Alyshea Low examines the new laws to expunge registrations from the Register.
The new Trademarks Act 2019 (“2019 Act”) came into operation on 27 December 2019. The long-awaited 2019 Act has been anticipated and is welcomed by stakeholders and practitioners alike. The provisions in the 2019 Act emulate certain provisions in other developed jurisdictions and will facilitate Malaysia’s accession to the Madrid Protocol as set out under the ASEAN Economic Community Blueprint 2025.
A general overview of the main takeaways from the 2019 Act was covered in Issue 2/2019 and the groundless threats provision introduced in the 2019 Act was explored in Issue 3/2019 of our Newsletter whilst the 2019 Act was in the form of a Parliamentary Bill.
The third part of this series will take a closer look at the provisions relating to the cancellation, revocation, and invalidation of registered trademarks under the 2019 Act.
1976 ACT: REVOKE TO RECTIFY
Under the now-repealed Trade Marks Act 1976 (“1976 Act”), revocation of a registered trademark is done by way of an application by an aggrieved person to the High Court under sections 45 and/or 46 of the 1976 Act.
Section 45 – Rectification
Pursuant to section 45(1)(a) of the 1976 Act, the Court may order the Register to be rectified by expunging an entry of a registered trademark on the basis that the trademark was registered “without sufficient cause
” or is an entry “wrongfully remaining
” in the Register. The grounds that may be relied upon by the aggrieved person include, among others, the contention that the trademark does not satisfy the registrability requirements under the 1976 Act; that the trademark proprietor is not the rightful proprietor of the registered trademark; that the trademark registration was obtained by fraud; and that the trademark is similar to another trademark and is likely to deceive or cause confusion to the public.
Section 46 – Non-use
A registered trademark may be removed from the Register pursuant to section 46 of the 1976 Act in respect of any of the goods and services in respect of which it is registered for non-use by the proprietor. This provision may be invoked if it is shown that:
(1) the trademark was registered without an intention in good faith to use it in relation to such goods and services and there has been no such use in good faith up to the date one month before the date of the application for expungement; or
(2) up to one month before the date of the application for expungement, there was no good faith use of the registered trademark for a continuous period of not less than three years.
2019 ACT: CANCELLATION, REVOCATION AND INVALIDATION
Summary of key changes
The 2019 Act provides more extensive provisions relating to the cancellation, revocation, and invalidation of registered trademarks. The key changes under the 2019 Act include additional powers for the Registrar to revoke a trademark registration, albeit limited in nature. Such powers were absent from the 1976 Act.
The grounds for revocation on non-use of a trademark have also been expanded to include revoking a trademark that has become common in the trade as a consequence of acts of inactivity of the registered proprietor, as well as circumstances where as a consequence of use of the registered trademark in relation to goods or services, the use is liable to mislead the public in respect of the nature, quality, or geographical origin of such goods or services.
This article will examine the provisions in the 2019 Act in relation to cancellation, revocation, and invalidation of registered trademarks.
Section 44 – Voluntary cancellation
This is a new introduction by the 2019 Act which provides that the Registrar shall cancel the registration of a trademark upon the request of the registered proprietor. However, such provision is subject to a safeguard which requires the Registrar to notify any person recorded as claiming a right in respect of, or an interest in, the trademark and any assignee of the trademark, before effecting the cancellation.
Section 44 in the 2019 Act is modelled on the provisions in section 45 of the UK Trade Marks Act 1994, and of other jurisdictions such as Singapore, Hong Kong, Australia and New Zealand.
Section 45 – Revocation by Registrar
Similar to section 44, section 45 is also a new introduction by the 2019 Act and confers additional powers on the Registrar, albeit limited, to revoke a registered trademark where:
(1) the Registrar had, in deciding to register the trademark, failed to take into account a notice of opposition filed by any person in accordance with subsection 35(1); or
(2) the Registrar had, in deciding to register the trademark, failed to take into account an application for extension of time for filing a notice of opposition made by any person before the registration.
Other additional powers conferred on the Registrar can be found in section 45(4), which provides that within twelve months from the date of registration of a trademark, the Registrar may revoke the registration of the trademark if he is satisfied that it is reasonable to revoke the registration, taking into account any relevant obligations of Malaysia under an international agreement or convention, or that there exist any special circumstances making it appropriate not to register the trademark or to subject a registration to disclaimers, conditions, amendments, modifications, or limitations.
In order to invoke section 45(1), the Registrar must be made aware of his failure within two months from the date of filing of the notice of opposition or date of application for extension of time to file a notice of opposition (section 45(2)). This suggests that in the event the Registrar is only made aware of his failure after the expiry of such two-month period, section 45(1) cannot be invoked. However, section 45(5) provides that in the event the Registrar is only made aware of his failure after the two-month period, the Registrar is still able to revoke the registered trademark under the provisions of section 45(4), if it is still within the twelve months from the date of registration.
