TRADE MARKS ACT 1976
(1) This Act may be cited as the Trade Marks Act 1976, and shall come into force on such date as the Minister may, by notification in the Gazette , appoint.
(2) This Act shall apply throughout Malaysia.
(1) This Act shall apply to applications for trade marks made after the commencement of this Act and to the registrations of trade marks made on such applications.
(2) Subject to subsection (4) of section 6, this Act shall also apply to trade marks registered under the respective repealed Ordinances.
[Am. Act A881]
(3) Notwithstanding their repeal, the repealed Ordinances shall apply to applications for trade marks made before the commencement of this Act and to the registrations of trade marks made on such applications after the commencement of this Act.
(1) In this Act, unless the context otherwise requires:
"appointed date" has the same meaning as is assigned to that expression in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617] ;
[Ins. Act A 1138]
"Assistant Registrar" means the person appointed or deemed to have been appointed to be an Assistant Registrar under subsection (2) or (3)of section 4;
[Ins. Act A 1138]
"Convention country" means a country which is a party to any multilateral treaty relating to trade marks to wh
(1) The Director General of the Corporation shall be the Registrar of Trade Marks.
(2) The Corporation may appoint ,on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Trade Marks, Assistant Registrars of Trade Marks and other officers as may be necessary for the proper administration of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3).
(3) The persons holding office as Deputy Registrars, Assistant Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant Registrars and such other officers under subsection (2).
(4) Subject to the general direction
No action or prosecution shall be brought, instituted or maintained in any Court against:
(a) the Registrar of Trade Marks;
(b) a Deputy Registrar of Trade Marks; or
(c) an Assistant Registrar of Trade Marks,
for any act or omission done in good faith in the performance of his functions and the exercise of his powers under this Act.
[Ins. Act A1078]
(1) For the purposes of this Act there shall be established a Central Trade Marks Office which shall be located at Kuala Lumpur.
(2) In each of the States of Sabah and Sarawak there shall be established one regional trade marks office.
(2A) In addition to the regional trade marks office established in the State of Sabah and Sarawak, there may be established such number of trade marks offices as may be necessary for the purposes of this Act.
[Ins. Act A881]
(3) A document required or permitted by this Act to be submitted at the Central Trade Marks Office may be submitted at any trade marks office and reference in this Act to the submission at the Central Trade Marks Office includes reference to the submission at a trade marks office.
[Am. Act A881]
(1) There shall be kept and maintained at the Central Trade Marks Office a Register of Trade Marks which shall contain:
(a) all registered trade marks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers, conditions, limitations; and
(b) such other matters relating to the trade marks as the Minister may from time to time prescribe.
(2) [Repealed by Act A1078].
(3) The previous registers of trade marks kept under the repealed Ordinances shall be incorporated with and form part of the Register in accordance with the entries in the previous registers immediately before this Act comes into force.
[Am. Act A1078]
(4) The incorporation of the previous registers into the Register shall have the following
Notice of a trust express, implied or constructive shall not be entered in the Register or be received by the Registrar.
(1) The Register shall be open to the inspection of the public at such times and in accordance with such conditions as may be prescribed.
[Am. Act A1138]
(2) Certified copies or extracts of any entry in the Register sealed with the seal of the Registrar shall be given to any person requiring the same on payment of the prescribed fees.
(3) Certified copies of the Register shall be deposited in any trade marks office for the purpose of facilitating any search to be made by the public at such times as the Minister may by regulations prescribe and no copy or extract of any entry in such copies shall be made or given to any person.
[Am. Act A881]
Every person who:
(a) makes or causes to be made a false entry in the Register;
(b) makes or causes to be made a false entry in any certified copy of the Register deposited in a trade marks office;
[Am. Act A881]
(c) makes or causes to be made a false document purporting to be a copy of an entry in the Register;
(d) produces or tenders or causes to be produced or tendered in evidence any such document knowing such document or any entry therein to be false,
is guilty of an offence and is liable, on conviction, to a fine not exceeding five thousand ringgit or to a term of imprisonment not exceeding five years or to both.
[Subs. Act A1078]
(1) In order for a trade mark (other than a certification trade mark) to be registrable , it shall contain or consist of at least one of the following particulars:
[Am. Act A1078]
(a) the name of an individual, company or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or of some predecessor in his business;
(c) an invented word or words;
(d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or
[Am. Act A881]
(e) any other distinctive mark.
[Am. Act A881]
(2) A name, signature or word which is not described in paragraph (a), (b
[Deleted by Act A1078]
(1) Where an application for registration of a trade mark has been made by a person, and before the date of the application the trade mark had been used by a person other than the applicant under the control of and with the consent and authority of the applicant, and where an application is made by the applicant and that other person for the registration of that other person as a registered user of the trade mark immediately after the registration of the trade mark and the Registrar is satisfied that the other person is entitled to be registered as a registered user of the trade mark, the Registrar may, for the purpose of determining whether the trade mark is distinctive of or capable of distinguishing the goods or services of the applicant, treat use of the trade mark by that other person as equivalent to use of the trade mark by the applicant and may make an order that the trade mark is so distinctive or capable of distinguishing.
(2) An orde
(1) A trade mark may be limited in whole or in part to one or more specified colours and, in any such case, the fact that the trade mark is so limited shall be taken into consideration for the purpose of determining whether the trade mark is distinctive.
(2) Where a trade mark is registered without limitations as to colour, it shall be deemed to be registered for all colours.
(1) A mark or part of a mark shall not be registered as a trade mark:
( a ) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law;
( b ) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;
[Am. Act A1078]
( c ) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation;
[Ins. Act A881 ; Am. Act A1078]
(d) if it is identical with or so nearly resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor;
(e) if it is well-known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for:
P
14A PART IV REGISTRABLE TRADE MARKS-14A. Where registration shall not be refused.
(1) A trade mark shall not be refused registration by virtue of paragraphs (f) and (g) of section 14 if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or his predecessor in title, either:
(a) before the commencement of the Geographical Indications Act 2000 [ Act 602 ]; or
(b) before the geographical indication in question is protected in its country of origin.
(2) A trade mark shall not be refused registration by virtue of paragraphs (f) and (g) of section 14 if the geographical indication in question:
(a) has ceased to be protected; or
(b) has fallen into disuse,
in its country of origin.
[Ins. Act A1078]
15 PART IV REGISTRABLE TRADE MARKS-15. Where registration may be refused.
The Registrar shall refuse to accept an application for the registration of a trade mark which contains or consists of any of the following marks or a mark so nearly resembling any of those marks as is likely to be taken for that mark:
(a) the word or words "Patent", "Patented", "By Royal Letters Patent", "Registered", "Registered Design" and "Copyright" or a word or words to the like effect in any language whatsoever; or
(b) any mark which is specifically declared by the Minister in any regulations made under this Act to be a prohibited mark.
