 members by filing a single international application.

The deposit includes declarations under Articles 5(2)(b) and (c) of the Protocol (extension of the refusal period to 18 months and beyond for oppositions), Article 8(7)(a) of the Protocol (individual fees), and under Rules 7(2) (intent to use) and 20bis(6)(b) (recording of licenses in the International Register has no effect in Malaysia), of the Common Regulations.

The Protocol will enter into force for Malaysia on December 27, 2019.


Source: www.wipo.int

Sep 05, 2019 (Newsletter Issue 12/19)
New Trademarks Act 2019 Soon
The long-awaited Bill of the new Trademarks Act 2019 was tabled in the Malaysian Parliament on April 11, 2019 and approved with some amendments by the Lower House (Dewan Rakyat) on July 2, 2019, and by the Upper House (Dewan Negara) on July 23, 2019.

Some of the key changes are the following:
- Accesssuib to the Madrid Protocol & multi-class applications
- Recognition of non-traditional trademarks
- Application date will be the filing date
- Examination on absolute and relative grounds
- Notification of Registration is issued
- Non-Use Revocation by Registrar
- Registration of Registered User Abolished
- Registration conclusive after 5 years instead of 7 under the current Act
- Remedy for groundless threats of infringement proceedings
- Conclusion & Transitional Provisions

It is expected that the new Act will come into effect by the last quarter of 2019. Procedural clarification will be given by the Trademark Regulations 2019 which have not been released.

For further information, please check the article of our contributor the law firm Henry Goh & Co. Sdn Bhd from Malaysia here


Source: www.henrygoh.com; www.spruson.com

Sep 05, 2019 (Newsletter Issue 12/19)
Time to Response Extended
Pursuant to Notice 4/2019, the Registrar of the Malaysian Trademark Office informs that the deadline to make payment or to response to any office actions issued by the Registrar between October 1, 2018, until June 30, 2018, has been extended to September 30, 2019. This notice shall not be applicable to the opposition proceedings and renewal matters.

Source: www.myipo.gov.my

Apr 04, 2019 (Newsletter Issue 5/19)
New Version of IP Online Search Tool Launched
The Intellectual Property Corporation of Malaysia (MyIPO) launched a new version of its IP Online system.

The "Advanced search" screen includes more than 30 different search fields. Compared to the previous version of IP Online, it includes a number of additional features, e.g. to narrow a search according to a specific legal status, a certain application type (national application, PCT application, utility model etc.) or even according to the date of the next payment of renewal fees. For dates, users can search with single days or date ranges. The search interface also includes a number of help functions for specific search fields, e.g. an integrated search tool for IPC or CPC classes or a function to search for a specific applicant. While IP Online is provided free of charge, registration is required to access some of the search functions.

The IP Online search tool can be accessed here


Source: www.epo.org

Jul 31, 2012 (Newsletter Issue 12/12)
10th Edition of Nice Classification
The Malaysian Trademark Office has adopted the 10th Edition of Nice Classification as of January 1, 2012. Applications filed after December 31, 2011 are classified according to the 10th Edition.

Application filed before January 1, 2012 are classified according to the 9th Edition of Nice Classification. The Trademark Office also indicated that there will be NO re-classification of applications filed before January 1, 2012.

Source: Simonian IP, USA


Feb 21, 2012 (Newsletter Issue 3/12)
Industrial Design Regulation Updated
The Malaysian Intellectual Property Corporation (MyIPO) has introduced some changes to the Industrial Design Regulations, effective on February 15, 2012.

Changes are:
1) Electronic filing of design applications and other documents throughout the prosecution of a design application with MyIPO are allowed. A document which is electronically filed is deemed to be effected at the time the document is accepted by the electronic filing system.
2) Increase of official fees, ranging between 30-50% for all stages of the prosecution process.
3) One copy of the representation of the design is now needed for the filing process. Previously 6 copies were needed.
4) While previously a Power of Attorney (Form ID 10) was needed for each individual application, a Letter of Authority has been introduced now, which will allow the agent to sign the foirm ID 10 for a number of design applications. The Letter of Authority will be needed at the filing stage to secure the finling date and application number. If the original letter cannot be obtained in sufficient time, a copy of the letter will be accepted by MyIPO, with the condition that the original will soon follow.

Source: KASS International Sdn Bhd, Malaysia


Aug 01, 2011 (Newsletter Issue 10/11)
Notices on Extension of Time
The Intellectual Property Corporation of Malaysia issued Notices on Extension of Time for trademark matters effective from July 1st, 2011

The Notices apply across all applications/registrations which may require any form of extension of time, e.g. for filing responses to Office Actions or taking any proceedings under the Trademarks and Patents Acts and Regulations. A request for extension will be granted for a period of one (1) month up to a maximum of six (6) months from the initial deadline.
Any further requests for extension of time will not be entertained unless accompanied by a statement of case in the form of a Statutory Declaration with reasonable grounds for the Registrar’s consideration.
If the applicant is unable to respond within the granted extension of time, the applicant shall be deemed to have abandoned his application.

