Domestic Trade Affairs and Consumerism Minister Datuk Seri Saifuddin
Nasution said this was because the new act, which replaced the Trade
Marks Act 1976, provided recognition to non-traditional trademarks. -
NSTP/RAMDZAN MASIAM
The government is foreseeing an increase in trademark and intellectual property applications over the next few months.
This is on the heel of the new Trademarks Act 2019 coming to force next month and its subsequent enforcement.
Domestic
Trade Affairs and Consumerism Minister Datuk Seri Saifuddin Nasution
said this was because the new act, which replaced the Trade Marks Act
1976, provided recognition to non-traditional trademarks.
He
said with the new act, Malaysian entrepreneurs could now trademark
intangible materials such as shape of goods, packaging, sound, scent,
colour, holograms, positioning and sequence of motions that could be
graphically presented to distinguish goods and services from others.
“The new act will help businesses protect their trademark through a fast, efficient and effective registration system. This
new legislation also allows for multi-class applications and will
streamline the administrative paperwork needed for brands to protect
marks across different classes,” he said after the National Seminar on
Branding and The Madrid System for the International Registration of
Mark at the Royale Chulan Hotel, here, today.
The event was
attended by Intellectual Property Corporation of Malaysia (MyIPO)
chairman Dr Rozhan Othman and International Bureau of World Intellectual
Property Organisation (WIPO) Asean regional director Denis Croze.
Elaborating,
Saifuddin said between 2016 and 2018, there were 151,323 applications
for intellectual property registration, and of that number, 118,237 were
successfully registered.
He said during the same time
period, a total of 123,856 applications for trademark registration were
received of which 100,597 were successfully registered.
“In
2018 alone, there was a total of 52,998 applications for intellectual
property registration and 43,656 for trademark registration. With the new act, we can expect to see the number growing,” he said.
It
was reported that the Trademarks Act 2019 followed the recently-adopted
Madrid System or Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks (Madrid Protocol), adopted in
Madrid on June 27, 1989. Malaysia is the 106th member of the Madrid System. Other
Asean countries which have acceded to the protocol include Brunei,
Cambodia, Indonesia, Laos, the Philippines, Singapore, Thailand and
Vietnam.
The Madrid System enables them to protect their
brands in 122 countries, including the United States, Australia, the
United Kingdom and Brazil. Trademark owners will only need
to fill a single application with MyIPO to register their local brands
in countries participating in the protocol. The system is an international treaty administered by WIPO. The
system allows trademark owners to seek protection in several countries
simultaneously by filing one application with a single office, in one
language and by paying one fee. Malaysian entrepreneurs will be able to register their brands starting Dec 27.
Saifuddin also urged Malaysian entrepreneurs to register their companies or brands under the act as soon as possible. He
said businesses that does not protect their trademark by registering it
risked having imitators from within the country taking over the name
associated with their product.
“Malaysian companies need to
be more cognizant of this development and start having a long-term
brand strategy to protect and leverage on their trademark. This cannot happen if they do not file an application to protect their trademark with MyIPO,”he said.
It was reported that the new Trademarks Act 2019 also carries newer, more severe punishments for offenders. Those
found committing fraudulent or trademark infringements can be fined up
to RM1 million, jailed for a maximum of five years, or both. Previously,
the punishment for trademark infringements included a fine of RM5,000
for the first offence, with subsequent fines possibly increasing to
RM30,000 in addition to a three -year jail term, or both. - Balbin Kaur / NSTP