16 PART IV REGISTRABLE TRADE MARKS-16. Use of name of another person.
Where a person makes an application to register a trade mark which consists of or includes the name or representation of another person whether living or dead the Registrar may require the applicant to furnish him with the consent of that person if living or of the legal representative of that person if deceased before permitting the name or representation to be used as a trade mark.
[Am. Act A881]
17 PART IV REGISTRABLE TRADE MARKS-17. Registration for particular goods or services.
(1) A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods or in respect of any or all of the services comprised in a prescribed class of services.
[Am. Act A881]
(2) If any question arises as to the class in which goods or services are comprised that question shall be decided by the Registrar whose decision shall be final.
[Am. Act A881]
18 PART IV REGISTRABLE TRADE MARKS-18. Disclaimer.
(1) If a trade mark:
(a) contains any part:
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains matter which is common to the trade or business or is not distinctive,
the Registrar or the Court, in deciding whether the trade mark shall be entered or shall remain in the Register, may require as a condition of its being upon the Register, that the proprietor shall disclaim any right to the exclusive use of any such part or matter, to the exclusive use of which the Registrar or the Court holds him not to be entitled or that the proprietor shall make such other disclaimer as the Registrar or the Court may consider necessary for the purpose of defining his rights under the registration.
(2) No
19 PART IV REGISTRABLE TRADE MARKS-19. Identical trade marks.
(1) No trade mark shall be registered in respect of any goods or description of goods:
(a) that is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same goods or description of goods or in respect of services that are closely related to those goods; or
(b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion.
(2) No trade mark shall be registered in respect of any services or description of services:
(a) that is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same services or description of services or in respect of goods that are closely related to those services; or
(b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion.
(3) Wh
20 PART IV REGISTRABLE TRADE MARKS-20. Concurrent use.
(1) Notwithstanding subsection (1) of section 19, in the case of honest concurrent use or of the circumstances described in paragraph (c) of subsection (4) of section 6 or of other special circumstances which, in the opinion of the Court or the Registrar, make it proper so to do, the Court or the Registrar may permit the registration of more than one proprietor in respect of trade marks which are identical or so nearly resembling each other as are likely to deceive or cause confusion where the registration of the different proprietors:
(a) is in respect of the same goods or description of goods; or
(b) in the case of at least one proprietor, is in respect of goods, and in the case of the other or others, is in respect of services closely related to those goods,
subject to such conditions, amendments, modifications or limitations, if any, as the Court or the Registrar, as the case may be, may think right to impo
21 PART IV REGISTRABLE TRADE MARKS-21. Jointly owned trade mark.
(1) Where two or more persons are interested in a trade mark and none of them is entitled as between himself or the other or others to use the trade mark except:
(a) on behalf of both or all of them; or
(b) in relation to goods or services with which both or all of them are connected in the course of trade,
[Am. Act A881]
both or all of them may be registered as joint proprietors of the trade mark and this Act has effect in relation to any rights of such persons to the use of the trade mark as if those rights were rights of a single person.
(2) Subject to subsection (1), nothing in this Act authorizes the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors of the trade mark.
22 PART IV REGISTRABLE TRADE MARKS-22. Association of trade marks.
(1) Where a trade mark which is registered or is the subject of an application for registration in respect of any goods:
(a) is identical with another trade mark which is registered or is the subject of an application for registration in the name of the same proprietor in respect of the same goods or description of goods or in respect of services that are closely related to those goods; or
(b) is so nearly resembling it as is likely to deceive or cause confusion if used by a person other than the proprietor,
the Registrar may at any time require that the trade marks be entered on the Register as associated trade marks.
[Subs. Act A881]
(1A) Where a trade mark which is registered or is the subject of an application for registration in respect of any services:
(a) is identical with another trade mark which is registered or is the subjec
23 PART IV REGISTRABLE TRADE MARKS-23. Assignment of associated trade marks.
(1) Associated trade marks shall be assignable or transmissible only as a whole and not separately but they shall for all other purposes be deemed to have been registered as separate trade marks.
(2) Where under this Act use of a registered trade mark is required to be proved for any purpose, the Court or the Registrar may, if and so far as it or he shall think right, accept use of an associated trade mark or of the trade mark with additions and alterations not substantially affecting its identity as an equivalent for such use.
(3) The foregoing provisions apply in relation to proof of use of any registered trade mark and not in relation only to proof of use of a trade mark which is one of two or more associated trade marks.
24 PART IV REGISTRABLE TRADE MARKS-24. Series of trade marks.
(1) Where several trade marks in respect of the same goods or description of goods in a single class or in respect of the same services or description of services in a single class resemble each other in material particulars but differ in respect of:
[Am. Act A881]
(a) statements or representation as to the goods or services in respect of which the trade marks are used or proposed to be used;
[Am. Act A881]
(b) statements or representations as to number, price, quality or names of places;
(c) other matter which is not distinctive and does not substantially affect the identity of the trade marks; or
(d) colour,
and a person who claims to be the proprietor thereof seeks to register the trade marks, the trade marks may be registered as a series in one registration.
(2) All trade marks
25 PART V APPLICATION FOR REGISTRATION-25. Registration.
(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may make application to the Registrar for the registration of that mark in of the Register in the prescribed manner.
[Am. Act A1078]
(2) An application shall not be made in respect of goods or services comprised in more than one class.
[Am. Act A881]
(3) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such conditions, amendments, modifications or limitations, if any, as he may think right to impose.
(4) In the case of refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the material used by him in arriving at the same.
(5) A decision of the Registrar under subsection (3) is subject to appeal to the Court.
26 PART V APPLICATION FOR REGISTRATION-26. Application may be accepted where trade mark is to be used by assignee or registered user.
(1) An application for the registration of a trade mark in respect of any goods or services shall not be refused nor shall permission for such registration be withheld on the ground that it appears that the applicant does not use or propose to use the trade mark:
[Am. Act A881]
(a) if the Registrar is satisfied that a body corporate is about to be constituted and that the applicant intends to assign the trade mark to the corporation with a view to the use thereof in relation to those goods by the corporation; or
(b) if an application has been made for the registration of a person as a registered user of the trade mark, and the Registrar is satisfied that the proprietor intends it to be used by that person in relation to those goods or services and the Registrar is also satisfied that that person will be registered as a registered user thereof immediately after registration of
27 PART V APPLICATION FOR REGISTRATION-27. Advertisement of acceptance of application.
(1) When an application for registration of a trade mark has been accepted whether absolutely or subject to conditions, amendments, modifications or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted to be advertised in the prescribed manner.
