Following the passing of the Trademarks Bill 2019 in the lower House of Parliament on 2 July 2019, Malaysia has completed the instrument of Madrid’s protocols in the WIPO headquarters on 27 September 2019. This much awaited and long overdue participation made Malaysia the 106th member of Madrid’s protocols and will be in effect in the country on 27th December 2019.
The participation of Madrid’s protocols will put Malaysia on a new frontier of trademark development, on international and national fronts. In addition to the accession to the Madrid’s protocols, some of the key highlights of the new Trademarks Bill 2019 which will replace the current Trade Marks Act 1976 are as follows:
- Recognition of non-traditional marks such as “colour, sound, smell, 3D or animation”
- Protection of Collective Marks
- Introduction of multi-class applications
- Division and Merger of trademark applications and registrations
- Registration conclusive after 5 years, instead of 7 under the current Act
- Revocation of registration by Registrar
- Expansion on the scope of trademark infringement
- Groundless threats of infringement proceedings
- Filing Date – The filing date of a trademark application will only be recorded upon fulfilling the formality requirements and where the requirements are fulfilled on different days, the last of those days
- The priority date would have no effect on the filing date save for purposes of examination of prior trademarks
- Recognition of trademark as a form of security interest
- Replacement of system of registered user with statutory recognition of licensing
Apart from substantive legal changes, there is also a number of procedural and regulatory changes introduced by the Bill.
Preparations are currently underway in order for the new Act to be in force and we are now expecting for the Trademarks Regulations, which will detail out guidelines on how the provisions of the Act will be applied. Get in touch with us if you have any question.