1 PART I PRELIMINARY-1. Short title and commencement.

(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.

2 PART I PRELIMINARY-2. Interpretation.

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 Registrar of Trademarks or a Deputy Registrar of Trademarks;

  "certification mark"  has the meaning assigned to it under subsection 73(1);

  "Convention country"  means a country which is a party to any multilateral treaty relating to trademarks to which Malaysia is also a party;

  "Convention application"  means an application for protection of a trademark in a Convention country;

  "Corporation"  means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002 [Ac

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Legal Commentary on Section 2 of the Trade Marks Act, 2019 (Malaysia)

Concise Legal Commentary

IntroductionWhile the provided sources heavily feature the Indian Trade Marks Act, 1999, the specific data points regarding the Trade Marks Act 2019 (which emerged as a newer statute in Malaysia) indicate a significant overhaul of the trademark regime. Section 2 of the Malaysian Trade Marks Act 2019 is pivotal as it serves as the primary definitional framework of the Act, establishing the scope of protection and the interpretation of key terms like "sign," "use," and "trade mark." Understanding these definitions is essential for determining validity, infringement, and the application of penalties in the new legal landscape.

What does Section 2 Say?Section 2 of the Trade Marks Act 2019 (Malaysia) functions as the interpretive key for the rest of the legislation. It defines the term "sign" to include not only traditional printed or visual representations but also any letter, word, name, lemma, title, portrait, picture, mark, symbol, numeral, or device, as well as any combination thereof. Crucially, it expands the scope to include non-traditional trademarks, explicitly recognizing 3D shapes, colours, scents, and sounds as registrable signs if they can function as source identifiers [00420000000]. Furthermore, the section clarifies that references to the "use" of a trade mark shall be construed as references to the use of a visual or non-visual representation of the trade mark .

Essential IngredientsBased on the commentary derived from the analysis of the Act and its comparative context:* Distinctiveness: The core ingredient for protection under the Act is that the sign must be capable of distinguishing the goods or services of one undertaking from those of another [00420000000].* Source Identification: A fundamental requirement is that the sign must serve as a badge of origin, creating a connection in the course of trade between the goods and the proprietor [00420000000].* Functionality: The sign must act as a source identifier. If a sign refers to the "genus" of the product (generic) or merely describes it (descriptive without acquired distinctiveness), it may not be fully registrable unless it has acquired distinctive character through use [00420000000].* Non-Functional Nature: For shape and colour marks to be registered, they generally must not be solely dictated by the nature of the goods or result from the substance or staple raw material used in production, nor must they be necessary to obtain a technical result [00420000000].

Scope of SectionThe scope of Section 2 is expansive and modernizes Malaysian intellectual property law:* Inclusion of Non-Traditional Marks: Unlike previous iterations, this Act allows for the registration of shapes, colours, 3D signs, and sounds, broadening the ambit of protected intellectual property beyond mere logos and text [00420000000].* Emphasis on Bad Faith: In cases where domains or keywords are misused, the Act's scope extends to preventing unfair advantage and dilution, particularly for well-known marks, even if the goods/services are not identical [00420000000].* Digital Adaptation: By defining "sign" and "use" to include non-visual representations, the Act accommodates the digital era, addressing issues where infringement occurs through digital signals, meta-tags, or non-visual advertising methods [00420000000].* Comparative Protection: While the Act mirrors international standards (like the Community Trade Mark guidelines on distinctiveness), it maintains a rigorous standard for descriptive words, ensuring that common terms (like "Choice") are not monopolized unless they have acquired a secondary meaning [00420000000].

Punishment for SectionAlthough Section 2 is primarily definitional, its breach triggers liability under other sections of the Act (e.g., Sections dealing with infringement, passing off, or false designation). However, the Trade Marks Act 2019 dramatically increased the sting of criminal punishment for offences related to the administration of the Act:* Increased Penalties: For offences such as falsifying entries in the register or using counterfeit marks, the Act provides for imprisonment of up to five (5) years or a fine of up to RM 1,000,000 (approximately US$250,000), or both [00420000000].* Repeat Offenders: The Act mandates enhanced penalties for repeat offenders, reflecting a stricter enforcement stance compared to previous regimes .* Liability for Negligence: Individuals who are liable for an offence are also liable for the punishment if the act, omission, neglect, or default was committed by an agent or employee acting on their behalf .

Legal Comments

• Definitional Breadth - The Act expands the definition of a "sign" to explicitly include sounds, scents, and 3D shapes, recognizing non-traditional trademarks [00420000000]
• 3D Shape Registration - The new regime allows for the registration of three-dimensional signs provided they function as source identifiers and are not functional [00420000000]
• Colour Mark Protection - Marks consisting of any colour or combination of colours are now explicitly covered under the scope of the Act
• Sight and Sound Integration - The section clarifies that "use" includes non-visual representations, facilitating protection against audio-based infringement or sound logos
• Distinctiveness Requirement - Protection is contingent upon the mark's ability to distinguish goods/services, distinguishing it from generic or purely descriptive terms [00420000000]
• Source Identifier Principle - The essence of the mark is defined as a "badge of origin" linking the product to the proprietor in the course of trade [00420000000]
• Bad Faith Prohibition - The Act reinforces that marks adopted to take unfair advantage of a well-known mark's reputation are not entitled to protection [00420000000]
• Falsification Penalties - Falsifying entries in the register under the Act carries a severe penalty of up to 5 years imprisonment or RM 1 million fine
• Counterfeit Offences - Using counterfeit marks is a criminal offence punishable by up to 5 years imprisonment and substantial fines [00420000000]
• Enhanced Fines - The 2019 Act introduces higher fines (up to RM 1,000,000) compared to the previous regime for trademark-related offences
• Comparative Standards - The distinctiveness criteria align with international precedents, requiring evidence of "secondary meaning" for descriptive marks [00420000000]
• Digital Adaptation - The definition of "use" encompasses digital non-visual interactions, addressing modern e-commerce and advertising challenges [00420000000]
• Shape Exclusions - Shapes dictated solely by the nature of the goods or necessary for technical results are excluded from registration [00420000000]
• Scents as Marks - The inclusion of scents acknowledges the unique sensory marketing strategies in luxury and food industries [00420000000]
• Sound Mark Logic - Sounds are protected provided they are capable of distinguishing the source of goods or services [00420000000]
• Generic Exclusion - Generic marks that refer to the species of a product genus remain non-registrable [00420000000]
• Descriptive Limitations - Marks describing the kind or quality of goods cannot be registered unless they have acquired distinctive character [00420000000]
• Stricter Enforcement - The legislative intent is to deter infringement through harsher criminal sanctions and revised penalties
• Administrator Liability - Corporate liability extends to individuals responsible for the actions or defaults of the company

3 PART I PRELIMINARY-3. Definition of "trademark".

(1) "Trademark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.;

(2) A sign may constitute a trademark even though it is used in relation to a service ancillary to the trade or business of an undertaking and whether or not the service is provided for money or money's worth.;

(3) References in this Act to a trademark includes, unless the context otherwise requires, references to a collective mark or certification mark.;

4 PART I PRELIMINARY-4. Definition of "well-known trademark".

(1) "Well-known trademark" means any trademark that is well-known in Malaysia and that belongs to a person who-;

(a) is a national of a Convention country; or

(b) is domiciled, or has a real and effective industrial or commercial establishment, in a Convention country, whether or not that person carries on business, or has any goodwill, in Malaysia.;

(2) In determining whether a trademark is well-known in Malaysia, the Registrar or the Court shall have regard to the criteria as prescribed.;

6 PART I PRELIMINARY-6. Definition of "infringing goods", "infringing material", "infringing articles", "counterfeit goods" and "counterfeit trademarks".

(1) Goods are "infringing goods", in relation to a registered trademark, if the goods or their packaging bear a sign identical with or similar to that trademark and:

(a) the application of the sign to the goods or their packaging was an infringement of the registered trademark;

(b) the goods are proposed to be imported into Malaysia and the application of the sign in Malaysia to them or their packaging would be an infringement of the registered trademark; or

(c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trademark. ;

(2) Material is "infringing material", in relation to a registered trademark, if it bears a sign identical with or similar to that trademark and either:

(a) it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such

7 PART I PRELIMINARY-7. References to use of trademark.

(1) References to the use of a trademark shall be construed as references to the use of a printed or other visual or non-visual representation of the trademark.

(2) References to the use of a trademark in relation to goods shall be construed as reference to the use of the trademark upon, or in physical or other relation to, the goods.

(3) References to the use of a trademark in relation to services shall be construed as references to the use of the trademark as a statement or as part of a statement about the services.

(4) Any aural representation of a trademark shall be construed as references to the use of the trademark.

(5) Where a person has used a trademark with additions or alterations, the Registrar or the Court may decide that the person has used the trademark if it does not substantially affect the identity of the trademark as the Registrar or the Court thinks fit.

8 PART I PRELIMINARY-8. Use of trademark for export trade or where form of trade changes.

(1) Where a trademark is applied to goods to be exported from Malaysia and any other act is done in Malaysia in relation to the goods which if done in relation to goods to be sold or otherwise traded in Malaysia, such act would constitute use of a trademark in Malaysia in relation to those goods.

(2) The use of a registered trademark in relation to goodsor services where a form of connection in the course of trade subsists between the goods or services and the person using the trademark shall not be deemed to be likely to cause deception or confusion only on the ground that the trademark 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 predecessor in title of that person.

9 PART I PRELIMINARY-9. Determination of likelihood of confusion.

(1) In determining whether the use of a trademark is likely to cause confusion on the part of the public, the Registrar or the Court may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with an earlier trademark.

(2) In determining whether the use of a sign is likely to cause confusion on the part of the public, the Registrar or the Court may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with a registered trademark.

10 PART II ADMINISTRATION-10. Registrar, Deputy Registrars and Assistant Registrars.

(1) The Director General of the Corporation shall be the Registrar of Trademarks and have the control of the Trademarks Office.

(2) The Registrar shall perform the duties imposed and exercise the powers conferred on him under this Act for the proper administration of this Act.

(3) The Corporation may appoint, on such terms and conditions as the Corporation may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Trademarks, Assistant Registrars of Trademarks and other officers as may be necessary for the proper administration of this Act.

(4) Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the Registrar, a Deputy Registrar or an Assistant Registrar may exercise any power of the Registrar under this Act.