(2) The advertisement shall set forth all conditions, amendments, modifications and limitations subject to which the application has been accepted except that the Registrar may cause an application for registration of a trade mark to be advertised before acceptance thereof if the considerations in subsection (2B) of section 10 or subsection (1A) of section 11 apply or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances to do so.
[Am. Act A881]
(3) Where an application has been advertised under subsection (2) the Registrar may, if he thinks fit, advertise it again
28 PART V APPLICATION FOR REGISTRATION-28. Opposition to registration.
(1) Any person may, within the prescribed time from the date of the advertisement of an applicant for the registration of a trade mark, give notice to the Registrar and application of opposition to the registration.
[Am. Act A881]
(2) The notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition.
(3) The applicant shall, within the prescribed time after the receipt of the notice of opposition, send to the Registrar and the opponent a counter-statement, in the prescribed manner, of the grounds for his application, and, if he does not do so, he shall be deemed to have abandoned his application.
[Subs. Act A881]
(3A) If the applicant submits a counter-statement under subsection (3), the opponent and applicant shall file evidence and exhibits in the prescribed manner and within the prescribed time in support of th
29 PART V APPLICATION FOR REGISTRATION-29. Non-completion of registration.
(1) When an application for registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice in writing of the non-completion to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
[Am. Act A881]
(2) Where an appeal under any of the provisions of this Act has been instituted in respect of an application for registration of a trade mark, the Registrar shall not give notice of non-completion of the application until the expiration of three months after the determination of the appeal or until the expiration of such further time as the Court may allow.
[Am. Act A881]
30 PART VI REGISTRATION AND EFFECT OF REGISTRATION-30. Registration of trade mark.
(1) When an application for registration of a trade mark in of the Register has been accepted and either:
(a) the application has not been opposed and the time for opposition has expired; or
(b) the application has been opposed and the opposition has been decided in favour of the applicant,
the Registrar shall, unless the application has been accepted in error, register the trade mark in the Register on payment of the prescribed fees in the name of the proprietor, and the trade mark so registered shall be registered as of the date of application for registration and that date shall be deemed for the purpose of this Act to be the date of registration.
[Am. Act A1078]
(2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate of the registration of the trade mark in the prescribed form under the seal of the Reg
31 PART VI REGISTRATION AND EFFECT OF REGISTRATION-31. Time for registration.
(1) Subject to subsection (2) a trade mark shall not be registered after twelve months from the date of the advertisement of the acceptance of the application for registration of the trade mark.
(2) Where the registration of a trade mark is delayed by:
(a) opposition to the registration of the trade mark;
[Am. Act A881]
(b) any appeal made to the Court; or
[Am. Act A881]
(c) an action on the part of the Central Trade Marks office or any trade marks office,
[Ins. Act A881]
that trade mark may be registered within such time as directed by the Registrar or the Court respectively.
(3) Where a trade mark has not been registered within the time applicable to it the application shall lapse.
32 PART VI REGISTRATION AND EFFECT OF REGISTRATION-32. Duration of registration.
(1) The registration of a trade mark shall be for a period of ten years but may be renewed from time to time in accordance with this Act.
[Subs. Act A881]
(2) Where a trade mark is registered under the repealed Ordinances and is incorporated into and forms part of the Register under this Act the registration of such trade mark unless renewed under this Act shall be for a period equal to the unexpired portion of the period for which the trade mark was registered or renewed under the repealed Ordinances.
(3) The registration of a trade mark may be renewed from time to time in accordance with Part VII.
33 PART VI REGISTRATION AND EFFECT OF REGISTRATION-33. Words used as name or description of an article, substance or service.
[Am. Act A881]
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of a word or words which the trade mark contains or of which it consists as the name or description of an article, a substance or a service.
[Am. Act A881]
(2) If it is proved either:
(a) that there is a well known and established use of the word or words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or, in the case of a certification trade mark, goods certified by the proprietor;
[Am. Act A881]
(b) that the article or substance was formerly manufactured under a patent,
34 PART VI REGISTRATION AND EFFECT OF REGISTRATION-34. Powers of registered proprietor.
Subject to the provisions of this Act,:
(a) the person for the time being entered in the Register as registered proprietor of a trade mark shall, subject to any rights appearing from such Register to be vested in any other person, have power to assign the same and give good discharges for any consideration for the assignment;
(b) any equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.
35 PART VI REGISTRATION AND EFFECT OF REGISTRATION-35. Rights given by registration.
(1) Subject to the provisions of this Act, the registration of a person as registered proprietor of a trade mark (other than a certification trade mark) in respect of any goods or services shall, if valid, give or be deemed to have been given to that person the exclusive right to the use of the trade mark in relation to those goods or services subject to any conditions, amendments, modifications or limitations entered in the Register.
[Am. Act A881; Am. Act A1078]
(2) Where two or more persons are proprietors of registered trade marks which are identical or nearly resembling each other rights of exclusive use of either of those trade marks are not (except so far as their respective rights have been defined by the Registrar or the Court) acquired by any one of those persons as against any other of those persons by registration of the trade mark but each of those persons have the same rights as against other persons
36 PART VI REGISTRATION AND EFFECT OF REGISTRATION-36. Registration prima facie evidence of validity.
In all legal proceedings relating to a registered trade mark (including applications under section 45) the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.
37 PART VI REGISTRATION AND EFFECT OF REGISTRATION-37. Registration conclusive.
In all legal proceedings relating to a trade mark registered in the Register (including applications under section 45) the original registration of the trade mark under this Act shall, after the expiration of seven years from the date thereof, be taken to be valid in all respects unless it is shown:
[Am. Act A1078]
(a) that the original registration was obtained by fraud;
(b) that the trade mark offends against section 14; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods or services of the registered proprietor,
[Ins. Act A881]
except that this section shall not apply to a trade mark registered under the repealed Ordinances and incorporated in the Register pursuant to subsection (3) of section 6 until after the expiration of three years from the commenceme
38 PART VI REGISTRATION AND EFFECT OF REGISTRATION-38. Infringement of a trade mark.
(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or registered user of the trade mark using by way of permitted use, uses a mark which is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered in such a manner as to render the use of the mark likely to be taken either:
[Am. Act A881]
(a) as being use as a trade mark;
[Am. Act A881]
(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular, or other advertisement, issued to the public, as importing a reference to a person having the right either as registered proprietor or as registered user to use the trade mark or to goods with which the per
39 PART VI REGISTRATION AND EFFECT OF REGISTRATION-39. Infringement of trade mark by breach of certain restriction.
(1) Where, by notice upon goods or upon the container of goods, the registered proprietor or a registered user of a trade mark registered in the Register makes a statement prohibiting the doing of an act to which this section applies, a person who, being the owner for the time being of the goods, does that act, or authorizes it to be done, in relation to the goods in the course of trade or with a view to a dealing with the goods in the course of trade, shall be deemed to infringe the trade mark unless:
[Am. Act A1078]
(a) at the time when he agreed to buy the goods he acted in good faith without notice that the statement appeared on the goods; or
(b) he became the owner of the goods by virtue of a title derived from another person who had agreed to buy the goods.
