Malaysia announced it joined Protocol Relating to the Madrid Agreement on September 27, 2019, making it the 106th member of the system. And officially implemented on December 27, 2019. New trademark law of Malaysia will also be implemented on December 27, 2019, and the old trademark law of 1976 will be replaced.
The new trademark law will provide more wide of protection for Malaysia trademark owners. And strengthen the punishment for counterfeiting and maliciously preemptively register. The details are as follows:
1. Join "Protocol Relating to the Madrid Agreement " and support Madrid trademark registration application
Malaysia officially joined Protocol Relating to the Madrid Agreement. Local brand owners only need to submit an international application and could protect trademarks in 122 regions of 106 members. In addition, joining Madrid system will also attract more overseas investors. It's recommends that the trademark owner of Taiwan should apply for a Malaysia trademark as soon as possible to seize market opportunities.
2. Allow non-traditional trademarks
The new law allows applications for registering for non-traditional trademarks. Such as sound, color, scent, motion trademark and three-dimensional trademark. But must meet certain conditions.
3. Allow multi-class trademark applications.
Applicants may submit multi-class trademark applications. At the same time, the new law allows the division and merger of Malaysia trademark.
4. Malaysia trademark application fee
At present, Malaysia is divided into two steps of payment for application and registration. The new law will cancel and change to a one-time payment at the application step.
According to the new law, if the validity period of the trademark expires after the implementation of the new law, the renewed will adopt the new fee. Therefore, if the renewed date will implement after the implementation of the new law, MyIPO will require the applicant to make up the difference between the new law and the old law when the renewed process is completed.
5. Date of trademark application in Malaysia
Regardless of priority is claimed, the trademark filing date in Malaysia is the date of filing the application. Priority dates are used only for trademark search and examination.
The old law requires notarized affidavits, etc. The new law will abolish the statutory declaration or power of attorney required for Malaysia trademark applications. No more notarization at the application step.
6. Malaysia trademark rejection review/litigation procedure
Under the current law, applicants have 2 opportunities for review. After the rejection of the application, if the review of the Malaysia trademark application fails, the applicant has one more chance to court hearing. The new trademark law stipulates that the applicant has only one opportunity of review. If the trademark application is rejected, the applicant can only choose to submit a review or court hearing. If the review/court hearing fails, you can only appeal to the court, and there is no more chance.
7. Malaysia trademark registration certificate
After the Malaysia trademark registration process is completed, MyIPO no longer issues paper certificates. After the trademark is registered, MyIPO will only issue a registration notice. If the applicant needs a trademark paper certificate, it's necessary to apply for a paper trademark and pay a fee to the Malaysia Trademark Office.
