Thursday, July 4, 2019

5 Things To Know About Trademarks Bill 2019

Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen. — Picture by Firdaus Latif

The Trademarks Bill 2019 was passed by Dewan Rakyat on 2 July 2019. It is intended to replace the current Trade Marks Act 1976. Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen said that expansion of trademark protection scope was necessary, according to Malay Mail/Bernama.

We present '5 Things To Know About Trademarks Bill 2019' after reading the bill.

1. Shape of goods, sound, scent, hologram, sequence of motion can be registered

The subject matter of trademark includes letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof. The scope of trademark matter is expanded to be in line with international practice of trademark matters.

The shape of goods must be distinctive in that it is not a result of the nature of the goods, for example Toblerone chocolate. Example of distinctive sound marks include 20th Century Fox fanfare.

2. Trademark applications identical as unregistered well-known mark are refused

The scope of well-known trademark has been expanded to any trademark that is well-known in Malaysia whether or not that person carries on business, or has any goodwill in Malaysia. It means that the Registrar can cite an unregistered mark to refuse an identical trademark application.

To increase the chances of trademark registration, a local search shall now be expanded to an international trademark search. We have more than 10-years of experience conducting international patent search. We can adapt patent search strategy into international trademark search to reduce chances of international citations.

3. Trademark applications similar as unregistered well-known mark for similar goods or services could be refused

The Registrar could cite an unregistered mark to refuse a similar trademark application for similar goods or services. We foresee that the threshold of refusal could be increased after the implementation of Trademarks Bill. We were informed by a source that the Bill could be implemented in January 2020. Trademark applications submitted in 2020 will then be examined according to the Bill.

4. A bundle of foreign trademarks can be filed based on local registered mark

Malaysians can file a bundle of foreign trademarks in a convenient and cost effective manner. Malaysia will join Madrid Protocol, an international treaty to allow applicants to file trademark in multiple countries in a single application.

We have more than 10-years of experience in international patent application. We can adapt patent application strategy into international trademark application strategy.

5. Trademarks are recognized as security asset

The recognition of trademark as security asset will enhance the value of trademark as an asset. Trademark could be used as a security for flexible financing options.

The full text of the Trademarks Bill.

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