(2) The acts to which this section applies are:
(a) the applic
40 PART VI REGISTRATION AND EFFECT OF REGISTRATION-40. Acts not constituting infringement.
(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of a trade mark:
(a) the use in good faith by a person of his own name or the name of his place of business or the name of the place of business of any of his predecessors in business;
(b) the use in good faith by a person of a description of the character or quality of his goods or services, and in the case of goods not being a description that would be likely to be taken as importing any reference as is mentioned in paragraph (b) of subsection (1) of section 38 or paragraph (b) of subsection (3) of section 56;
[Am. Act A881]
(c) the use by a person of a trade mark in relation to goods or services in respect of which he has by himself or his predecessors in business, continuously used the trade mark from a date before:
(i) the use of
41 PART VII RENEWAL OF REGISTRATION-41. Renewal of registration.
(1) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration, or of the last renewal of registration, as the case may be, and this date shall hereinafter be referred to as "the date of expiration of the last registration".
[Am. Act A881]
(2) At the prescribed time before the date of expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration of the last registration and the conditions as to payment of fees upon which the renewal of the registration may be obtained and if such conditions have not been duly complied with, the Registrar may remove the trade mark from the Register subject to such conditions,
42 PART VII RENEWAL OF REGISTRATION-42. Status of unrenewed trade mark.
Where a trade mark has been removed from the Register for non-payment of the fee for renewal, it shall, nevertheless, for the purpose of an application for the registration of a trade mark within one year from the date of expiration of the last registration be deemed to be a trade mark which is already on the Register except that this section shall not have effect when the Registrar is satisfied either:
[Am. Act A881]
(a) that there has been no use in good faith of the trade mark which has been removed during the two years immediately preceding its removal; or
(b) that no deception or confusion is likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.
43 PART VIII CORRECTION AND RECTIFICATION OF REGISTER-43. Correction of Register.
(1) The Registrar may, on request made in the prescribed manner by the registered proprietor of a trade mark, amend or alter the Register:
(a) by correcting an error or entering any change in the name, address or description of the registered proprietor of a trade mark;
(b) by cancelling the entry of a trade mark in the Register;
(c) by amending the specification of the goods or services in respect of which the trade mark is registered or entering a disclaimer or memorandum relating to the trade mark without extending in any way the rights given by the existing registration of the trade mark,
[Am. Act A881]
and may make any consequential amendment or alteration in the certificate of registration and for that purpose may require the certificate of registration to be submitted to him.
(2) The Registrar may on the request made in th
44 PART VIII CORRECTION AND RECTIFICATION OF REGISTER-44. Alterations of registered trade mark.
(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially a the identity thereof and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient to do so, and if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
(3) A decision of the Registrar under this section is subject to appeal to the Court.
(4) Where leave under subsection (1) is granted the trade mark, as altered, shall be advertised in the prescribed manne
45 PART VIII CORRECTION AND RECTIFICATION OF REGISTER-45. Rectification of the Register.
(1) Subject to the provisions of this Act:
(a) the Court may on the application in the prescribed manner of any person aggrieved by the non- insertion in or omission from the Register of any entry or by any entry made in the Register without sufficient cause or by any entry wrongfully remaining in the Register, or by any error or defect in any entry in the Register, make such order for making, expunging or varying such entry as if thinks fit;
(b) the Court may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the Register;
(c) in case of fraud in the registration, assignment or transmission of a registered trade mark or if in his opinion it is in the public interest to do so, the Registrar may himself apply to the Court under this section;
(d) an order of the Court rectifying the Re
46 PART VIII CORRECTION AND RECTIFICATION OF REGISTER-46. Provisions as to non-use of trade mark.
(1) Subject to this section and to section 57, the Court may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods or services in respect of which it is registered on the ground:
(a) that the trade mark was registered without an intention in good faith, on the part of the applicant for registration or, if it was registered under subsection (1) of section 26, on the part of the body corporate or registered user concerned, to use the trade mark in relation to those goods or services and that there has in fact been no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or registered user of the trade mark for the time being up to the date one month before the date of the application; or
(b) that up to one month before the date of the application a continuous period of not less than three year
47 PART VIII CORRECTION AND RECTIFICATION OF REGISTER-47. Registration of assignment.
(1) Where a person becomes entitled by assignment or transmission to a registered trade mark he shall make application to the Registrar to register his title and the Registrar shall, on receipt of the application and proof of title to his satisfaction, register that person as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect and cause particulars of the assignment or transmission to be entered in the Register.
[Am. Act A881]
(2) A decision of the Registrar under subsection (1) is subject to appeal to the Court.
(3) Except in the case of an appeal under this section or of an application under section 45 a document or instrument in respect of which no entry has been made in the Register in accordance with subsection (1) shall not, unless the Court otherwise directs, be admissible in evidence in Court to prove title to a register
48 PART IX REGISTERED USER-48. Registered user.
(1) Subject to the provisions of this section, where the registered proprietor of a trade mark grants, by lawful contract, a right to any person to use the trade mark for all or any of the goods or services in respect of which the trade mark is registered, that person may be entered on the Register as a registered user of the said trade mark whether with or without any conditions or restrictions, provided that it shall be a condition of any such registration that the registered proprietor shall retain and exercise control over the use of the trade mark and over the quality of the goods or services provided by the registered user in connection with that trade mark.
(2) Where it is proposed that a person shall be registered as a registered user of a trade mark, the registered proprietor shall submit an application to the Registrar for the registration of that person as a registered user of the trade mark and such application shall be accompanied
49 PART IX REGISTERED USER-49. Powers to vary, extend or cancel registration of a registered user.
(1) Without prejudice to section 45, the registration of a person as a registered user:
(a) may be varied by the Registrar on the written application in the prescribed manner of the registered proprietor with respect to the goods or services for which or with respect to any conditions or restrictions subject to which the registration has effect;
[Am. Act A881]
(b) may be extended by the Registrar on the application in writing of the registered proprietor for such period as the Registrar thinks fit;
(c) may be cancelled by the Registrar on the application of the registered proprietor.