(5) The Registrar shall have a seal of such device as may be approved by the Corporation and t

11 PART II ADMINISTRATION-11. Protection of Registrar, Deputy Registrars, Assistant Registrars and other officers.

No action, suit, prosecution or other proceedings shall be brought, instituted or maintained in any court against:

(a) the Registrar, Deputy Registrars, Assistant Registrars or any other officer, in respect of any act ordered or done for the purpose of carrying into effect this Act; and

(b) any other officer in respect of any act done or purported tobe done by him under the order, direction or instruction of the Registrar,

if the act was done in good faith and in a reasonable belief thatit was necessary for the purpose intended to be served by it.

12 PART II ADMINISTRATION-12. Trademarks Office and other branch offices.

(1) The Central Trade Marks Office and regional trade marks offices established under section 5 of the repealed Act shall be known as Trademarks Office and branch offices, respectively.

(2) In addition to subsection (1), for the purposes of this Act, such number of branch offices of the Trademarks Office as may be necessary shall be established.

(3) Any document required by this Act to be filed at the Trademarks Office may be filed at any branch office of the Trademarks Office and reference in this Act to the submission at the Trademarks Office includes reference to the submission at a branch office.

(4) All communication with the Trademarks Office shall be in the national language or English language.

13 PART II ADMINISTRATION-13. Preliminary advice and search by Registrar.

(1) The Registrar may give preliminary advice and search result to any person who proposes to apply for the registration of trademark in the Register as to whether the trademark is prima facie a registrable trademark.

(2) Any person may apply for a preliminary advice and search result in the form as determined by the Registrar together with the payment of the prescribed fee.

(3) Notwithstanding that an application for the registration of trademark is made within the prescribed period and the Registrar has given preliminary advice or search result in the affirmative, the Registrar, after further investigation or consideration, may raise any refusal to the effect that the trademark is not registrable.

(4) In the circumstances under subsection (3), the applicant shall be entitled to have any fee paid on the filing of the application refunded to him subject to the prescribed conditions, upon giving notice of the withdrawal of the ap

14 PART III THE REGISTER OF TRADEMARKS-14. Register of Trademarks.

(1) The Registrar shall keep and maintain a register calledthe

(2) The Register shall contain all such matters and particulars relating to trademarks as prescribed.

(3) The Register shall be kept in such form as determined by the Registrar.

15 PART III THE REGISTER OF TRADEMARKS-15. Inspection of Register.

(1) The Register shall be made available for public inspection subject to the conditions as prescribed upon application in the form as determined by the Registrar together with the payment of the prescribed fee.

(2) Subject to the conditions in subsection (1), certified copies or extracts of any entry in the Register sealed with the seal of the Registrar shall be given to any person upon application in the form as determined by the Registrar together with the payment of the prescribed fee.

16 PART IV REGISTRATION OF TRADEMARKS Chapter 1 Introductory-16. Registered trademark.

A registered trademark shall be a property right obtained by the registration of trademark under this Act and a registered proprietor of the trademark has the rights and remedies provided under this Act.

17 Chapter 2 Application for registration of trademark-17. Application for registration of trademark.

(1) Any person who claims to be the bona fide proprietor of a trademark may apply for the registration of the trademark if:

(a) the person is using or intends to use the trademark in the course of trade; or

(b) the person has authorized or intends to authorize another person to use the trademark in the course of trade.

(2) An application for the registration of trademark shall be made in the form as determined by the Registrar within the prescribed period together with the payment of the prescribed fee.

(3) If the trademark applied for registration contains or consists of a word which is not in Roman characters, or the national language or English language, the applicant shall, within the prescribed period, furnish the Registrar with the following:

(a) the transliteration of the trademark;

(b) the translation of the trademark; or<

18 Chapter 2 Application for registration of trademark-18. Application in multiple classes.

(1) An application under subsection 17(2) may be made in a single application listing goods or services belonging to several classes of classification to the Registrar.

(2) An application under subsection (1) shall result in one registration.

19 Chapter 2 Application for registration of trademark-19. Classification of goods or services.

(1) Goods or services shall be classified for the purposes of the registration of trademarks in accordance with a system of classification as prescribed.

(2) If any question arises as to the class within which any goods or services are comprised, that question shall be decided by the Registrar.

20 Chapter 2 Application for registration of trademark-20. Colour of trademark.

(1) The applicant may apply to limit, in whole or in part, to one or more specified colours of the trademark.

(2) For the purposes of subsection (1) or in the case where the applicant does not apply to limit, in whole or in part, to one or more specified colours of the trademark, the Registrar may limit, in whole or in part, to one or more specified colours of the trademark in determining whether the trademark is distinctive.

(3) Where a trademark is registered without limitations as to colour, it shall be deemed to be registered for all colours.

21 Chapter 2 Application for registration of trademark-21. Series of trademarks.

(1) A person may make a single application under subsection 17(2) for the registration of a number of trademarks if the trademarks:

(a) resemble each other in material particulars; and

(b) differ only in respect of one or more of the following matters:

(i) statements or representations as to the goods or services in relation to which the trademarks are used or intended to be used;

(ii) statements or representations as to number, price or quality;

(iii) standard fonts which does not substantially affect the identity of the trademarks; or

(iv) the colour of any part of the trademark.

(2) If the application meets all the requirements under subsection (1), the Registrar shall register the trademarks as a series in one registration.

(3) A trademark which has been registered as part of a series trademark may be used independ

22 Chapter 2 Application for registration of trademark-22. Date of filing.

(1) The Registrar shall record the date of receipt of an application for registration of trademark made in accordance with section 17 as the date of filing.

(2) Where the requirement under section 17 is fulfilled on different days, the Registrar shall record the date of filing on the last day of those days.

(3) Any date of priority claimed under section 26, 27 or 28 shall have no effect on the date of filing of application recorded under subsection (1) or (2) except for the purposes of a search under subsection 29(2).

23 Chapter 3 Grounds for refusal of registration-23. Absolute grounds for refusal of registration.

(1) Subject to subsection (2), the Registrar shall refuse to register a trademark based on the following absolute grounds for refusal of registration:

(a) signs which are not capable of being represented graphically and not capable of distinguishing goods or services of one undertaking from those of other undertakings;

(b) trademarks which are devoid of any distinctive character;

(c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics of goods or services or the time of production of goods or of rendering of services; or 28 Laws of Malaysia Act 815

(d) trademarks which consist exclusively of signs or indications which have become customary in the current language of the territory or in the bona fide and established practices of t

24 Chapter 3 Grounds for refusal of registration-24. Relative grounds for refusal of registration.

(1) The Registrar shall refuse to register a trademark if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services of the earlier trademark.

(2) The Registrar shall refuse to register a trademark if there exists a likelihood of confusion on the part of the public:

(a) where the trademark is identical with an earlier trademark and is to be registered for goods or services similar to the earlier trademark; or

(b) where the trademark is similar to an earlier trademark and is to be registered for goods or services identical with or similar to the earlier trademark.

(3) The Registrar shall refuse to register a trademark if:

(a) it is identical with or similar to a well-known trademark which is not registered in Malaysia and it is to be registered for the identica

25 Chapter 3 Grounds for refusal of registration-25. Honest concurrent use, etc.

(1) Nothing in section 24 shall prevent the registration of trademark where the Registrar or the Court is satisfied:

(a) that there has been an honest concurrent use of the trademark and the earlier trademark or other earlier right; or

(b) that by reason of other special circumstances it is proper for the trademark to be registered.

(2) The registration of trademark under subsection (1) shall be subject to such limitations and conditions as the Registrar or the Court thinks fit to impose.

(3) Nothing in this section:

(a) shall prevent the Registrar from refusing to register a trademark on any of the grounds under section 23; or

(b) shall affect the making of an application for a declaration of invalidity under subsection 47(3).

Chapter 4

Priority

26 Chapter 3 Grounds for refusal of registration-26. Claim to priority of Convention application.

(1) A person, or his successor in title, who has duly filed a Convention application, has a right to priority, for the purposes of filing an application for registration of the same trademark for some or all of the same goods or services, for a period of six months from the date of filing of the first of such application.

(2) For the purposes of subsection (1):

(a) the date of filing of the first Convention application shall be the relevant date in establishing which rights take precedence; and (b) the registrability of the application of the trademark shall not be affected by any use of the trademark in Malaysia in the period between the date of filing of the first Convention application and the date of the application of the same trademark under this Act.

(3) Where a right of priority is claimed by reason of a Convention application under subsection (1), the application for registra

27 Chapter 3 Grounds for refusal of registration-27. Claim to priority from other relevant overseas application.

(1) The Minister may, by order published in the Gazette, declare a country as having made arrangements with Malaysia for the reciprocal protection of trademark.

(2) In relation to a declared foreign country, this section shall apply only for the duration of the period the order continues in force in respect of that country.

(3) For the purposes of this section, all requirements and procedures in section 26 shall be applicable.

28 Chapter 3 Grounds for refusal of registration-28. Claim to priority from temporary protection of trademark which is the subject matters of international exhibition given under Article 11 of Paris Convention.

(1) Notwithstanding anything in this Act, an applicant for registration of a trademark may apply for temporary protection which shall be granted to a trademark which is the subject matter of an exhibition at an official or officially recognized international exhibition held in Malaysia or in any Convention country or declared foreign country.

(2) The temporary protection granted under subsection (1) shall not extend any period of priority claimed by an applicant in section 26 and where a right of priority is claimed by an applicant subsequent to the temporary protection, the period of priority shall remain six months and which shall commence from the date of the introduction of the goods or services into the exhibition.

(3) An applicant for registration of trademark 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 o

29 Chapter 5 Examination-29. Examination of application.

(1) The Registrar shall examine whether an application for registration of trademark fulfills the requirements for registration under this Act.

(2) For the purpose of an examination under subsection (1), the Registrar shall carry out a search, to such extent as he considers necessary, of earlier trademarks.

(3) Upon examination, where the Registrar finds that the application fulfills the requirements for registration of trademark, the Registrar shall accept the application.

(4) Where the Registrar accepts the application for registration of trademark, the Registrar shall record the date of filing of the application under section 22 as the date of filing.

(5) If the application for registration of trademark does not fulfill any requirements for registration of trademark, the Registrar shall inform the grounds of provisional refusal to the applicant by a written notice and the applicant shall have an opportunity to:

30 Chapter 5 Examination-30. Voluntary disclaimer, condition or limitation.

(1) An applicant for the registration of a trademark may apply in the form as determined by the Registrar:

(a) to disclaim any right to the exclusive use of any specified element of the trademark; or

(b) to agree that the rights arising out of the registration shall be subject to certain conditions or limitations imposed by the Registrar.

(2) The Registrar may refuse any application under paragraph (1)(a) if the application contains or consists of any matters which is not allowed under the absolute and relative grounds for refusal of registration under sections 23 and 24.

(3) A disclaimer made by the applicant, or condition or limitation imposed by the Registrar, under subsection (1), shall not be revoked if the application has been accepted by the Registrar.

