With a new trademark bill passed by the Malaysian parliament, some new issues to be noted in applying for trademarks in Malaysia.
1. Malaysia accede to the Madrid Protocol
Malaysian government has been submitted the document regarding accede to “Madrid Protocol” to the General-Director of WIPO on 27th September 2019, it means that Malaysia is the 106th member of Madrid System, the Protocol has been entered into force for Malaysia on 27th December 2019.
That means that, from 27th December 2019, Chinese enterprises can submit international application through the Madrid System, and can extend the protection on trademarks to Malaysia.
2. Increase of Registerable Types
As we know that the intellectual property rights are the ownership of the intellectual fruits of human intellectual labor, it protects special technical inventions, designing, trademarks which can distinguish enterprises’ most unique intellectual property from others.
Trademarks, for a very long time, has been considered as a kind of visual display, it mainly serves to distinguish the source of goods/services, thus, words, designs and special slogan are common expressions for trademarks, for example, “Starbucks” is associated with coffee, “ADIDAS” is associated with sport shoes. However, more and more enterprises begun to create expressions that could distinguish themselves from others, i.e. sound and smell, these expressions, are different from the traditional expressions, have been granted protection by many countries’ trademark law, such as, the sound trademark has been approved for the registration according to Chinese new trademark law.
At present, Malaysian new trademark law also allows protection on such kind of new types of trademarks. As a result, if the enterprise has logo i.e. special sound, colour or odour to be prepared to use or under usage, it is the time start preparing for the protection on the registration.
3. Acceptance of the Application of One Trademark under many Classes
Goods/Services usually can be categorized under 34 classes for goods and 11 classes for services in many countries’ classification system, each and every class includes specific goods/service items. However, very few enterprises need to apply for only one goods/service under one of 45 categories, i.e. garment enterprises, besides for the registration of trademark under class 25, also may involve in relevant jewelry, leather bags, or exhibitions of service class, advertising, even the transportation, protection of registration under several classes will inevitably increase the cost of registration protection, however, one application for registration under several classes would undoubtedly reduce the cost, because most countries will have discount of official fee from the second class. Unfortunately, China has no such kind of discount for one application for trademark under several classes, however, we believe that this discount will be conducted in Malaysia.
4. Trademark can be mortgaged as the property
According to the new trademark act, the registered trademark can serve as the collateral to obtain financing from financial institution. For many years, the using trademarks and ones with some reputation and goodwill are likely to benefit from it, even though financial institutions may not yet be ready to fund such collateral, because trademarks have been identified as movable property by the law.
5. Extension of Protection
The new trademark law expands the protective scope of the owner of the trademark. Previously, trademark infringement could be posed using the same trademark on the identical goods or services. In the future, trademark owners could bring infringement suits against those who use the identical trademark on related goods and services. Such as, clothing under class 25, jewellery and watches under class 14 and bags under class 18 can be considered as related goods. Food under class 29 & 30, restaurant under class 43 and food sale under class 35 can be considered as related goods/services.
6. Lawsuit is available for receiving ungrounded accuse
At present, when the owner of the enterprise or party concerned of the supply chains receive ungrounded accuse, there is almost no way to stop such practices through trademark law. However, the new trademark act allows party concerned who has been falsely accused to seek remedy from the court. Business owners can apply for declaring the irrationality of the allegation, can apply for an injunction restraining the continuance of the accuse, and claim compensation for any damage posed by the allegations.
Such rules are clear indications of the official position, that is, the party accusing the trademark infringement should carefully determine the factual reliability of the accusation, any cease and desist letter should be carefully and thoroughly investigated before being sent out, moreover, actively seek professional advice from intellectual property experts.