[Subs. Act A881]
(d) [Repealed by Act A881]
(2) The Registrar may at any time cancel the registration of a person as a registered user of a trade mark for any goods or services in respect of which the trade mar
50 PART IX REGISTERED USER-50. [Deleted by Act A881].
[Deleted by Act A881]
51 PART IX REGISTERED USER-51. Infringement proceeding.
(1) Subject to any agreement subsisting between the registered user of a trade mark and the registered proprietor of the trade mark, the registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the trade mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor a defendant.
(2) A registered proprietor so added as a defendant is not liable for costs unless he enters an appearance and takes part in the proceedings.
52 PART IX REGISTERED USER-52. Registered user not to assign.
This Part does not confer on the registered user of a trade mark an assignable or transmissible right to use of that trade mark.
53 PART IX REGISTERED USER-53. [Deleted by Act A881].
[Deleted by Act A881]
54 PART IX REGISTERED USER-54. [Deleted by Act A881].
[Deleted by Act A881]
55 PART X ASSIGNMENT OF TRADE MARKS-55. Assignment and transmission of trade marks.
(1) Subject to this section, a registered trade mark shall be assignable and transmissible with or without the goodwill of the business concerned in the goods or services in respect of which the trade mark is registered or in part of the goods or services;.
[Am. Act A881]
(1A) Subsection (1) shall have effect in the case of an unregistered trade mark used in relation to any goods or services as it has effect in the case of a registered trade mark registered in respect of any goods or services, if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark and in respect of goods or services all of which are goods or services in relation to which the unregistered trade mark is or was used in that business and in respect
56 PART XI CERTIFICATION TRADE MARKS-56. Certification trade marks.
(1) A mark must be capable, in relation to any goods or services, of distinguishing in the course of trade goods or services certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic, from goods or services not so certified shall be registrable as a certification trade mark in the Register in respect of those goods or services in the name of that person as proprietor thereof except that a mark shall not be so registrable in the name of a person who carries on a trade in goods or services of the kind certified.
[Am. Act A881, Am. Act A1078]
(2) In determining whether a mark is capable of distinguishing, the Registrar may have regard to the extent to which:
(a) the mark is inherently capable of distinguishing in relation to the goods or services in question; and
(b) by reason of the use of the mark or any oth
57 PART XII DEFENSIVE TRADE MARKS-57. Defensive registration of well known trade marks.
(1) Where a trade mark consisting of an invented word or words has become so well known as regards any goods or services in respect of which it is registered and, in relation to which it has been used, that the use thereof in relation to other goods or services would likely to be taken as indicating a connection in the course of trade between the other goods or services and a person entitled to use the trade mark in relation to the first-mentioned goods or services, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods or services does not use or propose to use the trade mark in relation to the other goods or services and notwithstanding anything in section 46 the trade mark may, on the application in a prescribed manner of the proprietor registered in respect of the first-mentioned goods or services, be registered in his name in respect of the other goods or services as a defensive trade mark and while so registe
58 PART XII DEFENSIVE TRADE MARKS-58. Defensive trade mark deemed to be associated trade mark.
A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall notwithstanding that the respective registrations are in respect of different goods or services be deemed to be, and shall be registered as, associated trade marks.
[Am. Act A881]
59 PART XII DEFENSIVE TRADE MARKS-59. Rectification of Register.
The Registrar may at any time cancel the registration of a defensive trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.
60 PART XII DEFENSIVE TRADE MARKS-60. Application of Act.
Subject to this Part, this Act applies in relation to the registration of a trade mark as a defensive trade mark and a trade mark registered as a defensive trade mark but it is not necessary for the registered proprietor of a defensive trade mark to prove use of the trade mark for the purpose of obtaining renewal of the registration.
61 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-61. Certificate of validity.
In any legal proceedings in which the validity of a registered trade mark comes into question and is decided in favour of the registered proprietor of the trade mark, the Court may certify to that effect, and if it so certifies then in any subsequent legal proceedings in which the validity of the registration comes into question the registered proprietor of the trade mark on obtaining a final order or judgment in his favour shall have his full costs, charges and expenses as between solicitor and client, unless in the subsequent proceedings the Court certifies that he ought not to have them.
62 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-62. Hearing of Registrar.
(1) In any legal proceedings in which the relief sought includes alteration or rectification of the Register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the Court.
(2) Unless otherwise directed by the Court, the Registrar, in lieu of appearing and being heard, may submit to the Court a statement in writing signed by him, giving particulars of the proceedings before him in relation of the matter in issue or of the grounds of any decision given by him affecting the same or of the practice of the office in like cases, or of such other matters relevant to the issues, and within his knowledge as Registrar, as he thinks fit, and such statement shall be deemed to form part of the evidence in the proceedings.
63 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-63. Costs.
(1) In all proceedings before the Court under this Act, the Court may award to any party such costs as it may consider reasonable and the costs as it may consider reasonable and the costs of the Registrar shall be in the discretion of the Court, but the Registrar shall not be ordered to pay the costs of any of the other parties.
(2) In all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable and to direct how and by what parties they are to be paid, and any such order may, by leave of the Court, be enforced in the same manner as a judgment or order of the Court to the same effect.
64 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-64. Mode of giving evidence.
(1) In all proceedings before the Registrar under this Act, the evidence shall be given by statutory declaration in the absence of directions to the contrary, but, in any case in which he thinks fit, the Registrar may take evidence viva voce in lieu of or in addition to evidence by declaration.
(2) Any such statutory declaration may, in the case of appeal, be used before the Court in lieu of evidence by affidavit, but if so used, shall have all the incidents and consequences of evidence by affidavit.
(3) In any action or proceedings relating to trade mark or trade name, the Registrar or the Court, as the case may be, shall admit evidence of the usages of the trade concerned or evidence of business usages in the provision of the services in question, and evidence of any relevant trade marks or trade name or business name or get-up legitimately used by other persons.
[Subs. Act A881]
65 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-65. Sealed copies to be evidence.
(1) Printed or written copies or extracts of or from the Register purporting to be certified by the Registrar and sealed with his seal shall be admissible as evidence in any proceedings before any court of law without further proof or production of the originals.
[Subs. Act A881]
(2) A certificate purporting to be under the hand of the Registrar as to any act which he is authorized under this Act to perform and which he has or has not performed, as the case may be, shall be prima facie evidence in any proceedings before any court of law of his having or not having performed the act.
[Subs. Act A881]
66 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-66. Minister may declare documents of foreign state pertaining to trade marks to be admissible.