31 Chapter 5 Examination-31. Publication of acceptance.

(1) If the application for registration of trademark is accepted, the Registrar shall publish the application in the Intellectual Property Official Journal.

(2) The publication under subsection (1) shall contain all disclaimers, conditions, amendments, modifications or limitations subject to which the application has been accepted.

32 Chapter 6 Withdrawal, restriction or amendment of application for registration of trademark-32. Withdrawal or restriction of application for registration of trademark.

(1) An applicant may, before the registration of trademark to which his application relates, withdraw his application or restrict the goods or services covered by the application by filing a request in the form as determined by the Registrar.

(2) Any person may withdraw the application or restrict the goods or services if the right or interest relied on in the filing of the application, notice or request has become vested in him.

(3) The person referred to in subsection (2) shall notify the Registrar in the prescribed manner that the right or interest has become vested in him.

(4) If the acceptance of the application for registration of a trademark has been published under section 31, a notice of the withdrawal or restriction of the goods or services of that application shall also be published.

(5) Any withdrawal or restriction made under this section shall not be revoked if the application for withdrawal or restriction

33 Chapter 6 Withdrawal, restriction or amendment of application for registration of trademark-33. Amendment of application for registration of trademark.

(1) The Registrar may, at the request of the applicant, amend an application for the registration of a trademark at any time before registration.

(2) The request under subsection (1) shall be made in the form as determined by the Registrar together with the payment of the prescribed fee.

(3) Any amendment to an application for the registration of trademark shall only be made in relation to:

(a) the name or address of the applicant;

(b) errors of wording or copying; or

(c) obvious mistakes, and only where the amendment does not substantially affect the identity of the trademark or extend the goods or services covered by the application.

34 Chapter 7 Opposition-34. Grounds of opposition.

(1) Subject to subsection 35(3), the registration of trademark may be opposed by a registered proprietor if he or his predecessor in business or a person who is under his control or authority has continuously used the trademark:

(a) from a date before the use of the applicant's trademark or his predecessor in business or by a person who is under his control or authority; or

(b) from a date before the date of filing of the application by the applicant.

(2) Notwithstanding subsection (1), the registration of trademark may be opposed by any person:

(a) on any grounds under section 23 or 24;

(b) on the ground that the applicant is not the proprietor of the trademark; or

(c) subject to subsection (3), on the ground that:

(i) it is identical with a well-known trademark in Malaysia and it is to be registered

35 Chapter 7 Opposition-35. Opposition proceedings.

(1) Any person may file a notice of opposition in the form as determined by the Registrar together with the payment of the prescribed fee and send the notice of opposition to the applicant within the prescribed period from the date of the publication of the acceptance of an application for the registration of the opposed trademark.

(2) The notice of opposition shall include a statement of the grounds of the opposition containing any grounds specified under section 34.

(3) An opposition may proceed in the name of a person other than the person who filed the notice if:

(a) after the person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested to the other person; and

(b) the other person in paragraph (a):

(i) notifies the Registrar in the prescribed manner that the right or interest is vested in

36 Chapter 8 Registration-36. Registration.

(1) When an application for registration of trademark has been accepted and either:

(a) the application has not been opposed and the period 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 trademark in the Register in the name of the proprietor, and the trademark so registered shall be registered as at the date of filing of application for registration and that date shall be deemed to be the date of registration.

(2) On the registration of trademark, the Registrar shall issue to the proprietor a notification of the registration of trademark with the seal of the Registrar.

(3) If the registered proprietor intends to obtain a certificate of registration, the Registrar shall issue the certificate of registr

37 PART V DIVISION AND MERGER-37. Application for division.

(1) An application for the registration of trademark or the registration of trademark may, upon the request of the applicant or registered proprietor, be divided into two or more separate applications for the registration or registration of trademark.

(2) The request under subsection (1) shall be made to the Registrar before or after the trademark is registered in the form as determined by the Registrar together with the payment of the prescribed fee.

38 PART V DIVISION AND MERGER-38. Application for merger.

(1) Two or more separate applications for registration of trademark or registration of trademark may, upon the requestof the applicant or registered proprietor, be merged into one application for registration of trademark or one registration of trademark.

(2) The request under subsection (1) shall be made to the Registrar before or after the trademark is registered in the form as determined by the Registrar together with the payment of the prescribed fee.

39 PART VI DURATION AND RENEWAL OF REGISTERED TRADEMARKS-39. Duration and renewal of registration.

(1) The registration of trademark shall be for a period of ten years from the date of registration and may be renewed under subsection (2) for a further periods of ten years.

(2) The registration of trademark may be renewed, for some or all of the classes of goods or services, at the request of the registered proprietor in the form as determined by the Registrar together with the payment of the prescribed fee.

(3) If some of the classes of goods or services of the registration are to be renewed, section 37 may be applicable.

(4) Where the request for renewal is made on or before the date of expiry of the registration, the fee payable shall be the renewal fee as prescribed.

(5) Where the request for renewal is made within the period of six months after the date of expiry of the registration, the fees payable shall be the renewal fee as prescribed and a surcharge shall be imposed.

(6) A request for renewal shall be

40 PART VI DURATION AND RENEWAL OF REGISTERED TRADEMARKS-40. Status of unrenewed trademark.

(1) In a case of unrenewed trademark where:

(a) the registration of trademark is not renewed; or

(b) the registration of trademark has been deemed removed and has not been restored, a person other than the person who was registered as the proprietor of the unrenewed trademark may apply for the registration of trademark.

(2) Where an application for the registration of an unrenewed trademark is made by a person other than the person who was registered as the proprietor of the unrenewed trademark, the unrenewed trademark is taken to be a registered trademark for the purposes of an examination in subsection 29(2) of the application at any time when the registration of the unrenewed trademark could have been renewed and restored under section 39.

41 PART VI DURATION AND RENEWAL OF REGISTERED TRADEMARKS-41. Cessation of registration.

The registration of a trademark ceases if:

(a) the trademark has ceased under subsection 39(10), been revoked under section 45 or 46 or been invalidated under section 47; or

(b) the registration of trademark is cancelled under section 44.

42 PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND INVALIDITY-42. Alteration of registered trademark.

(1) Subject to subsection (2), a registered trademark shall not be altered in the Register.

(2) The Registrar may, at the request of the registered proprietor in the form as determined by the Registrar together with the payment of the prescribed fee, allow the alteration of the registered trademark includes the proprietor's name or address, the alteration is limited to the alteration of that name or address.

(3) The alteration of a registered trademark under subsection (2) shall not substantially affect the identity of the trademark.

43 PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND INVALIDITY-43. Correction of Register.

(1) The Registrar may, on the request of the registered proprietor in the form as determined by the Registrar together with the payment of the prescribed fee:

(a) correct an error or enter any change in the name, address or description of the registered proprietor;

(b) correct the details of description of the goods or services in respect of which the trademark is registered without extending in any way the rights given by the existing registration of trademark; or

(c) enter a disclaimer relating to the trademark without extending in any way the rights given by the existing registration of trademark.

(2) The Registrar may, at the request of a licensee of a trademark in the form as determined by the Registrar together with the payment of the prescribed fee, correct an error or enter any change in the name, address or description of that licensee.

(3) The Regist

44 PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND INVALIDITY-44. Voluntary cancellation of registered trademark.

(1) The Registrar shall cancel the registration of trademark in respect of some or all of the goods or services upon the request of the registered proprietor in the form as determined by the Registrar together with the payment of the prescribed fee.

(2) Before cancelling the registration of the trademark, the Registrar shall notify:

(a) any person recorded under Part IX as claiming a right in respect of, or an interest in, the trademark; and

(b) the person to whom the trademark has been assigned or transmitted in the case where the assignment or transmission of the trademark has not yet been recorded by the Registrar after an application has been made to the Registrar to record such assignment or transmission of the trademark.

45 PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND INVALIDITY-45. Revocation of registration by Registrar.

(1) The Registrar shall revoke the registration of trademark:

(a) where a notice of opposition to the registration was filed, in accordance with subsection 35(1), the Registrar failed to take into account the opposition in deciding to register the trademark; or

(b) where before the registration, any person had applied for an extension of time for filing a notice of opposition to the registration, the Registrar failed to take into account the application for extension of time in deciding to register the trademark.

(2) The revocation under subsection (1) shall be subject to the Registrar becoming aware of his failure to take into account the opposition or application for extension of time to file a notice of opposition within two months after the notice was filed or the application was made.

(3) The Registrar shall revoke the registration of trademark within one month from becom

46 PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND INVALIDITY-46. Revocation of registration by Court as to non-use of trademark.

(1) The registration of a trademark may be revoked by the Court on an application by an aggrieved person on any of the grounds as follows:

(a) where within a period of three years following the date of issuance of the notification of registration, the trademark has not been put to use in good faith in Malaysia, by the registered proprietor or with his consent, in relation to the goods or services for which the trademark is registered, and there are no proper reasons for non-use;

(b) where the use of the goods or services under paragraph (a) has been suspended for an uninterrupted period of three years, and there are no proper reasons for non-use;

(c) where in consequence of acts or inactivity of the registered proprietor, it has become the common name in the trade for the product or service for which it is registered; or

(d) where in consequence of the use of the trademark

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Legal Commentary on Trademarks Act 2019 - Section 46

Introduction

The Trademarks Act 2019 represents a significant overhaul of trademark law in Malaysia, aiming to modernize the framework for trademark registration and protection. Section 46 specifically addresses the conditions under which a registered trademark may be revoked, thereby ensuring that trademarks remain in active use and relevant in the marketplace.

What does Section 46 Say

Section 46 outlines the grounds for revocation of a registered trademark. It stipulates that a trademark may be revoked if it has not been used for a continuous period of three years, among other conditions. This provision is designed to prevent the cluttering of the trademark register with inactive marks.

Essential Ingredients

• Non-Use: A key ground for revocation is the non-use of the trademark for three consecutive years.
• Application Process: The section provides a mechanism for interested parties to apply for revocation.
• Notification Requirement: The Registrar must notify parties claiming an interest in the trademark about the application for revocation.

Scope of Section

The scope of Section 46 is broad, covering various scenarios under which a trademark may be deemed inactive or irrelevant. It applies to all registered trademarks in Malaysia and emphasizes the importance of active use in commerce.

Punishment for Section

While Section 46 itself does not prescribe specific punishments, it establishes a framework for revocation that can lead to the loss of trademark rights if the conditions are not met.

