TRADEMARKS ACT 2019

Trademarks 1 LAWS OF MALAYSIA ONLINE VERSION OF UPDATED TEXT OF REPRINT Act 815 TRADEMARKS ACT 2019 As at 18 March 2022 This text is ONLY AN UPDATED TEXT of the Trademarks Act 2019 by the Attorney General’s Chambers. Unless and until reprinted pursuant to the powers of the Commissioner of Law Revision under subsection 14(1) of the Revision of Laws Act 1968 [Act 1], this text is NOT AN AUTHENTIC TEXT. 2 TRADEMARKS ACT 2019 Date of Royal Assent ... ... ... 22 November 2019 Date of publication in the Gazette ... 9 December 2019 English text to be authoritative … … P.U. (B) 654 of 2019 Latest amendment made by P.U. (A) 66/2022 which came into operation on … … … 18 March 2022 3 LAWS OF MALAYSIA Act 815 TRADEMARKS ACT 2019 ARRANGEMENT OF SECTIONS PART I PRELIMINARY Section 1. Short title and commencement 2. Interpretation 3. Definition of “trademark” 4. Definition of “well-known trademark” 5. Definition of “earlier trademark” 6. Definition of “infringing goods”, “infringing material”, “infringing articles”, “counterfeit goods” and “counterfeit trademarks” 7. References to use of trademark 8. Use of trademark for export trade or where form of trade changes 9. Determination of likelihood of confusion PART II ADMINISTRATION 10. Registrar, Deputy Registrars and Assistant Registrars 11. Protection of Registrar, Deputy Registrars, Assistant Registrars and other officers 12. Trademarks Office and other branch offices 13. Preliminary advice and search by Registrar PART III THE REGISTER OF TRADEMARKS 14. Register of Trademarks 15. Inspection of Register 4 Laws of Malaysia ACT 815 PART IV REGISTRATION OF TRADEMARKS Chapter 1 Introductory Section 16. Registered trademark Chapter 2 Application for registration of trademark 17. Application for registration of trademark 18. Application in multiple classes 19. Classification of goods or services 20. Colour of trademark 21. Series of trademarks 22. Date of filing Chapter 3 Grounds for refusal of registration 23. Absolute grounds for refusal of registration 24. Relative grounds for refusal of registration 25. Honest concurrent use, etc. Chapter 4 Priority 26. Claim to priority of Convention application 27. Claim to priority from other relevant overseas application 28. Claim to priority from temporary protection of trademark which is the subject matters of international exhibition given under Article 11 of Paris Convention Trademarks Chapter 5 Examination Section 29. Examination of application 30. Voluntary disclaimer, condition or limitation 31. Publication of acceptance Chapter 6 Withdrawal, restriction or amendment of application for registration of trademark 32. Withdrawal or restriction of application for registration of trademark 33. Amendment of application for registration of trademark Chapter 7 Opposition 34. Grounds of opposition 35. Opposition proceedings Chapter 8 Registration 36. Registration PART V DIVISION AND MERGER 37. Application for division 38. Application for merger PART VI DURATION AND RENEWAL OF REGISTERED TRADEMARKS 39. Duration and renewal of registration 40. Status of unrenewed trademark 41. Cessation of registration 5 6 Laws of Malaysia ACT 815 PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND INVALIDITY Section 42. Alteration of registered trademark 43. Correction of Register 44. Voluntary cancellation of registered trademark 45. Revocation of registration by Registrar 46. Revocation of registration by Court as to non-use of trademark 47. Invalidation of registration by Court PART VIII EFFECTS OF REGISTERED TRADEMARKS Chapter 1 Rights of registered proprietor of trademark 48. Rights conferred by registered trademark 49. Limitation on rights if similar trademarks, etc., registered by different persons 50. Trademark consisting of sign that becomes accepted as sign describing article, etc. 51. Trademark relating to article, etc., formerly manufactured under patent 52. Registration prima facie evidence 53. Registration conclusive Chapter 2 Infringement of trademarks 54. Acts amounting to infringement of registered trademark 55. Acts not amounting to infringement 56. Action for infringement 57. Circumstances in which action may not be instituted 58. Order for erasure, etc., of offending sign 59. Order for delivery up of infringing goods, material or articles 60. Order for disposal of infringing goods, material or articles 61. Remedy for groundless threats of infringement proceedings Trademarks PART IX TRADEMARKS AS OBJECT OF PROPERTY Section 62. Nature of registered trademark as property 63. Co-proprietorship of registered trademark 64. Assignment, etc., of registered trademark 65. Registration of transaction affecting registered trademark 66. Trust and equities 67. Application for registration trademark as an object of property PART X LICENSING 68. Interpretation 69. Licensing of registered trademark 70. Rights of licensees in case of infringement 71. Exclusive licensee having rights and remedies of assignee PART XI COLLECTIVE MARKS AND CERTIFICATION MARKS 72. Collective marks 73. Certification marks PART XII INTERNATIONAL MATTERS Chapter 1 Madrid Protocol 74. Interpretation 75. Regulations relating to Madrid Protocol 7 8 Laws of Malaysia ACT 815 Chapter 2 Conventions and international arrangements Section 76. Protection of well-known trademarks 77. Permitted use of well-known trademarks 78. National emblems, etc., of Convention countries under Article 6ter of Paris Convention 79. Emblems, etc., of certain international intergovernmental organization under Article 6ter of Paris Convention 80. Notification under Article 6ter of the Paris Convention PART XIII BORDER MEASURES 81. Interpretation 82. Restriction on importation of infringing goods 83. Security 84. Secure storage of seized goods 85. Notice 86. Inspection, release, etc., of seized goods 