[Subs. Act A881]
(1) The Minister may by order published in the Gazette declare any documents or class of documents of a foreign state to be admissible as evidence in any proceedings before a Court if:
(a) the document is sealed with the seal of the authorized officer or the government of the foreign state and the seal pertains to the trade marks registered in or otherwise recognized by the foreign country or if there is no such seal there is enclosed a certificate signed by the authorized officer to the effect that the document is evidence of the matter contained therein; and
(b) the foreign state or part thereof has entered into reciprocal arrangements with the Government of Malaysia in respect of the admissibility of the documents.
(2) For the purpose of this section:
"authorized officer" means a person o 67 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-67. Discretionary power.
In any appeal from the decision of the Registrar under this Act the Court shall have and exercise the same discretionary powers as are conferred upon the Registrar under this Act.
68 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-68. [Deleted by Act A881].
[Deleted by Act A881]
69 PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE-69. Appeal from Registrar.
Except where expressly given by the provisions of this Act or regulations made there under there shall be no appeal from a decision of the Registrar but the Court, in dealing with any question of the rectification of the Register (including all applications under section 45), shall have power to review any decision of the Registrar relating to the entry in question or the correction sought to be made.
70 PART XIV CONVENTIONS AND INTERNATIONAL ARRANGEMENTS-70. Right of priority under Convention, etc.
(1) Where any person has applied for protection of any trade mark in a Convention country or prescribed foreign country, such person or his legal representative or assignee, after furnishing a declaration within the prescribed time indicating the date of the application and the country in which it was made, shall in respect of the application for registration of his trade mark, be entitled to a right of priority and such application in Malaysia shall have the same date as the date of the application for protection in the Convention country or prescribed foreign country concerned, as the case may be, subject to the following:
(a) that the application for registration is made within six months from the date of application for protection in the Convention country or prescribed foreign country concerned, as the case may be; and where an application for protection is made in more than one Convention country or prescribed foreig
70A PART XIV CONVENTIONS AND INTERNATIONAL ARRANGEMENTS-70A. Temporary protection of trade marks in respect of goods or services which are the subject matters of international exhibitions.
(1) Notwithstanding anything in this Act, temporary protection shall be granted to a trade mark in respect of goods or services which are the subject matters of an exhibition at an official or officially recognized international exhibition held in Malaysia or in any Convention country or prescribed foreign country.
(2) The temporary protection granted under subsection (1) shall not extend any period of priority claimed by an applicant and where a right of priority is claimed by an applicant subsequent to the temporary protection, the period of priority shall remain six months but the period shall commence from the date of the introduction of the goods or services into the exhibition.
(3) An applicant for registration of a trade mark whose goods or services are the subject matters of an exhibition at an official or officially recognized international exhibition in Malaysia or in any Convention country or prescribed foreign country and wh
70B PART XIV CONVENTIONS AND INTERNATIONAL ARRANGEMENTS-70B. Protection of well-known trade marks.
(1) The proprietor of a trade mark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known trade mark is entitled to restrain by injunction the use in Malaysia in the course of trade and without the proprietor's consent of the trade mark which, or the essential part of which, is identical with or nearly resembles the proprietor's mark, in respect of the same goods or services, where the use is likely to deceive or cause confusion.
(2) Nothing in subsection (1) shall affect the continuation of any bona fide use of a trade mark begun before the commencement of this Act.
(3) In this section, references to a trade mark which is entitled to protection under Article 6 bis of the Paris Convention or Article 16 of the TRIPS Agreement as a well-known trade mark are to a mark which is well-known in Malaysia as being the mark of a person whether or not that person carries on business, or h
70C PART XIVA BORDER MEASURES-70C. Interpretation.
In this Part, unless the context otherwise requires:
"authorised officer" means:
(a) a proper officer of customs as defined under the Customs Act 1967[ Act 235 ]; or
(b) any public officer or any person in the employment of the Corporation appointed by the Minister by notification in the Gazette to exercise the powers and perform the duties conferred and imposed on an authorised officer by this Part;
[Am. Act A1138]
"counterfeit trade mark goods" means any goods, including packaging, bearing without authorisation a trade mark which is identical with or so nearly resembles the trade mark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trade mark, and which infringes the rights of the proprieto 70D PART XIVA BORDER MEASURES-70D. Restriction on importation of counterfeit trade mark goods.
(1) Any person may submit an application to the Registrar stating:
(a) that he is the proprietor of a registered trade mark or an agent of the proprietor having the power to submit such application;
(b) that, at a time and place specified in the application, goods which, in relation to the registered trade mark, are counterfeit trade mark goods are expected to be imported for the purpose of trade; and
(c) that he objects to such importation.
(2) An application under subsection (1) shall be supported by such documents and information relating to the goods as to enable them to be identified by the authorised officer, and accompanied by such fee as may be prescribed.
(3) Upon receipt of the application under subsection (1) , the Registrar shall determine the application, and the Registrar shall within a reasonable period inform the applicant whether the applicati
70E PART XIVA BORDER MEASURES-70E. Security.
(1) The Registrar shall, upon giving his approval under section 70D, require the applicant to deposit with the Registrar a security which in the opinion of the Registrar is sufficient to:
(a) reimburse the Registrar for any liability or expense it is likely to incur as a result of the seizure of the goods;
[Am. Act A1138]
(b) prevent abuse and to protect the importer; or
(c) pay such compensation as may be ordered by the Court under this Part.
[Ins. Act A1078]
70F PART XIVA BORDER MEASURES-70F. Secure storage of seized goods.
(1) Seized goods shall be taken to such secure place as the Registrar may direct or as the authorised officer deems fit.
(2) If it is stored on the direction of the authorised officer, the authorised officer shall inform the Registrar of the whereabouts of the seized goods.
[Ins. Act A1078]
70G PART XIVA BORDER MEASURES-70G. Notice.
(1) As soon as is reasonably practicable after goods are seized under section 70D, the authorised officer shall give to the Registrar, importer and the applicant, either personally or by registered post, a written notice identifying the goods, stating that they have been seized and the whereabout of the goods.
(2) A notice under subsection (1) shall also state that the goods will be released to the importer unless an action for infringement in respect of the goods is instituted by the applicant within a specified period from the date of the notice.
(3) If at the time of the receipt of the notice an action for infringement has been instituted by the applicant, the applicant shall notify the Registrar of that fact.
(4) The applicant may, by written notice given to the Registrar before the end of the period specified in the notice (the initial period) , request that the period be extended.
(5) Subject to subsection (6) , if
70H PART XIVA BORDER MEASURES-70H. Inspection, release, etc. , of seized goods.