Legal Comments

• Non-Use - A registered trademark may be revoked if not used for three years, ensuring active trademarks in the market - [Trademarks in Malaysia - Lexology].
• Application for Revocation - Interested parties can apply for revocation under Section 46, promoting accountability among trademark holders - [Trademarks Act 2019, Malaysia, WIPO Lex].
• Notification Requirement - The Registrar must notify interested parties about revocation applications, ensuring transparency in the process - [PDF] trademarks act 2019 - AWS.
• Revocation Grounds - The grounds for revocation include non-use, which helps maintain the integrity of the trademark register - [Use It or Lose It: Non-Use of a Registered Trademark in Malaysia].
• Continuous Use - The emphasis on continuous use for three years highlights the necessity for trademarks to be actively utilized in commerce - [Trademarks in Malaysia - Lexology].
• Impact on Trademark Holders - Trademark holders must be vigilant about using their marks to avoid revocation, which can affect brand identity and market presence - [Commentaries on the Main Changes to the New Trademarks Act 2019].
• Legal Framework - Section 46 is part of a broader legal framework that aims to modernize trademark law in Malaysia, aligning it with international standards - [Trademarks Act 2019: What Is Invoked to Revoke? - Skrine].
• Revocation Process - The process for revocation under Section 46 is designed to be straightforward, allowing for efficient resolution of disputes - [PDF] trade-marks-bill-2019_1-2.pdf.
• Protection of Active Marks - The section serves to protect active trademarks while removing those that are no longer in use, thus benefiting consumers and businesses alike - [Trademarks in Malaysia - Lexology].
• Legal Certainty - By establishing clear grounds for revocation, Section 46 provides legal certainty for both trademark owners and third parties - [Commentaries on the Main Changes to the New Trademarks Act 2019].
• Encouragement of Use - The provision encourages trademark owners to actively use their marks, fostering a dynamic marketplace - [Use It or Lose It: Non-Use of a Registered Trademark in Malaysia].
• Revocation and Market Dynamics - The revocation of inactive trademarks can lead to more opportunities for new entrants in the market - [Trademarks Act 2019: What Is Invoked to Revoke? - Skrine].
• Judicial Interpretation - Courts may interpret Section 46 in light of its purpose to maintain an active and relevant trademark register - [Trademarks in Malaysia - Lexology].
• Compliance Burden - Trademark owners face a compliance burden to ensure their marks are used to avoid revocation - [Commentaries on the Main Changes to the New Trademarks Act 2019].
• Public Interest - The revocation provisions serve the public interest by preventing the monopolization of unused trademarks - [Use It or Lose It: Non-Use of a Registered Trademark in Malaysia].
• International Standards - Section 46 aligns with international practices regarding trademark use and revocation, enhancing Malaysia's global competitiveness - [Trademarks Act 2019: What Is Invoked to Revoke? - Skrine].
• Potential for Abuse - There is a potential for abuse of the revocation process, necessitating safeguards to protect legitimate trademark holders - [Trademarks in Malaysia - Lexology].
• Future Amendments - Future amendments to Section 46 may be necessary to address emerging issues in trademark law and usage - [Commentaries on the Main Changes to the New Trademarks Act 2019].

47 PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND INVALIDITY-47. Invalidation of registration by Court.

(1) The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that the trademark was registered in breach of section 23.

(2) Notwithstanding subsection (1), where the trademark was registered in breach of paragraph 23(1)(b), (c) or (d), it shall not be declared invalid if, the registration of trademark has acquired a distinctive character after its registration in consequence of its use in relation to the goods or services for which it is registered.

(3) The registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that:

(a) there is an earlier trademark under subsection 24(1), (2)or (3); or

(b) there is an earlier right under subsection 24(4).

(4) The registration of trademark may not be declared invalid under subsection (3) if the propriet

48 PART VIII EFFECTS OF REGISTERED TRADEMARKS Chapter 1 Rights of registered proprietor of trademark-48. Rights conferred by registered trademark.

(1) The registered proprietor of trademark has the exclusive rights:

(a) to use the trademark; and

(b) to authorize other persons to use the trademark, in relation to the goods or services for which the trademark is registered.

(2) The registered proprietor has the right to obtain relief for infringement of his trademark.

(3) The acts amounting to infringement of a trademark are set out in section 54 and references to the infringement of a registered trademark shall be construed accordingly.

(4) The rights shall accrue to the proprietor as from the date of registration of trademark except that:

(a) no infringement proceedings may be begun before the date on which the trademark is in fact registered; and

(b) no offence under sections 99 to 102 is committed by anything done before the date on which the trademark is in fact r

49 PART VIII EFFECTS OF REGISTERED TRADEMARKS Chapter 1 Rights of registered proprietor of trademark-49. Limitation on rights if similar trademarks, etc., registered by different persons.

If trademarks that are identical or similar have been registered by more than one person whether in respect of the same or different goods or services under section 25, the registered proprietor of any one of those trademarks does not have the right to prevent the registered proprietor of any other of those trademarks from using that trademark except to the extent that the first-mentioned proprietor is authorized to do so under the registration of his trademark.

50 PART VIII EFFECTS OF REGISTERED TRADEMARKS Chapter 1 Rights of registered proprietor of trademark-50. Trademark consisting of sign that becomes accepted as sign describing article, etc.

(1) This section applies if a registered trademark contains or consists of, a sign that, after the date of registration of trademark,becomes generally accepted within the relevant trade as the signthat describes or is the name of an article, substance or service.

(2) For the purposes of subsection (1), if the trademark consists of the sign, the registered proprietor:

(a) does not have any exclusive rights to use, or authorize other persons to use, the trademark in relation to:

(i) the article or substance or other goods of the same description; or

(ii) the service or other services of the same description, and

(b) is taken to have ceased to have those exclusive rights from and including the day determined by the Court under subsection (4).

(3) For the purposes of subsection (1), if the trademark contains the sign, the registered propr

51 PART VIII EFFECTS OF REGISTERED TRADEMARKS Chapter 1 Rights of registered proprietor of trademark-51. Trademark relating to article, etc., formerly manufactured under patent.

(1) This section applies if:

(a) a registered trademark contains or consists of, a sign that describes or is the name of:

(i) an article or substance that was formerly exploited under a patent; or

(ii) a service that was formerly provided as a patented process;

(b) it is at least two years since the patent has expired or ceased; and

(c) the sign is the only commonly known way to describe or identify the article, substance or service.

(2) If the trademark contains or consists of the sign in subsection (1), the registered proprietor:

(a) does not have any exclusive right to use, or authorize other persons to use the trademark or the sign in relation to:

(i) the article or substance or other goods of the same description; or

(ii) the service or other services of the same

52 PART VIII EFFECTS OF REGISTERED TRADEMARKS Chapter 1 Rights of registered proprietor of trademark-52. Registration prima facie evidence.

In all legal proceedings relating to a registered trademark:

(a) the Register shall be prima facie evidence of anything contained in the Register;

(b) the registration of the prescribed particulars of any registrable transaction under section 65 shall be prima facie evidence of the transaction; and

(c) the registration of a person as the registered proprietor of the trademark shall be prima facie evidence of:

(i) the validity of the original registration of trademark; and

(ii) any subsequent assignments and transmissions.

53 PART VIII EFFECTS OF REGISTERED TRADEMARKS Chapter 1 Rights of registered proprietor of trademark-53. Registration conclusive.

In all legal proceedings relating to a trademark in the Register, the original registration of the trademark shall, after the expiration of five years from the date of registration be taken to be valid in all respects unless it is shown that:

(a) the original registration was obtained by fraud;

(b) the trademark offends paragraph 23(5)(a), (c), (d) or (e); or

(c) the trademark was, at the commencement of the proceedings, devoid of distinctiveness of the goods or services of the registered proprietor.

54 Chapter 2 Infringement of trademarks-54. Acts amounting to infringement of registered trademark.

(1) A person infringes a registered trademark if he uses a sign which is identical with the trademark in relation to goods orservices which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.

(2) A person infringes a registered trademark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign:

(a) that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or

(b) that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public.

(3) For the purposes of this section, a person uses a sign if he:

(a) applies

5 Chapter 2 Infringement of trademarks-5. Acts not amounting to infringement.

(1) Notwithstanding section 54, a person does not infringe a registered trademark when:

(a) he uses in good faith:

(i) his name or the name of his place of business; or

(ii) the name of his predecessor in business or the name of his predecessor's place of business;

(b) he uses in good faith a sign to indicate:

(i) the kind, quality, quantity, intended purposes, value, geographical origin or other characteristics of goods or services; or

(ii) the time of production of goods or the rendering of services; or

(c) he uses the trademark to indicate the intended purpose of goods which includes accessories or spare parts or service and such use is in accordance with honest practices in industrial or commercial matters.

(2) Notwithstanding section 54, a person does not infringe a registered t

56 Chapter 2 Infringement of trademarks-56. Action for infringement.

(1) The registered proprietor shall have the right to institute Court proceedings against any person who has infringed or is infringing the registered trademark.

(2) The registered proprietor shall have the same right of action in subsection (1) against any person who has performed acts which will make it likely that an infringement will occur.

(3) In an action for an infringement, the Court may grant relief including the following:

(a) an injunction subject to such conditions as the Court thinks fit which includes to prevent goods that involve the infringement from entering into the channels of commerce;

(b) damages;

(c) an account of profits; or

(d) in any case to which subsection (7) applies, the award of such additional damages as it considers appropriate in the circumstances by the Court.

(4) Notwithstanding paragraph (3)(a), upon

57 Chapter 2 Infringement of trademarks-57. Circumstances in which action may not be instituted.

An action for infringement may not be instituted in respect of an act that was done after the registration of trademark has expired or has been deemed removed and before it was renewed or restored under section 39.

58 Chapter 2 Infringement of trademarks-58. Order for erasure, etc., of offending sign.

(1) Subject to subsection (3), where a person is found to have infringed a registered trademark, the Court may make an order requiring him:

(a) to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control; or

(b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, material or articles in question.

(2) If an order under subsection (1) is not complied with or it appears to the Court that it is likely that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered up to such person as the Court may direct for the erasure, removal or obliteration of the sign, or otherwise for the destruction of the goods, material or articles.

(3) Wher

59 Chapter 2 Infringement of trademarks-59. Order for delivery up of infringing goods, material or articles.

(1) The Court may, in addition to any relief granted under sections 56 and 58 in any action for an infringement of a registered trademark, order any infringing goods, material or articles in the possession of the defendant or before the Court to be delivered up to the plaintiff.

(2) Where the Court makes an order under subsection (1), it shall also make an order under section 60 unless it determines that there are grounds for not making such an order.

