Malaysia is in the midst of acceding to the Madrid Protocol which now allows a trade mark owner to file an international trade mark application through the Intellectual Property Corporation of Malaysia (“MyIPO”), or to include Malaysia as a designation country in an international application filed elsewhere.
The accession to the Madrid Protocol was part of Malaysia’s obligation under the ASEAN Economic Community and commitment to the ASEAN Blueprint 2025. It is anticipated that amendments will be made to the current Trade Marks Act 1976 in the Trademark Bill 2019 to incorporate the changes. The first reading of the Bill was presented at Parliament on 9 April 2019 and is expected to be presented for second reading in the next Parliamentary session in July.
The proposed Act seeks to provide for the registration of other types of trademarks in relation to goods and services and to implement the relevant treaties and for other matters connected therewith.
Notable proposed amendments include:
- Recognition of non-traditional marks such as “colour, sound, smell, 3D or animation”
- Protection of Collective Marks
- Procedure for single filing of international trade mark
- Applications in multiple classes
- Revocation of registration by Registrar
- Registration conclusive after 5 years instead of 7 under the current Act
- Remedy for groundless threats of infringement proceedings
In preparing to adopt the Madrid System, MyIPO is in the midst of making significant improvements to its infrastructure to comply with the changes and incoming international filings. Due to the changes and upgrade, there has been an interruption in MyIPO’s Intellectual Property Management System which caused delay in processing trade mark applications and/or registrations since last December. An IP Online Task Force consisting of MyIPO, the Malaysian Intellectual Property Association and the Bar Council has been set up and these organisations are diligently working together to resolve these issues.