The Trademarks Bill 2019 (Updated)

25 July 2019

1. Malaysia will be taking its first step in acceding to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June 1989 (Madrid Protocol). The Protocol is an international system allowing the simultaneous registration of trademarks in several jurisdictions with the filing of one single application in a single local office.

2. The definition of “trademark” is streamlined as follows:

• it must be a sign that is “capable of distinguishing goods or services of one undertaking from those of other undertakings”; and

• a requirement is introduced that the sign must be “capable of being represented graphically”. Non-traditional trademarks (e.g. colours, sounds, scents and holograms) will be recognised as signs capable of being registered as trademarks, provided they are capable of graphical representation.

3. Multi-class applications (i.e. one single trademark application listing goods or services of several classes) will be implemented.

4. New defence against invalidation on the basis of acquired distinctiveness, i.e. a trademark that, at the time of registration, was devoid of distinctive character, or consists exclusively of signs or indications which are descriptive of the goods or services or which are generic will not be invalidated if it is shown to have acquired distinctiveness after registration.¹

5. Acts amounting to trademark infringement under the Trade Marks Act 1976 are strictly limited to use of an infringing mark in relation to the goods or service in respect of which the plaintiff’s trademark is registered. Under the Bill, it is proposed that:

• the use of a mark in relation to similar goods or services would amount to trademark infringement;

• the approach to determining the likelihood of confusion established in past Malaysian case laws that the Registrar of Trademarks or Court may take into account all factors relevant in the circumstances are expressly codified in the Bill;

• the use of a trademark to indicate the intended purpose of goods, including accessories or spare parts or service, will not constitute infringement of a registered trademark, provided such use is in accordance with honest practices in industrial or commercial matters.

6. Licensors have the right to allow exclusive licensees extensive rights and remedies as if the licence is an assignment e.g. the exclusive licensee shall be entitled to bring infringement proceedings in his own name against any person other than the registered proprietor.

7. The scope of protection for well-known marks which are not registered in Malaysia will be expanded to cover use of an infringing mark in relation to similar goods or services, and use which would indicate a connection with, and is likely to damage the interests of, the proprietor of the well-known mark.

8. Proceedings may be instituted for groundless threats of trademark infringement, and aggrieved persons will be able to bring proceedings for, among others, an injunction against continued threats and damages for any loss sustained by the threats.

9. The Bill explicitly provides that a registered trademark shall be a personal or moveable property and may be the subject of a security interest in the same way as other personal or moveable property.

10. Various new criminal offences (e.g. counterfeiting a trademark, falsely applying a registered trademark to goods or services, importing or selling goods with falsely applied trademarks, false entries to the Trademarks Office or Register) will be introduced and the Sessions Court will have jurisdiction to try such offences.