(3) A person to whom any infringing goods, material or articles are delivered up pursuant to an order under subsection (1) shall, if an order under section 60 is not made at the time of the making of the order under subsection (1), retain them pending the decision of the application under section 60.

60 Chapter 2 Infringement of trademarks-60. Order for disposal of infringing goods, material or articles.

(1) Where infringing goods, material or articles have been delivered up pursuant to an order under section 59, an application may be made to the Court:

(a) for an order that they be destroyed or forfeited to such person as the Court may think fit; or

(b) for a decision that no order under paragraph (a) shall be made.

(2) In considering what order, if any, should be made, the Court shall have regard to:

(a) whether other remedies available in an action for infringement of the registered trademark would be adequate to compensate the plaintiff and protect his interest; and

(b) the need to ensure that no infringing goods, material or articles are disposed of in a manner that would adversely affect the plaintiff.

(3) Notwithstanding subsection (2), where the infringing goods are counterfeit goods, the Court shall order th

61 Chapter 2 Infringement of trademarks-61. Remedy for groundless threats of infringement proceedings.

(1) Where a person threatens another with proceedings for infringement of a registered trademark other than:

(a) the application of the trademark to goods or to material used or intended to be used for labelling or packaging goods;

(b) the importation of goods to which, or to the packaging of which, the trademark has been applied; or

(c) the supply of services under the trademark, any aggrieved person may bring proceedings for relief under this section.

(2) The relief which may be applied for shall be any of the following:

(a) a declaration that the threats are unjustifiable;

(b) an injunction against the continuance of the threats; or

(c) damages in respect of any loss he has sustained by the threats.

(3) The plaintiff shall be entitled to the relief in subsection (2) unless the def

62 PART IX TRADEMARKS AS OBJECT OF PROPERTY-62. Nature of registered trademark as property.

A registered trademark shall be a personal or moveable property and may be the subject of a security interest in the same way as other personal or moveable property.

63 PART IX TRADEMARKS AS OBJECT OF PROPERTY-63. Co-proprietorship of registered trademark.

(1) Where a registered trademark is granted to two or more persons jointly, each of them shall be entitled, subject to any agreement to the contrary, to an equal undivided share in the registered trademark.

(2) This section applies where two or more persons are co-proprietors of a registered trademark under subsection (1).

(3) Subject to subsection (4) or any agreement to the contrary, each co-proprietor shall be entitled, by himself or his agents, to do for his own benefit and without the consent of or the need to account to the other, any act which would otherwise amount to an infringement of the registered trademark.

(4) One co-proprietor shall not without the consent of the other:

(a) grant a licence to use the registered trademark; or

(b) assign or charge his share in the registered trademark.

(5) Infringement proceedings may be brought by any co-proprieto

64 PART IX TRADEMARKS AS OBJECT OF PROPERTY-64. Assignment, etc., of registered trademark.

(1) A registered trademark shall be transmissible by assignment or transmission in the same way as other personal or moveable property, and shall be so transmissible either in connection with the goodwill of a business or independently.(2) An assignment or other transmission of a registered trademark may be partial which is limited so as to apply in relation to some but not all of the goods or services for which the trademark is registered.

(3) An assignment of a registered trademark, or an assent relating to a registered trademark, shall not be effective unless it is in writing and is signed by or on behalf of the assignor and assignee, or a personal representative, as the case may be.

(4) Subsections (1), (2) and (3) shall apply to an assignment by way of security as in relation to any other assignment.

(5) A registered trademark may be the subject of a charge in the same manner as other personal or moveable property.

65 PART IX TRADEMARKS AS OBJECT OF PROPERTY-65. Registration of transaction affecting registered trademark.

(1) The particulars of a registrable transaction as determined by the Registrar shall be entered in the Register upon the approval by the Registrar on application being made in the form as determined by the Registrar together with the payment of the prescribed fee by:

(a) a person claiming to be entitled to an interest in or under a registered trademark by virtue of the registrable transaction; or

(b) any other person claiming to be affected by such a transaction.

(2) Until an application has been made under subsection (1) and approved by the Registrar, the transaction shall be ineffective against a person acquiring a conflicting interest in or under the registered trademark in ignorance of the transaction.

(3) A person who becomes a registered proprietor by virtue of any registrable transaction shall not be entitled to damages or an account of profits in respect of any infrin

66 PART IX TRADEMARKS AS OBJECT OF PROPERTY-66. Trust and equities.

(1) Notice of any implied or constructive trust shall not be entered in the Register.

(2) Notwithstanding that a notice of an express trust or of the beneficiary of an express trust may be entered in the Register:

(a) the Registrar shall not be affected by such notice in the Register; and

(b) for the avoidance of doubt, a failure to enter such notice in the Register shall not affect any rights or duties under the trust.

(3) Subject to the provisions of this Act, equities in respect of a registered trademark may be enforced in like manner as in respect of other personal or movable property.

67 PART IX TRADEMARKS AS OBJECT OF PROPERTY-67. Application for registration of trademark as an object of property.

(1) Sections 62 to 66 shall apply in relation to an application for registration of trademark as they apply in relation to a registered trademark.

(2) For the purposes of subsection (1), the reference in subsection 63(1) to the granting of a registration shall be construed as a reference to the making of an application for the registration of trademark.

(3) In section 65 as it applies in relation to a transaction affecting an application for the registration of trademark, the references to the entry of particulars in the Register, and to the making of an application to register particulars, shall be construed as references to the giving of notice to the Registrar of those particulars.

68 PART X LICENSING-68. Interpretation.

In this Part:

(a) "exclusive licence" means a licence, whether general or limited, authorizing the licensee to the exclusion of all other persons including the person granting the licence, to use a registered trademark in the manner authorized by the licence, and the expression "exclusive licensee" shall be construed accordingly; and

(b) "licence" includes a sub-licence and "licensee" shall be construed accordingly and references to a licence or licensee include references to a sub-licence or sub-licensee.

69 PART X LICENSING-69. Licensing of registered trademark.

(1) A licence to use a registered trademark may be general or limited.

(2) A limited licence may apply:

(a) in relation to some but not all of the goods or services for which the trademark is registered; or

(b) in relation to use of the trademark in a particular manner or a particular locality.

(3) A licence shall not be effective unless it is in writing and is signed by or on behalf of the grantor.

(4) A licence to use a registered trademark shall be binding on every successor in title to the grantor's interest:

(a) except any person who, in good faith and without anynotice, actual or constructive, of the licence, has given valuable consideration for the interest in the registered trademark; or

(b) unless the licence provides otherwise, and any reference to doing anything with, or without, the consent of a registered prop

70 PART X LICENSING-70. Rights of licensees in case of infringement.

(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trademark except for an exclusive licensee under subsections 71(1) and (2), the licensee has the right to bring infringement proceeding in his own name.

(2) A licensee shall be entitled, unless his licence or any license through which his interest is derived, provides otherwise, to call on the registered proprietor of the trademark to take infringement proceedings in respect of any matter which affects his interests.

(3) For the purposes of subsection (2), if the registered proprietor refuses or does not take infringement proceedings within two months after being called upon, the licensee may bring the proceedings in his own name as if he were the registered proprietor.(4) Where infringement proceedings are brought by a licensee by virtue of this section, the licensee may not, without leave of the Court, proceed with the acti

71 PART X LICENSING-71. Exclusive licensee having rights and remedies of assignee.

(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

(2) Where or to the extent of the provision referred to in subsection (1), the licensee shall be entitled, subject to the provisions of the licence and this section, to bring infringement proceedings, against any person other than the registered proprietor, in his own name.

(3) Any such rights and remedies of an exclusive licensee are concurrent with those of the registered proprietor and references to the registered proprietor relating to infringement shall be construed accordingly.(4) In an action brought by an exclusive licensee under this section, a defendant may avail himself of any defence which would have been available to him as if the action had been brought by the registered propr

72 PART XI COLLECTIVE MARKS AND CERTIFICATION MARKS-72. Collective marks.

(1) A collective mark shall be a sign distinguishing the goods or services of members of the association which is the proprietor of the collective mark from those of other undertakings.

(2) The provisions of this Act apply to collective marks subject to the provisions of the First Schedule.

73 PART XI COLLECTIVE MARKS AND CERTIFICATION MARKS-73. Certification marks.

(1) A certification mark shall be a sign indicating that the goods or services in connection with which it shall be used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

(2) The provisions of this Act apply to certification marks subject to the provisions of the Second Schedule.

74 PART XII INTERNATIONAL MATTERS Chapter 1 Madrid Protocol-74. Interpretation.

For the purposes of this Part, "Madrid Protocol" means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June 1989.

75 PART XII INTERNATIONAL MATTERS Chapter 1 Madrid Protocol-75. Regulations relating to Madrid Protocol.

(1) The Minister may make regulations to give effect to the provisions of the Madrid Protocol in Malaysia.

(2) Without prejudice to the generality of subsection (1), regulations may provide for all or any of the following purposes:

(a) all matters relating to applications for international registration of trademarks including where the basic Malaysia application or registration fails or ceases to be in force and its renewal;

(b) all matters relating to requests to extend to Malaysia the protection resulting from international registration of trademark and including the effects of such requests;

(c) all matters relating to the protection to protected international registration designating Malaysia including the cessation of such protection;

(d) all matters relating to the transformation of an application for an international registration, or an international registr

76 Chapter 2 Conventions and international arrangements-76. Protection of well-known trademarks.

(1) A well-known trademark shall be entitled to protection under this section:

(a) whether or not the trademark has been registered in Malaysia, or an application for the registration of trademark has been made to the Registrar; and

(b) whether or not the proprietor of the trademark carries on business, or has any goodwill, in Malaysia.

(2) Subject to subsections (5) and (6), the proprietor of a well-known trademark shall be entitled to restrain by injunction the use in Malaysia, in the course of trade and without the proprietor's consent, of any trademark which, or an essential part of which, is identical with or similar to the proprietor's trademark:

(a) in relation to identical or similar goods or services, where the use is likely to cause confusion; or

(b) in relation to any goods or services, where the use of the trademark would in

77 Chapter 2 Conventions and international arrangements-77. Permitted use of well-known trademarks.

(1) Notwithstanding section 76, the proprietor of a well-known trademark shall not be entitled to restrain by injunction the use in Malaysia, in accordance with honest practices in industrial or commercial matters, by any person of:

(a) the name of:

(i) the person himself;

(ii) the person's place of business;

(iii) the person's predecessor in business; or

(iv) the place of business of the person's predecessorin business;

(b) any sign to indicate:

(i) the kind, quality, quantity, intended purpose, value, geographical origin or other characteristic of goods or services; or

(ii) the time of production of goods or of the rendering of services; or

(c) the trademark to indicate the intended purpose of goods which includes accessories or spare parts or services.