(1) The Registrar may permit the applicant or the importer to inspect the seized goods if he agrees to give the requisite undertakings.
(2) The requisite undertakings mentioned in subsection (1) are undertakings in writing that the person giving the undertakings will:
(a) return the sample of the seized goods to the Registrar at a specified time that is satisfactory to the Registrar; and
(b) take reasonable care to prevent damage to the sample.
(3) If the applicant gives the requisite undertakings, the Registrar may permit the applicant to remove a sample of the seized goods from the custody of the Registrar for inspection by the applicant.
(4) If the importer gives the requisite undertakings, the Registrar may permit the importer to remove a sample of the seized goods from the custody of the Registrar for inspection by the importer.
(5) If the Registrar permit
70I PART XIVA BORDER MEASURES-70I. Forfeiture of seized goods by consent.
(1) Subject to subsection (2) , the importer may, by written notice to the Registrar, consent to the seized goods being forfeited.
[Am. Act A1138]
(2) The notice shall be given before any action for infringement in relation to the seized goods is instituted.
(3) If the importer gives such a notice, the seized goods are forfeited and shall be disposed of in the manner prescribed by regulations made under this Part.
[Ins. Act A1078]
70J PART XIVA BORDER MEASURES-70J. Compulsory release of seized goods to importer.
(1) The Registrar shall release the seized goods to the importer on the expiration of the retention period for the goods if the applicant:
(a) has not instituted an action for infringement in relation to the goods; and
(b) has not given written notice to the Registrar stating that the action for infringement has been instituted.
(2) If:
(a) an action for infringement has been instituted in relation to the seized goods; and
(b) at the end of a period of thirty days commencing on the day on which the action for infringement was instituted, there is not in force an order of the Court in which the action was instituted preventing the release of the goods,
the Registrar shall release the goods to the importer.
(3) If the applicant gives written notice to the Registrar stating that he consents to the release of the
70K PART XIVA BORDER MEASURES-70K. Compensation for failure to take action.
(1) Where goods have been seized pursuant to a notice given under section 70D and the applicant fails to take action for infringement within the retention period, a person aggrieved by such seizure may apply to the Court for an order of compensation against the applicant.
(2) Where the Court is satisfied that the person aggrieved had suffered loss or damage as a result of the seizure of the goods, the Court may order the applicant to pay compensation in such amount as the Court thinks fit to the aggrieved person.
[Ins. Act A1078]
70L PART XIVA BORDER MEASURES-70L. Actions for infringement of registered trade mark.
(1) If an action for infringement has been instituted by the applicant, the Court may in addition to any relief that may be granted:
(a) order that the seized goods be released to the importer subject to such conditions, if any, as the Court thinks fit;
(b) order that the seized goods be not released to the importer before the end of a specified period; or
(c) order that the seized goods be forfeited.
[Am. Act A1138]
depending on the circumstances of the case.
(2) The Registrar or the authorised officer is entitled to be heard on the hearing of an action for infringement.
(3) A Court may not make an order under paragraph (1) (a) if it is satisfied that the Registrar or any authority is required or permitted under any other law to retain control of the seized goods.
[Am. Act A1138]
70M PART XIVA BORDER MEASURES-70M. Disposal of seized goods ordered to be forfeited.
If the Court orders that seized goods are to be forfeited , the goods shall be disposed of in the manner as directed by the Court.
[Ins. Act A1078; Am. Act A1138]
70N PART XIVA BORDER MEASURES-70N. Insufficient security.
(1) If the reasonable expenses incurred by the Registrar in relation to any action taken by the Registrar under this Part, or taken in accordance with an order of Court under this Part, exceed the amount of security deposited under section 70E, the amount of the excess is a debt due to the Registrar.
[Am. Act A1138]
(2) The debt created by subsection (1) is due by the applicant, or, if there are two or more applicants, by the applicants jointly and severally.
[Ins. Act A1078]
70O PART XIVA BORDER MEASURES-70O. Ex-officio action.
(1) Any authorised officer may detain or suspend the release of goods which, based on prima facie evidence that he has acquired, are counterfeit trade mark goods.
(2) Where such goods have been detained, the authorised officer:
(a) shall inform the Registrar, the importer and the proprietor of the trade mark; and
(b) may at any time seek from the proprietor of the trade mark any information that may assist him to exercise his powers.
(3) Subject to section 70J, an importer may lodge an appeal against the detention of goods or suspension of the release of goods under subsection (1) .
(4) The authorised officer shall only be exempted from liability if his actions under subsection (1) are done in good faith.
[Ins. Act A1078]
70P PART XIVA BORDER MEASURES-70P. Regulations relating to border measures.
(1) The Minister may make such regulations as may be necessary or expedient for the purpose of this Part.
(2) Without prejudice to the generality of subsection (1) , regulations may be made for:
(a) prescribing and imposing fees and providing for the manner for collecting such fees;
(b) prescribing forms and notices;
(c) providing for the manner for depositing security;
(d) prescribing anything required to be prescribed under this Part.
[Ins. Act A1078]
71 PART XV MISCELLANEOUS-71. Use of trade mark for export trade.
(1) The application in Malaysia of a trade mark to goods to be exported from Malaysia and any other act done in Malaysia in relation to the goods which if done in relation to goods to be sold or otherwise traded in in Malaysia would constitute use of a trade mark in Malaysia shall for the purpose of this Act be deemed to constitute use of the trade mark in relation to those goods.
(2) Subsection (1) shall be deemed to have had effect in relation to an act done before the date of the commencement of this Act as it has effect in relation to an act done after that date, but does not affect a determination of a Court which has been made before that date or the determination of an appeal from a determination so made.
72 PART XV MISCELLANEOUS-72. Use of trade mark where form of trade changes.
The use of a registered trade mark in relation to goods or services where a form of connection in the course of trade subsists between the goods or services and the person using the trade mark shall not be deemed to be likely to cause deception or confusion only on the ground that the trade mark has been or is used in relation to goods or services where a different form of connection in the course of trade subsisted or subsists between the goods or services and that person or a predecessor in title of that person.
[Ins. Act A881]
73 PART XV MISCELLANEOUS-73. Preliminary advice by Registrar.
(1) The power to give to a person who proposes to apply for the registration of a trade mark in the Register advice as to whether the trade mark appears to the Registrar prima facie to be capable of distinguishing, shall be a function of the Registrar under this Act.
[Am. Act A1078]
(2) Any person who is desirous of obtaining the advice shall make application to the Registrar in the prescribed manner.
(3) Where an application for the registration of a trade mark is made within three months after the Registrar has given advice in the affirmative and the Registrar, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not capable of distinguishing, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have any fee paid on the filing of the application repaid to him.