Source: KASS International Sdn Bhd, Malaysia


Feb 21, 2011 (Newsletter Issue 3/11)
Trademark Regulations Changed
The Intellectual Property Corporation of Malaysia (MyIPO) has announced some major amendments to the Trademark Regulations, introducing several new Regulations and amendments effective by February 15th, 2011.

Major amendments effects for example the
- Procedure and schedule of fees
- Introduction of electronic filing
- Expedited examination

For more information about the updated Trademark Regulations please click here

Source: www.myipo.gov.my and
KASS International Sdn Bhd, Malaysia


Trade mark protection in Malaysia is governed by the Trade Marks Act 1976 (which came into force on September 1, 1983, incorporating the latest amendments with effect from March 3, 2003) and Trade Marks Regulations 1997 (which came into force on December 1, 1997, incorporating the latest amendments with effect from February 15, 2011).
Apart from statute law, the principles of “common law” also apply.
Trade mark protection is obtained by registration. It can also be acquired by sufficient public recognition.

The new Trademarks Act 2019 has been preliminarily approved by the Parliament and is anticipated to come into effect in the last quarter of 2019.
Nice classification, 11th edition
A device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof is registrable as a trademark provided that it contains or consists of at least one of the following criteria:
1. the name of an individual, company or firm represented in a special or particular manner;
2. the signature of the applicant for registration or of some predecessor in his business;
3. an invented word or words;
4. a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or
5. any other distinctive mark.
Although non-traditional marks (like sound marks, olfactory marks, three-dimensional forms, colours) are not registrable in Malaysia, the Intellectual Property Corporation of Malaysia (MYIPO) has proposed amendments to the Trade Marks Act 1976 to include non-traditional trade marks.
The following trademark types are registrable: trademarks, service marks and certification marks.
An application to register a trademark has to be filed with the Registrar of Trade Marks.
A separate application has to be filed for each class.
Foreign applicants need a local agent. They can only apply for a trademark through a Malaysian agent.
Foreigners can only apply for a trademark through a Malaysian agent.
A power of attorney is not needed.
A Statutory Declaration declaring bona fide ownership of the mark, is needed.
Foreign applicants do not need a domestic registration.
The application process is subject to a two-stage examination process. At the first stage, formal examination is conducted to ascertain that the necessary information and documents have been provided. Once there is compliance with the formalities, the application will proceed to the second stage for substantive examination which includes an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is about 12 months, if there are no objections or oppositions.
The Registrar has discretion to decide whether to accept or refuse the application. If the application is accepted, the mark will proceed to publication in the Government Gazette for 2 months for opposition purposes. If the application is objected by the Registrar, the applicant is given two months to file a written submission. If the Registrar subsequently maintains his objection, the applicant may within 2 months of the maintained objection request for a hearing to present oral arguments.

National:
The opposition period is 2 months from the publication date of the application but an interested party can apply for extension(s) of time to possibly oppose.
The duration of a trademark is 10 years from the date of application and is renewable for periods of 10 years each.
Practical details on grace periods for trademark renewals are available in our publication here
Practical details on trademark use requirements are available in our publication here
The official application fee for registration of a trademark is MYR 370 per class for manual filing and MYR 330 per class for electronic filing. Once the mark is accepted and ready for publication in the Gazette, there is a fee payable for advertisement of the mark which is MYR 650 per class for manual filing and MYR 600 per class for electronic filing.

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Practical details on trademark licensing are available in our publication here.
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Jul 29, 2019
Adastra IP, Kuala Lumpur, Malaysia

Jul 17, 2019
Henry Goh & Co. Sdn. Bhd., Kuala Lumpur, Malaysia

Apr 25, 2017
Tay & Partners, Kuala Lumpur, Malaysia

Jul 04, 2013
Henry Goh & Co. Sdn. Bhd., Kuala Lumpur, Malaysia

Dez 15, 2011
Henry Goh & Co. Sdn. Bhd., Kuala Lumpur, Malaysia
KASS International Sdn. Bhd., Kuala Lumpur, Malaysia



Pintas Consulting Group Sdn Bhd

No.19, Jalan SS 1/36,
47300 Petaling jaya
Malaysia (MY)

KASS International Sdn. Bhd.

8-7-2 Menara Mutiara Bangsar, Jalan Liku, Off Jalan Riong, Bangsar
59100 Kuala Lumpur
Malaysia (MY)

The IP Co.

47500 Kuala Lumpur
Malaysia (MY)

Intellectual Property Corporation of Malaysia (Perbadanan Harta Intelek Malaysia)
Unit 1-7, Ground Floor
Menara UOA Bangsar
No. 5 Jalan Bangsar Utama 1
59000 Kuala Lumpur


Tel +603 22 99 84 00
Fax +603 22 99 89 89
Mail ipmalaysia@myipo.gov.my
www.myipo.gov.my