The Malaysia Trade Marks (Amendment) Regulations came into force on 15 February 2011.
With the amendments, applicants can now opt for expedited examination under certain circumstances. A request for an expedited examination has to be made within four months from the date of filing of the trade mark application. The official fee for the request is RM250. If the application for expedited examination is accepted, payment of RM1200 has to be made within five working days, otherwise the Registrar will treat the application for expedited examination as having never been filed.
An application for expedited examination has to be supported by an affidavit or statutory declaration setting out the reasons for the request. Accepted reasons for an expedited examination include:
- the expedited examination is for national or public interest;
- there are infringement proceedings taking place or evidence showing potential infringement with regard to the trade mark applied for;
- registration of the trade mark is a condition for obtaining funding from the government or institutions recognized by the Registrar; or
- there are other reasonable grounds which support the request.
The estimated timeframe for a straightforward trade mark application under the expedited track to proceed to registration is about seven months if:
- the request for expedited examination is made within one month of application for registration; and
- the request for advertisement of application is made within one month of receipt of the Registrar’s Notice of Acceptance.
An application will be removed from the expedited track if the Registrar raises any objections during the examination. This is even if the official fees for expedited examination have been paid. It is therefore important for applicants to seek advice on the availability and registrability of the intended marks before making an application for expedited examination. Futher, marks proceeding under the expedited track are still subjected to a two month opposition period before they are registered.