The Trademarks Act 2019 (Act 815) ( ‘TMA 2019’ ) has come into force on 27 December 2019. The TMA 2019 was initially tabled in Parliament in April 2019 and passed its second reading on 2 July 2019. The TMA 2019 is intended to revamp the TMA 1976 in its entirety and to pave way for the accession to Madrid Protocol.
Malaysia has deposited its instrument of accession to the Madrid Protocol on 27 September 2019 with the World Intellectual Organisation (WIPO) and has entered into force on 27 December 2019. In brief, the Madrid Protocol allows a trademark owner to get protection in countries which are member states under the Madrid system by filing one application with single fees.
The salient or notable changes in the TMA 2019 are as follows:-
|
Trademarks Act 2019 |
Trade Marks Act 1976 |
|
|---|---|---|
|
REGISTRABLE MARKS |
Non-traditional marks such as shape, smell, colour, sound and scent are registrable – ss. 2 & 3 of TMA 2019 |
Only conventional marks are registrable |
|
APPLICATION |
Multi class application are available – s. 18 TMA 2019 |
Single class application only |
|
ACCESSION TO MADRID PROTOCOL |
International trademark registration are available vide Madrid Protocol – s. 75 (2) TMA 2019. |
Not available |
|
REGISTRATION OF COLLECTIVE MARKS |
Collective marks are registrable – s. 72 TMA 2019 |
Not available |
|
DIVISION & MERGER |
Application for Division and merger allowed – s. 37 & 38 TMA 2019 |
Not available |
|
DATE OF REGISTRATION |
Date of filing of application is the date of registration, irrespective of priority claim – s. 36 (1) TMA 2019 Note: The priority date will be the basis of determining the precedence of rights |
The date of registration is the date of application registered – s. 30(1) TMA 1976 or if there is any claim for priority made the date of registration should be the date of claim priority made – s. 70 TMA 1976 |
|
CRIMINAL ENFORCEMENT |
Provide provision for criminal enforcement and penalties against counterfeits and infringement – ss. 111, 134, 137, 138 (2) TMA 2019 |
No criminal enforcement or penalties against counterfeits and infringement under TMA 1976 but stipulated under Trade Descriptions Act 2011. Note: The TDA 2011 will soon be amended in tandem with the TM Bill 2019 |
|
REGISTRATION CONCLUSIVE PERIOD |
5 years – s. 53 TMA 2019 |
7 years – s. 37 of TMA 1976 |
|
TRADEMARK INFRINGEMENT |
Expanded to allow an action for infringement for goods and services that are identical or similar in relation to the goods and service claimed under the registered mark - s. 54 of TMA 2019 |
Infringement action is allowed if the infringer uses the marks which is identical or so nearly resembling it in relation to goods and services claimed under the registered mark – s. 38 of TMA 1976 |
|
CERTIFICATE OF REGISTRATION |
Registrar will only issue the notification of the registration of trademark with the seal of Registrar – s. 36 (2) TMA 2019 Note: Registrar will only issue the Certificate of Registration upon application by the registered proprietor with prescribed fee – ss 36 (3) & (4) of TMA 2019. |
Registrar will issue the Certificate of Registration upon the registration of trade mark. – s. 30 (2) TMA 1976. |
The introduction of the TMA 2019 marks a significant change to the Malaysian trademark landscape. The changes made in the TMA 2019 is far reaching and affords greater protection for trademark owners.
For enquiries on matter relating to trademark, please contact En. Ainul Azam or Ms. Anis Fatin at 03-2171 1484 or email at mail@azamlaw.com.