Although from the outset it appears that the Registrar’s powers for revocation are limited, the use of the term “special circumstances” in section 45(4)(b) may have the effect of giving the Registrar powers to consider revocation requests on wider grounds.
Sections 45(6) and 45(7) provide certain safeguards in favour of the proprietor of the registered trademark and any other persons recorded in the Register as claiming to have a right or interest in the registered trademark in that they require the Registrar to give notice of the proposed revocation to such persons who must also be given opportunity to be heard before the registered trademark is revoked.
Upon revocation by the Registrar, section 45(8) provides that the trademark registration shall be deemed to have never occurred and shall be subject to further examination or proceedings as determined by the Registrar.
It is also interesting to note section 45(9), which provides that the Registrar has no duty to consider any requests for revocation. This suggests that it is entirely up to the Registrar’s discretion as to whether any requests for revocation under section 45 would be considered or rejected outright. It remains to be seen whether the refusal by the Registrar to consider a request for revocation can be successfully challenged in Court.
Section 46 – Revocation by Court as to Non-Use
The 2019 Act made changes to the non-use provisions that were available under the 1976 Act. Under the 2019 Act, an aggrieved person may apply to revoke a registered trademark if it can be shown that within a period of three years following the date of issuance of notification of registration, the trademark has not been used in good faith in Malaysia and there are no proper reasons for the non-use (section 46(1)(a)). An aggrieved person can also apply to revoke a registered trademark on the basis that the use of the registered trademark has been suspended for an uninterrupted period of three years and there are no proper reasons for such non-use (section 46(1)(b)).
The 2019 Act has also expanded the grounds for an application for revocation as to non-use of a registered trademark by an aggrieved person to include circumstances whereby the trademark has become a common name in the trade for the product or service for which it is registered in consequence of the registered trademark proprietor's inactivity or where the use of a trademark in relation to goods or services is liable to mislead the public as to the nature, quality or geographical origin of those goods or services.
It is important to note that the registered trademark will not be revoked on the ground of non-use under sub-sections 46(1)(a) and 46(1)(b) if the proprietor is able to show evidence of use after the period of three years, but before the date of the application for revocation. However, any such use will be disregarded unless the proprietor can show that preparations of such use began before the proprietor became aware that the application for expungement might be made.
An interesting feature of the 2019 Act is that section 46(4) permits a registered trademark to be revoked partially only in relation to certain goods or services for which the registered trademark is registered.
The revocation of a mark by the Court is deemed to take effect from the date of application to the Court unless the Court is satisfied that the grounds of revocation exists on an earlier date.
Section 47 – Invalidation by Court
Under the 2019 Act, a registered trademark may be invalidated by the Court on the basis that the registration should have been refused on absolute or relative grounds, or that the registration was obtained by fraud or misrepresentation.
Section 45 in the 1976 Act states that an aggrieved person may apply to rectify the Register on the grounds, among others, that an entry was made without sufficient cause or an entry wrongfully remains on the Register. The phrase “without sufficient cause
” is ambiguous, particularly as it was not defined in the 1976 Act or given any statutory explanation. Section 47 in the 2019 Act has omitted this phrase and instead specifies that a trademark registration may be invalidated if it was registered in breach of sections 23 or 24 (which respectively provide absolute and relative grounds for refusal of registration) or was registered by fraud or misrepresentation.
A trademark shall not be declared invalid if it has acquired a distinctive character after its registration as a result of its use in relation to the goods or services for which it is registered or if the proprietor of an earlier trademark or earlier right had given its consent to the registration.
Where the ground for invalidation exists only for only some goods or services for which the trademark is registered, the 2019 Act provides for partial invalidation as regards those goods or services.
Where the registration of a trademark is declared to be invalid, the registration shall to that extent be deemed never to have been made. However, section 47(8) provides that such invalidation shall not affect past and closed transactions.
Also notable is section 76 in the 2019 Act that forms part of the chapter relating to international matters, specifically the Madrid Protocol. Under section 76, a proprietor of a well-known trademark may apply to the Court for a declaration of invalidation of a registered trademark on the ground that the registered trademark is identical with or similar to a well-known trademark in Malaysia or on the ground of fraud in obtaining the registration.
The 2019 Act contains vast changes, additional powers, clearer timelines to be observed as well as new grounds to expunge the registration of a registered trademark. More importantly, the 2019 Act specifies the date the registered trademark is considered unenforceable, be it ab initio
or the date the application to expunge the registration is filed, which may affect commercial transactions relating to the expunged registration. It will be interesting to see how legal practitioners and the Court adopt and adapt to the 2019 Act.