New Malaysian Trademark Laws (Trademarks Act 2019)

What constitute a trademark

The word “mark” has been changed to “sign”. Sign now includes shape of goods, sound, scent, hologram, sequence of motion and etc. Hence, it is now possible to register the above sign as a trademark in addition to the traditional mark.

Multiple Class Application

Please note that there are a total of 45 Classes according to the international trademark classification. Pursuant to the new Trademarks Act 2019, you may now choose to file a multiple class application (one application contains more than one Class) if you would like to cover more than one Class in a single application.

Our cost for filing a multiple class application would cost relatively lesser than filing single class applications covering different classes. However, if one of the classes (in case of multiple class application) is objected, the whole application will be halted. In such an event, you may file a division of application so that other unaffected classes may proceed accordingly. The objected class may then be dealt with separately by filing an appeal.

International Trademark Registration System – Madrid Protocol

Pursuant to the new Trademarks Act 2019, Malaysia has finally become part of the international trademark registration ecosystem which covers more than 120 countries. Applicant can now designate the foreign countries which they would like to register in and only need to file a single application and pay one set of fees.

Through Madrid Protocol system, Applicants are able to save cost and time without going through and engaging the agents in each of the interested countries to register a trademark. The Malaysian Intellectual Property Office (MyIPO) will act as an intermediary in handling foreign trademark registration and forward the applications to the World Intellectual Property Office (WIPO). Once the formality requirements have been fulfilled, WIPO will then forward the applications to the respective countries for substantive examination and registration.

Wider Scope of Trademark Infringement

Under the repealed Trademarks Act, a registered trademark is infringed by a person who uses a mark which is identical with it or so nearly resembling it in the course of trade in relation to goods or services in respect of which the trademark is registered only.

Under the new Trademarks Act 2019, a registered trademark is infringed by a person who uses a sign which is identical or similar in the course of trade in relation to goods or services identical with or similar to those for which the trademark is registered.

In other words, in the event someone uses a trademark that is similar to yours in relation to similar or related goods or services, a trademark infringement action can be taken against the purported infringer.

Trademark as a property

A registered trademark shall be a personal or moveable property and may be the subject of a security interest (e.g. charge) in the same way as other personal or moveable property.

Intellectual Property Financing Scheme (IPFS) is a government initiative introduced to enable companies with IP rights (IPRs) to use their IPRs as an additional source of collateral to obtain funding and spur more investments for companies with technology capabilities, in turn encouraging innovation. The scheme will also help alleviate the difficulties that several technology-focused companies face when attempting to seek funding from financial institutions.