(2) Notw

78 Chapter 2 Conventions and international arrangements-78. National emblems, etc., of Convention countries under Article 6ter of Paris Convention.

(1) A trademark which consists of or contains the flag of a Convention country shall not be registered without the authorization of the competent authorities of that country, unless it appears to the Registrar that the use of the flag in the manner proposed is permitted without such authorization.

(2) A trademark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention or the TRIPS Agreement shall not be registered without the authorization of the competent authorities of that country.

(3) A trademark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention or the TRIPS Agreement, be registered of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the

79 Chapter 2 Conventions and international arrangements-79. Emblems, etc., of certain international intergovernmental organization under Article 6ter of Paris Convention.

(1) A trademark which consists of or contains any armorial bearing, flag, emblem, abbreviation or name of international intergovernmental organizations of which one or more Convention countries are members and which is protected under the Paris Convention or the TRIPS Agreement shall not be registered without the authorization of the international intergovernmental organization concerned, unless it appears to the Registrar that the use of the armorial bearing, flag, emblem, abbreviation or name in the manner proposed:

(a) would indicate to the public that a connection exists between the organization and the trademark; or

(b) is not likely to mislead the public as to the existence of a connection between the user and the organization.

(2) References to armorial bearing, flag, emblems, abbreviation or name of an international intergovernmental organization under this section, apply equa

80 Chapter 2 Conventions and international arrangements-80. Notification under Article 6ter of the Paris Convention.

(1) For the purposes of section 78, state emblems of a Convention country, other than the national flag, and official signs or hallmarks, shall be regarded as protected under the Paris Convention or the TRIPS Agreement only if, or to the extent that:

(a) the country in question has notified Malaysia in accordance with Article 6ter(3) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, that it desires to protect that emblem, sign or hallmark;

(b) the notification remains in force; and

(c) Malaysia has not objected to it in accordance with Article 6ter(4) of the Paris Convention or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.

(2) For the purposes of section 79, the armorial bearing, flag, emblems, abbreviations and names of an international intergovernmental organization shall be regarded a

81 PART XIII BORDER MEASURES-81. Interpretation.

In this Part:

(a) "authorized officer" means:

(i) a proper officer of customs as defined under the Customs Act 1967 [Act 235]; or

(ii) any public officer, or any person in the employment of the Corporation, appointed by the Minister to exercise the powers and perform the duties conferred and imposed on an authorized officer by this Part;

(b) "goods in transit" means goods imported, whether or not landed or transshipped within Malaysia, which are to be carried to another country either by the same or another conveyance;

(c) "import" means to bring or cause to be brought into Malaysia by whatever means;

(d) "retention period", in relation to seized goods, means:

(i) the period specified in a notice given under section 85 in respect of the goods; or

(ii) if the period has been extended under section 85, t

82 PART XIII BORDER MEASURES-82. Restriction on importation of infringing goods.

(1) Any person may file an application to the Registrar stating:

(a) that he is the registered proprietor, or the licensee having the power to file such application;

(b) that, at a time and place specified in the application, goods which, in relation to the registered trademark, are infringing 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 the documents and information as determined by the Registrar relating to the goods as to enable them to be identified by the authorized officer, and together with the payment of the prescribed fee.

(3) Upon receipt of the application under subsection (1), theRegistrar shall determine the application, and the Registrar shall within a reasonable period inform the applicant whether the application has been app

83 PART XIII BORDER MEASURES-83. Security.

The Registrar shall, upon giving his approval under section 82, 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 infringing goods;

(b) prevent abuse and to protect the importer; or

(c) pay such compensation as may be ordered by the Court under this Part.

84 PART XIII BORDER MEASURES-84. Secure storage of seized goods.

(1) Seized goods shall be taken to such secure place as the Registrar may direct or as the authorized officer deems fit.

(2) If it is stored on the direction of the authorized officer, the authorized officer shall inform the Registrar of the whereabouts of the seized goods.

85 PART XIII BORDER MEASURES-85. Notice.

(1) As soon as is reasonably practicable after the infringing goods are seized under section 82, the authorized officer shall give to the Registrar, importer and the applicant, either personally or by registered post, a written notice identifying the infringing goods, stating that they have been seized and the whereabout of the goods.

(2) A notice under subsection (1) shall also state that the infringing 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 in the form as determined by the Registrar.

(4) The applicant may, by written notice given to the Registrar before the end of the period specified in the notice (the initial period), r

86 PART XIII BORDER MEASURES-86. Inspection, release, etc., of seized goods.

(1) The Registrar may permit the applicant or importer to inspect the seized goods if the applicant or importer agrees to give the requisite undertakings.

(2) The requisite undertakings under subsection (1) are undertakings in writing that the person giving the undertakings shall:

(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 Reg

87 PART XIII BORDER MEASURES-87. Forfeiture of seized goods by consent.

(1) Subject to subsection (2), the importer may, by writtennotice to the Registrar, consent to the seized goods being forfeited.

(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 any manner as determined by the Registrar.

88 PART XIII BORDER MEASURES-88. 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 shall not be 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 a written notice to the Registrar stating that he consents to the release of the

89 PART XIII BORDER MEASURES-89. Compensation for failure to take action.

(1) Where goods have been seized pursuant to a notice given under section 82 and the applicant does not 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.

90 PART XIII BORDER MEASURES-90. Actions for infringement of registered trademark.

(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, depending on the circumstances of the case.

(2) The Registrar or the authorized officer shall be entitled to be heard on the hearing of an action for infringement.

(3) The 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.

(4) The Registrar shall comply with an order made under subsection (1).

(5) The Court may

91 PART XIII BORDER MEASURES-91. 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.

92 PART XIII BORDER MEASURES-92. 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 the Court under this Part, exceed the amount of security deposited under section 83, the amount of the excess shall be a debt due to the Registrar.

(2) The debt under subsection (1) shall be due by the applicant, or, if there are two or more applicants, by the applicants jointly and severally.

93 PART XIII BORDER MEASURES-93. Ex-officio action.

(1) Based on prima facie evidence, any authorized officer may detain or suspend the release of goods bearing, without authorization, a trademark which is identical with the registered trademark and the goods are identical with the goods of a registered trademark, which are to be imported or destined for export.

(2) Where such goods have been detained, the authorized officer:

(a) shall inform the Registrar, the importer and the registered proprietor; and

(b) may at any time seek from the registered proprietor any information that may assist him to exercise his powers.

(3) Subject to section 88, an importer may lodge an appeal to the Director General under the Customs Act 1967 against the detention of goods or suspension of the release of goods under subsection (1).

(4) The authorized officer shall only be exempted from liability if his actions under subsection (1) are d

94 PART XIII BORDER MEASURES-94. De Minimis Imports.

(1) The provisions in this Part shall not apply to small quantities of goods of a non-commercial nature contained in travelers' personal luggage or sent in small consignments.

(2) Small quantities referred to in subsection (1) means not more than two goods.

95 PART XIV TRADEMARK AGENTS-95. Recognition of registered trademark agents and circumstances in which a registered trademark agent shall be required.

(1) Any act which is required or authorized by this Act to be done by or to a person in connection with the preliminary procedure, or application for registration of trademark, or any procedure relating to a registered trademark, may be done by or to a registered trademark agent duly authorized by that person in the manner as determined by the Registrar.

(2) Where a person appearing before the Registrar in a preliminary procedure or applying for registration of trademark or any procedure relating to a registered trademark, does not reside or carry on business principally in Malaysia, he shall appoint and authorize a registered trademark agent to act for him.

(3) Upon being appointed and authorized by the person to act for him under subsection (2), the registered trademark agent shall:

(a) continue to be the agent of the person; and

(b) be answerable for all acts, matters and things that are

96 PART XIV TRADEMARK AGENTS-96. Register of Trademark Agents.

(1) The Registrar shall keep and maintain a register called the

(2) The Register of Trademark Agents shall contain the names, addresses and other prescribed matters of registered trademark agents who shall act on behalf of any person for the purposes of section 95.

97 PART XIV TRADEMARK AGENTS-97. Registration of trademark agent.

(1) The Registrar shall register a person as a registered trademark agent if he satisfies the prescribed requirements and enters his name in the Register of Trademark Agents.

(2) For the purposes of this Part, the Registrar may:

(a) cancel the registration of trademark agent on the grounds as may be prescribed;

(b) allow voluntary cancellation of the registration of a trademark agent upon the application made by the registered trademark agent;

(c) allow a change of name or address of service of the registered trademark agent upon the application made by the registered trademark agent;

(d) remove the registration of a trademark agent upon the death of the registered trademark agent; and

(e) refuse to recognize any person as a registered trademark agent subject to any circumstances as prescribed.

(3) Any cancellation of the regi

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Legal Commentary on Section 97 of the TRADEMARKS ACT 2019

Introduction

Section 97 of the Trademarks Act 2019 addresses the penalties and punishments related to specific offences concerning trademarks. It aims to deter infringing activities and falsification of trademarks, aligning with the broader legal framework that protects trademark rights.

What does Section 97 Say

While the exact wording of Section 97 is not provided in the sources, it generally stipulates the punishments for offences such as falsification, infringement, and unauthorized use of trademarks. It prescribes imprisonment, fines, or both as penalties for violations.

Essential Ingredients

• Falsification or removal of trademarks applied to goods or services.
• Knowingly engaging in infringing activities.
• Registration or use of a trademark in violation of the law.
• Acts committed intentionally or knowingly.

Scope of Section

• Applies to acts of falsification, removal, or unauthorized use of trademarks.
• Covers both registered and unregistered trademarks, depending on the offence.
• Extends to activities related to goods and services that involve trademarks.
• Encompasses acts committed knowingly or intentionally.

Punishment for Section

• Imprisonment, often up to two years or more, as per the Malaysian context .
• Fines, which can be substantial, e.g., up to RM1,000,000 or imprisonment up to 5 years .
• Both imprisonment and fines may be imposed concurrently .