74 PART XV MISCELLANEOUS-74. Powers of Registrar to amend document.
(1) The Registrar may on such terms as to costs as he thinks just whether for the purpose of correcting a clerical error or an obvious mistake, permit the correction of an application for the registration of a trade mark or notice of opposition or other document submitted at any trade marks office.
(2) An amendment of an application shall not be permitted under this section if the amendment would substantially affect the identity of the trade mark as specified in the application before amendment.
(3) A decision of the Registrar under subsection (1) is subject to appeal to the Court.
75 PART XV MISCELLANEOUS-75. Other powers of Registrar.
(1) The Registrar may, for the purpose of this Act:
(a) summon witnesses;
(b) receive evidence on oath;
(c) require the production of a document or article; and
(d) award costs as against a party to proceedings before him.
[Subs. Act A881]
(2) Any person who without any lawful excuse fails to comply with any summons, order or direction made by the Registrar under paragraphs (a), (b) and (c) of subsection (1) is deemed to have committed an offence and is liable, on conviction, to a fine not exceeding one thousand ringgit or to a term of imprisonment not exceeding three months or to both.
(3) Costs awarded by the Registrar may in default of payment be recovered in a court of competent jurisdiction as a debt due by the person against whom the costs were accorded to the person in whose favour they were accorded.
76 PART XV MISCELLANEOUS-76. Exercise of discretionary power.
Where any discretionary power is given to the Registrar by this Act or by any regulations made thereunder, he shall not exercise that power adversely to the applicant for registration or the registered proprietor in question without (if duly required to do so within the prescribed time) giving to the applicant an opportunity of being heard.
77 PART XV MISCELLANEOUS-77. Extension of time.
(1) Where by this Act or any regulations made thereunder, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided or directed by the Court, upon application in the prescribed manner, extend the time either before or after its expiration upon payment of the prescribed fee.
(2) Subsection (1) shall not apply to section 29, subsection (3) of section 31, section 70 and section 70A except where the circumstances mentioned in section 78 apply.
[Subs. Act A881]
78 PART XV MISCELLANEOUS-78. Extension of time by reason of error in trade marks office etc.
(1) Where by reason of:
(a) circumstances beyond the control of the person concerned; or
(b) an error or action on the part of the Central Trade Marks Office or any trade marks office,
an act in relation to an application for the registration of a trade mark or in proceedings under this Act (not being proceedings in a Court) required to be done within a certain time has not been so done the Registrar may extend the time for doing the act.
(2) The time required for doing an act may be extended under this section although that time has expired.
[Am. Act A881]
79 PART XV MISCELLANEOUS-79. Address for service.
(1) Where an applicant for the registration of trade mark does not reside or carry on business in Malaysia, he shall give to the Registrar an address for service in Malaysia which shall be the address of his agent, and if he fails to do so, the Registrar may refuse to proceed with the application.
[Subs. Act A881]
(2) An address for service stated in the application or a notice of opposition shall, for the purposes of the application or notice of opposition, be deemed to be the address of the applicant or opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at, or sending them by post to, the address for service of the applicant or opponent, as the case may be.
(3) An address for service may be changed by notice in writing to the Registrar.
(4) Subject to subsection (1), the registered proprietor of a trade mark shall f
80 PART XV MISCELLANEOUS-80. Agent.
(1) Where an applicant for registration of a trade mark does not reside or carry on business in Malaysia, he shall appoint an agent to act for him.
(2) Where by this Act any act has to be done by or to any person in connection with a trade mark or proposed trade mark or any procedure relating thereto, the act may, under and in accordance with this Act and any regulations made thereunder or in particular cases by special leave of the Registrar, be done by or to an agent of that person duly authorized in the prescribed manner.
(3) No person, firm or company shall be authorized to act as an agent for the purposes of this Act unless that person is domiciled or resident in Malaysia or the firm or company is constituted under the laws of Malaysia and such person, firm or company carries on business or practice principally in Malaysia.
[Subs. Act A881]
81 PART XV MISCELLANEOUS-81. Falsely representing a trade mark as registered.
(1) A person who makes a representation:
(a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark;
(b) with respect to a part of a registered trade mark, not being a part separately registered on a trade mark, to the effect that it is so registered;
(c) to the effect that a registered trade mark is registered in respect of goods or services in respect of which it is not registered; or
[Ins. Act A881]
(d) to the effect that the registration of a trade mark gives a right to the exclusive use of the trade mark in circumstances in which, having regard to conditions or limitations entered on the Register, the registration does not give that right,
is guilty of an offence and is liable, on conviction, to a tine not exceeding five hundred ringgit or to a term of imprisonmen
82 PART XV MISCELLANEOUS-82. Unregistered trade marks.
(1) No person shall be entitled to initiate any action to prevent or to recover damages for the infringement of an unregistered trade mark.
(2) Notwithstanding subsection (1), nothing in this Act shall be deemed to affect the right of action against any person for passing off goods or services as those of another person or the remedies in respect thereof.
[Ins. Act A881]
83 PART XV MISCELLANEOUS-83. Regulations.
(1) Subject to the provisions of this Act, the Minister may make regulations for the purpose of carrying into effect the provisions of this Act.
(2) In particular and without prejudice to the generality of subsection (1), such regulations may provide for all or any of the following:
(a) to regulate the practice (other than that relating to proceedings before the Court or connected therewith) under this Act including service of documents;
(b) to classify goods or services for the purpose of registration of trade marks;
[Ins. Act A881]
(c) to make or require duplication of trade marks or other documents;
(d) to secure and regulate the publishing and selling or distributing in such manner as the Minister may think fit of copies of trade marks and other documents;
(e) to prescribe the fees to be paid in respect of any mat
84 PART XV MISCELLANEOUS-84. Repeal and saving.
(1) The Trade Marks Ordinance 1950 [ 29/50 ], the Trade Marks Ordinance of Sabah [ Sabah Cap.142 ] and the Trade Marks Ordinance of Sarawak [ Sarawak Cap. 62 ] are hereby repealed.
(2) Notwithstanding the repeal of the Ordinances specified in subsection (1):
(a) any subsidiary legislation made under any of the repealed laws shall insofar as such subsidiary legislation is not inconsistent with the provisions of this Act continue in force and have effect as if it had been made under this Act and may be repealed, extended, varied or amended accordingly;
(b) any appointment made under the repealed laws or subsidiary legislation made thereunder shall continue in force and have effect as if it had been made under this Act unless the Minister otherwise directs;
(c) any certificate issued under any of the repealed laws and is in force immediately prior to the coming in
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