87. Forfeiture of seized goods by consent 88. Compulsory release of seized goods to importer 89. Compensation for failure to take action 90. Actions for infringement of registered trademark 91. Disposal of seized goods ordered to be forfeited 92. Insufficient security 93. Ex-officio action 94. De Minimis Imports PART XIV TRADEMARK AGENTS 95. Recognition of registered trademark agents and circumstances in which a registered trademark agent shall be required 96. Register of Trademark Agents 97. Registration of trademark agent 98. Privileged for communications with registered trademark agent Trademarks 9 PART XV OFFENCE Section 99. Counterfeiting a trademark 100. Falsely applying a registered trademark to goods or services 101. Making or possessing of article for committing offence 102. Importing or selling, etc., goods with falsely applied trademark 103. False entries to Trademarks Office or in Register 104. Falsely representing trademark as registered 105. Offence relating to disobedience to summons or refusal to give evidence 106. Falsely representing trademark as a protected international registration designating Malaysia 107. Misuse of title “Trademarks Office” 108. Unregistered persons practising, etc., as a registered trademark agent PART XVI INVESTIGATION AND ENFORCEMENT Chapter 1 Investigation and complaints 109. Interpretation 110. Power of Controller, Deputy Controllers or Assistant Controllers 111. Power of investigation 112. Complaints to the Assistant Controller Chapter 2 Information gathering powers 113. Power of the Assistant Controller to require provision of information 114. Assistant Controller may retain documents 115. Confidentiality 116. Privileged communication 117. Giving false or misleading information, evidence or document 118. Destruction, concealment, mutilation and alteration of records 10 Laws of Malaysia ACT 815 Chapter 3 Powers of arrest, search, seizure etc. Section 119. Power of arrest 120. Power to enter premises, inspect and seize goods, etc. 121. Magistrate may issue search warrant 122. Search may be made without warrant 123. Access to recorded information or computerized data, etc. 124. Tipping-off 125. Warrant admissible notwithstanding defects 126. List of seized goods, etc. 127. Forfeiture of seized goods, etc. 128. Release of seized goods, etc. 129. Seizure of perishable goods 130. No cost or damages arising from seizure to be recoverable 131. Obstruction 132. Evidence of agent provocateur is admissible 133. Taking of samples 134. Jurisdiction to try offences 135. Institution of prosecution 136. Compounding of offences 137. Principal liable for acts of servant or agent 138. Offences committed by body corporate 139. Protection of Controller, Deputy Controllers, Assistant Controllers or other persons PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE 140. Service of applications to Court on the Registrar 141. Registrar’s appearance in proceedings involving the Register 142. Costs of proceedings before Court 143. Certificate of validity 144. Evidentiary value of copies certified by the Registrar Trademarks 11 Section 145. Sealed copies of document to be evidence 146. Electronic information, etc., certified by the Registrar admissible in evidence 147. Minister may declare documents of foreign state pertaining to trademarks to be admissible as evidence PART XVIII MISCELLANEOUS AND GENERAL 148. Intellectual Property Official Journal 149. Electronic filing 150. Issuing document electronically 151. Address for service 152. Power of Registrar to allow amendments of documents 153. Power of Registrar to allow extension of time 154. Mode of giving evidence 155. Exercise of discretionary power 156. Power of the Registrar to treat documents as confidential 157. Adaptation of entries to new classification 158. Costs awarded by Registrar 159. Unregistered trademarks 160. Guidelines or practice directions by Registrar 161. Power to amend Schedules 162. Power to make regulations 163. Appeal from Registrar PART XIX REPEAL, SAVINGS AND TRANSITIONAL PROVISIONS Chapter 1 Repeal and savings 164. Repeal and savings 12 Laws of Malaysia Chapter 2 Transitional provisions for trademarks Section 165. Interpretation 166. Existing registered marks 167. Effects of registration in relation to infringement 168. Infringing goods, material or articles 169. Rights and remedies of licensee or authorized user 170. Co-proprietorship of registered mark 171. Assignment, etc., of registered mark 172. Licensing of registered mark 173. Pending applications for registration 174. Conversion of pending application 175. Trademarks registered according to old classification 176. Claim to priority of Convention application 177. Duration and renewal of registration 178. Pending application for alteration of registered mark 179. Revocation for non-use 180. Application for rectification, etc. 181. Rules as to use of certification mark 182. Agents 183. Guidelines, etc., on transitional matters F IRST SCHEDULE SECOND SCHEDULE ACT 815 LAWS OF MALAYSIA Act 815 TRADEMARKS ACT 2019 An Act to provide for the registration of trademarks in relation to goods and services and to implement the relevant treaties and for other matters connected therewith. [27 December 2019, P.U. (B) 655/2019] ENACTED by the Parliament of Malaysia as follows: PART I PRELIMINARY Short title and commencement 1. (1) This Act may be cited as the Trademarks Act 2019. (2) This Act comes into operation on a date to be appointed by the Minister by notification in the Gazette and the Minister may appoint different dates for the coming into operation of different Parts or provisions of this Act. Interpretation 2. In this Act, unless the context otherwise requires— “Assistant Registrar” and “Deputy Registrar” mean a person appointed under subsection 10(3) to be an Assistant R