Legal Comments

• Deterrence - The penalties serve as a strong deterrent against trademark falsification and infringement, aligning with the purpose of protecting intellectual property rights .
• Severity of Punishment - The potential for imprisonment and hefty fines reflects the seriousness with which the law treats trademark offences .
• Scope of Offences - The section likely covers a broad range of acts, including falsification, removal, and unauthorized use, emphasizing comprehensive protection .
• Intent Requirement - The offences generally require knowledge or intent, which prevents penalizing innocent acts inadvertently .
• Comparison with Other Jurisdictions - Similar provisions exist in other jurisdictions, such as India and Malaysia, indicating a common approach to penalizing trademark crimes .
• Protection of Trademark Rights - The section reinforces the importance of trademark integrity and the legal consequences of infringing or falsifying marks .
• Legal Enforcement - The provisions facilitate enforcement actions by authorities, ensuring that infringers face significant penalties .
• Impact on Commercial Practices - The law discourages counterfeit and falsified goods, promoting fair competition .
• Relevance to Trademark Owners - Owners are encouraged to vigilantly protect their marks, knowing that violations carry strict penalties .
• Legal Consistency - The penalties align with other provisions of the Act and related legislation, ensuring consistency in legal enforcement .
• Public Confidence - Stringent penalties help maintain public trust in genuine trademarks and the products/services they represent .
• Legal Remedies - In addition to criminal penalties, civil remedies such as damages or injunctions are also available under the Act .
• International Standards - The penalties reflect international best practices in intellectual property enforcement .
• Reform and Modernization - The Act, including Section 97, modernizes trademark law to address contemporary challenges like counterfeiting and digital infringement .
• Legal Certainty - Clear penalties ensure legal certainty and guide trademark owners and infringers alike .

Note: The commentary is based on available sources and general legal principles related to Section 97 of the TRADEMARKS ACT 2019. Specific statutory language was not provided, so interpretations are aligned with comparable legal frameworks.

98 PART XIV TRADEMARK AGENTS-98. Privileged communications with registered trademark agent.

(1) A communication made between a registered trademark agent and the person appointing and authorizing the agent in matters relating to trademarks, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his client.

(2) A registered trademark agent has, in relation to documents and property of the person appointing and authorizing the agent in a matter relating to trademarks, the same right of lien that a solicitor has in relation to the documents and property of a client.

99 PART XV OFFENCE-99. Counterfeiting a trademark.

(1) Any person who counterfeits a registered trademark by:

(a) making a sign identical with or similar to a registered trademark with the intent to deceive; or

(b) falsifying a genuine registered trademark, whether by alteration, addition, effacement, partial removal or otherwise, without the consent of the registered proprietor of the trademark commits an offence and shall, on conviction, be liable to a fine not exceeding one million ringgit or to imprisonment for a term not exceeding five years or to both.

(2) In a prosecution under this section, the burden of proving the consent of the registered proprietor of the trademark shall be upon the accused person.

100 PART XV OFFENCE-100. Falsely applying a registered trademark to goods or services.

(1) For the purposes of this section and section 102, a person falsely applies a registered trademark to goods or services when:

(a) he applies the trademark or a sign likely to be mistaken for that trademark to the goods or services without the consent of the registered proprietor; and

(b) in the case of an application to goods, the goods are not the genuine goods of the registered proprietor or licensee of the trademark.

(2) For the purposes of subsection (1), a trademark shall be deemed to be applied to goods or services if it is used in:

(a) any sign or advertisement; or

(b) any invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium, and the goods are delivered, or services provided to a person pursuant to a request or order made by reference to the tra

101 PART XV OFFENCE-101. Making or possessing of article for committing offence.

Any person who:

(a) makes an article specifically designed or adapted for making copies of a registered trademark or a sign likely to be mistaken for that trademark; or

(b) has in his possession, custody or control an article as in paragraph (a), knowing or having reason to believe that it has been, or is to be, used for, or in the course of, committing an offence against sections 99 and 100, commits an offence and shall, on conviction, be liable to a fine not exceeding one million ringgit or to imprisonment for a term not exceeding five years or to both.

102 PART XV OFFENCE-102. Importing or selling, etc., goods with falsely applied trademark.

(1) Any person who:

(a) imports into Malaysia for the purpose of trade or manufacture;

(b) sells or offers or exposes for sale; or

(c) has in his possession, custody or control for the purpose of trade or manufacture, any goods to which a registered trademark is falsely applied under section 100, unless he proves that having taken all reasonable precautions against committing an offence under this section, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the trademark and on demand made by the Assistant Controller as defined in section 109, he gave all the information in his knowledge with respect to the persons from whom he obtained the goods, commits an offence and shall, on conviction, be liable:

(i) if the person is a body corporate, to a fine not exceeding fifteen thousand ringgit for each of the goods with the

103 PART XV OFFENCE-103. False entries to Trademarks Office or in Register.

Any person who:

(a) makes or causes to be made a false entry to the Trademarks Office or in the Register;

(b) makes or causes to be made a false entry in any certified copy deposited in the Trademarks Office;

(c) makes or causes to be made any thing false purporting to be a copy of an entry in the Register or to be filed with the Trademarks Office; or

(d) produces or tenders or causes to be produced or tendered in evidence any thing referred to in paragraph (c), knowing or having reasons to believe that the entry or thing is false, commits an offence and shall, on conviction, be liable to a fine not exceeding fifty thousand ringgit or to a term of imprisonment not exceeding five years or to both.

104 PART XV OFFENCE-104. Falsely representing trademark as registered.

(1) Any person who:

(a) falsely represents that a trademark is a registered trademark; or

(b) makes a false representation as to the goods or services for which a trademark is registered, knowing or having reason to believe that the representation is false commits an offence and shall, on conviction, be liable to a fine not exceeding ten thousand ringgit.

(2) For the purposes of this section, the use in the course of trade in Malaysia in relation to a trademark of the word "registered" or any other word or symbol importing a reference expressly or impliedly to registration, shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in Malaysia and that the trademark is in fact so registered for the goods or services in question.

105 PART XV OFFENCE-105. Offence relating to disobedience to summons or refusal to give evidence.

(1) The Registrar may, for the purposes of this Act:

(a) summon witnesses;

(b) receive evidence on oath; and

(c) require the production of a document or article.

(2) Any person who disobeys the summons or request under subsection (1) without any lawful excuse commits an offence and shall, on conviction, be liable to a fine not exceeding two thousand ringgit or to imprisonment for a term not exceeding three months or to both.

106 PART XV OFFENCE-106. Falsely representing trademark as a protected international registration designating Malaysia.

(1) A person who:

(a) falsely represents a trademark as a protected international registration designating Malaysia; or

(b) makes a false representation as to the goods or services for which a protected international registration designating Malaysia confers protection in Malaysia, knowing or having reason to believe that the representation is false commits an offence and shall, on conviction, be liable to a fine not exceeding ten thousand ringgit.

107 PART XV OFFENCE-107. Misuse of title "Trademarks Office".

Any person who uses on his place of business or any document issued by him or otherwise, the words "Trademarks Office" or any other words suggesting that his place of business is, or is officially connected with, the Trademarks Office commits an offence and shall, on conviction, be liable to a fine not exceeding fifty thousand ringgit or to imprisonment for a term not exceeding two years or to both.

108 PART XV OFFENCE-108. Unregistered persons practising, etc., as a registered trademark agent.

Any person who carries on business, practices, acts, describes himself, holds himself out, or permits himself to be described or held out, as a trademark agent without being registered under this Act commits an offence and shall, on conviction, be liable to a fine not exceeding fifty thousand ringgit or two years imprisonment or both.

109 PART XVI INVESTIGATION AND ENFORCEMENT Chapter 1 Investigation and complaints-109. Interpretation.

For the purposes of this Part:

(a) "Controller", "Deputy Controller" or "Assistant Controller" mean the Controller, Deputy Controller or Assistant Controller, of the Trade Descriptions appointed under section 3 of the Trade Descriptions Act 2011 [Act 730]; and

(b) "premises" means any place, stationary or otherwise established or set up by any person, whether such place is with or without enclosure, and includes vehicles, aircrafts, ships and any other vessel.

110 PART XVI INVESTIGATION AND ENFORCEMENT Chapter 1 Investigation and complaints-110. Power of Controller, Deputy Controllers or Assistant Controllers.

(1) The Controller shall perform the duties imposed and exercise the powers conferred on him under this Part subject to the general direction and control of the Minister.

(2) The Deputy Controllers and Assistant Controllers shall be under the direction and control of the Controller. (3) The Deputy Controllers may perform all the duties imposed and exercise all the powers conferred on the Controller.

(4) The Controller and Deputy Controllers may perform all the duties imposed and exercise all the powers conferred on the Assistant Controllers.

(5) The Controller or the Deputy Controller may in writing delegate all or any of his powers, duties or functions under this Part to any Assistant Controller.

111 PART XVI INVESTIGATION AND ENFORCEMENT Chapter 1 Investigation and complaints-111. Power of investigation.

(1) Where the Assistant Controller has reasonable grounds to suspect that any offence is or will be committed under this Act, the Assistant Controller may conduct such investigation as the Assistant Controller thinks expedient for the due administration of this Act.

(2) Any Assistant Controller investigating any commission of an offence under this Act may exercise all or any of the powers in relation to police investigation in seizable cases given by the Criminal Procedure Code [Act 593].

112 PART XVI INVESTIGATION AND ENFORCEMENT Chapter 1 Investigation and complaints-112. Complaints to the Assistant Controller.

(1) The Assistant Controller may, upon a complaint by a person, conduct an investigation on any person who has committed or is committing any offence under this Act.

(2) The complaint made under subsection (1) shall specify the person against whom the complaint is made or the premises where the alleged offence is committed and details of the alleged offence under this Act.

(3) If the complaint made under subsection (1) is in relation to a trademark which is not identical with the registered trademark, any registered proprietor or licensee shall obtain the Registrar's verification in the form as determined by the Registrar together with the payment of the prescribed fee to be submitted to the Assistant Controller.

(4) The Registrar's verification under subsection (3), shall be prima facie evidence in any proceedings before any court of law.

113 Chapter 2 Information gathering powers-113. Power of the Assistant Controller to require provision of information.

(1) This section applies if the Assistant Controller in carrying out an investigation under this Part has reason to believe that any person:

(a) has any information or any document that is relevant to the performance of the Assistant Controller's powers and functions under this Act; or

(b) is capable of giving any evidence which the Assistant Controller has reason to believe is relevant to the performance of the Assistant Controller's powers and functions under this Act.

(2) Notwithstanding any provision of any other written law, the Assistant Controller, by written notice, may direct any person:

(a) to provide the Assistant Controller, within the period and in the manner and form specified in the notice, any information or document referred to in subsection (1);

(b) to produce to the Assistant Controller, within the period and in the man

114 Chapter 2 Information gathering powers-114. Assistant Controller may retain documents.

(1) The Assistant Controller may take and retain for such duration as he deems necessary, any document obtained under this Part.

(2) The person who provided the document is entitled to be supplied, as soon as practicable, with a copy certified by the Assistant Controller to be a true copy of the document.

(3) Notwithstanding the provisions of any other written law, the certified copy of the document shall be admissible as evidence as if it were the original document.

(4) If the Assistant Controller is satisfied that it is no longer necessary to retain the document, the Assistant Controller may return the document to the person who provided the document, as soon as practicable.

115 Chapter 2 Information gathering powers-115. Confidentiality.

(1) Any person who discloses or makes use of any confidential information or document with respect to a particular enterprise or the affairs of an individual obtained by virtue of any provision of this Act commits an offence and shall, on conviction, be liable to a fine not exceeding five hundred thousand ringgit.

(2) Nothing in subsection (1) shall operate to prevent the disclosure of information where:

(a) the disclosure is made with the consent of the person from whom the information or document was obtained;

(b) the disclosure is made in circumstances where the information provided is framed in such a manner that the source of the information could not be ascertained;

(c) the information is already in the public domain;

(d) the disclosure is made to facilitate the performance of the functions or powers of the Controller, Deputy Controller or Assistant Controlle

116 Chapter 2 Information gathering powers-116. Privileged communication.

(1) No person shall be required, under any provision of this Part, to produce or disclose any communication between a professional legal adviser and his client which would be protected from disclosure in accordance with section 126 of the Evidence Act 1950 [Act 56].

(2) The Controller may require an advocate and solicitor to provide any document under section 114.

(3) Where the document required under subsection (2) contains privileged communication, made by or on behalf of or to the advocate and solicitor in his capacity as an advocate and solicitor:

(a) the advocate and solicitor shall be entitled to refuse to comply with the requirement; or

(b) the person to whom or by or on behalf of whom the privileged communication was made or, if the person is a body corporate that is under receivership or is in the course of being wound up, the receiver or the liquidator, as the case may be, may agr

117 Chapter 2 Information gathering powers-117. Giving false or misleading information, evidence or document.

A person who does not disclose or omits to give any relevant information, evidence or document, or provides any information, evidence or document that he knows or has reason to believe is false or misleading, in the course of investigation by the Assistant Controller, commits an offence and shall, on conviction, be liable to a fine not exceeding one hundred thousand ringgit.

118 Chapter 2 Information gathering powers-118. Destruction, concealment, mutilation and alteration of records.

A person who:

(a) destroys, conceals, mutilates or alters; or

(b) sends or attempts to send or conspires with any other person to remove from his premises or send out of Malaysia, any goods, documents, material, articles or things kept or maintained with intent to defraud the Assistant Controller or to prevent, delay or obstruct the carrying out of an investigation or the exercise of any power by the Assistant Controller under this Act commits an offence and shall, on conviction, be liable to a fine not exceeding one hundred thousand ringgit.

119 Chapter 3 Powers of arrest, search, seizure etc.-119. Power of arrest.

(1) Any Assistant Controller may arrest without warrant any person whom he reasonably believes has committed or is attempting to commit an offence under sections 99 to 102 of this Act.

(2) Any Assistant Controller making an arrest under subsection (1) shall, without unnecessary delay, bring the person arrested to the nearest police station, and thereafter the person shall be dealt with in accordance with the law relating to criminal procedure for the time being in force.

120 Chapter 3 Powers of arrest, search, seizure etc.-120. Power to enter premises, inspect and seize goods, etc.

(1) Any Assistant Controller may, at all reasonable hours, exercise the following powers:

(a) he may, for the purpose of ascertaining whether any offence under this Act has been committed, inspect any goods, documents, material, articles or things and enter any premises other than premises used only for dwelling;

(b) if he has reasonable cause to believe that an offence under this Act has been committed, he may seize and detain any goods, documents, material, articles or things for the purpose of ascertaining, by testing or otherwise, whether the offence has been committed;

(c) he may seize and detain any goods, documents, material, articles or things which he has reason to believe may be required as evidence in any proceedings for an offence under this Act; and

(d) he may, for the purpose of exercising his powers under this subsection, seize goods, documents, material, ar

121 Chapter 3 Powers of arrest, search, seizure etc.-121. Magistrate may issue search warrant.

(1) Whenever it appears to a Magistrate, upon written information on oath and after such inquiry as he considers necessary, that there are reasonable grounds to believe that any person has committed or is committing an offence under this Act, so that any evidence or thing which is necessary to the conduct of an investigation into any offence may be found in any premises, the Magistrate may issue a warrant authorizing any Assistant Controller named in the warrant to enter the premises at any time, with or without assistance, and if need be by force to search for and seize any such evidence or thing.

(2) An Assistant Controller entering any premises under this section may take with him such other persons and such equipment as may appear to him necessary and on leaving any premises which he has entered by virtue of a warrant under the preceding subsection he shall, if the premises are unoccupied or the occupier is temporarily absent, leave them as

122 Chapter 3 Powers of arrest, search, seizure etc.-122. Search may be made without warrant.

If the Assistant Controller is satisfied upon information received that he has reasonable cause to believe that by reason of delay in obtaining a search warrant under section 121 the investigation would be adversely affected or evidence of the commission of an infringement or offence is likely to be tampered with, removed, damaged or destroyed, the Assistant Controller may enter the premises and exercise in, upon and in respect of the premises all the powers referred to in section 121 in as full and sample a manner as if he were authorized to do so by a warrant issued under that section.

123 Chapter 3 Powers of arrest, search, seizure etc.-123. Access to recorded information or computerized data, etc.

(1) Any Assistant Controller exercising his powers under sections 120, 121 and 122 shall be given access to any recorded information or computerized or digitalized data, whether stored in a computer or otherwise.

(2) In addition, the Assistant Controller exercising his powers under sections 120, 121 and 122:

(a) may inspect the operation of any computer and any associated apparatus or material which he has reasonable cause to suspect is or has been used in connection with that information or data; and (b) may require:

(i) the person, by whom or on whose behalf, the Assistant Controller has reasonable cause to suspect the computer is or has been so used in connection with the information or data; or

(ii) the person having charge of, or is otherwise concerned with, the operation of the computer, apparatus or material in connection with the information or data, to provide him wit

124 Chapter 3 Powers of arrest, search, seizure etc.-124. Tipping-off.

(1) Any person who:

(a) knows or has reason to suspect that an Assistant Controller is acting, or is proposing to act, in connection with an investigation which is being, or is about to be, conducted under or for the purposes of this Act and discloses toany other person information or any other matter which is likely to prejudice that investigation or proposed investigation; or

(b) knows or has reason to suspect that a disclosure has been made to an Assistant Controller and discloses to any other person information or any other matter which is likely to prejudice any investigation which might be conducted following the disclosure,commits an offence and shall, on conviction, be liable to a fine not exceeding one hundred thousand ringgit.

(2) Nothing in subsection (1) makes it an offence for an advocate and solicitor or his employee to disclose any information or other matter:

125 Chapter 3 Powers of arrest, search, seizure etc.-125. Warrant admissible notwithstanding defects.

A search warrant issued under this Act shall be valid and enforceable notwithstanding any defect, mistake or omission in the warrant or in the application for such warrant and any goods, documents, material, articles or things seized under such warrant shall be admissible in evidence in any proceedings under this Act.

126 Chapter 3 Powers of arrest, search, seizure etc.-126. List of seized goods, etc.

(1) Except as provided in subsection (2), where any goods, documents, material, articles or things is seized under this Part, the Assistant Controller who effected the seizure shall as soon as practicable prepare a list of the things seized and immediately deliver a copy of the list signed by him to the occupier of the premises which has been searched, or to his agent or servant, at the premises.

(2) Where the premises are unoccupied, the Assistant Controller who effected the seizure shall wherever possible post a list of the things seized conspicuously on the premises.

127 Chapter 3 Powers of arrest, search, seizure etc.-127. Forfeiture of seized goods, etc.

(1) All goods, documents, material, articles or things seized in exercise of any power conferred under this Act shall be liable to forfeiture.

(2) An order for the forfeiture or for the release of any goods, documents, material, articles or things seized in exercise of any power conferred under this Act shall be made by the court before which the prosecution with regard thereto has been held and an order for the forfeiture of the goods, documents, material, articles or things shall be made if it is proved to the satisfaction of the court that an offence under this Act has been committed and that the goods, documents, material, articles or things were the subject matter of or were used in the commission of the offence notwithstanding that no person may have been convicted of such offence.

(3) If there is no prosecution with regard to any goods, documents, material, articles or things seized in exercise of any power conferred under this A

128 Chapter 3 Powers of arrest, search, seizure etc.-128. Release of seized goods, etc.

(1) If any goods, documents, material, articles or things has been seized under this Act, the Assistant Controller who effected the seizure may release the goods, documents, material, articles or things to the person as he determines to be lawfully entitled to it, if he is satisfied that the goods, documents, material, articles or things is not otherwise required for the purpose of any proceedings under this Act, or for the purpose of any prosecution under any other written law, and in such event neither the Assistant Controller effecting the seizure, nor the Federal Government, the Controller or any person acting on behalf of the Federal Government or the Controller shall not be liable to any proceedings by any person if the seizure and the release of the goods, documents, material, articles or things had been effected in good faith.

(2) A record in writing shall be made by the Assistant Controller effecting the release of anything under subse

129 Chapter 3 Powers of arrest, search, seizure etc.-129. Seizure of perishable goods.

Where any goods seized in exercise of the powers conferred by this Act are of a perishable nature or where the custody of such goods involves unreasonable expense and inconvenience, such goods may be sold by the Assistant Controller at any time and the proceeds of the sale held to abide by the result of any prosecution or claim under this section.

130 Chapter 3 Powers of arrest, search, seizure etc.-130. No cost or damages arising from seizure to be recoverable.

No person shall, in any proceedings before any court in respect of any goods, documents, material, articles or things seized in the exercise or the purported exercise of any power conferred under this Act, be entitled to the costs of such proceedings or to any damages or other relief unless such seizure was made without reasonable cause.

131 Chapter 3 Powers of arrest, search, seizure etc.-131. Obstruction.

Any person who:

(a) refuses to give any Assistant Controller access to any premises which the Assistant Controller is entitled to have under this Act or in the execution of any duty imposed or power conferred by this Act; or

(b) assaults, obstructs, hinders or delays any Assistant Controller in effecting any entry which the Assistant Controller is entitled to effect under this Act or in the execution of any duty imposed or power conferred by this Act, commits an offence and shall, on conviction, be liable to a fine not exceeding one hundred thousand ringgit.

132 Chapter 3 Powers of arrest, search, seizure etc.-132. Evidence of agent provocateur is admissible.

(1) Notwithstanding any rule of law or the provisions of this Act or any other written law to the contrary, no agent provocateur shall be presumed to be unworthy of credit by reason only of his having attempted to abet or abetted the commission of an offence by any person under this Act if the attempt to abet or abetment was for the sole purpose of securing evidence against such person.

(2) Notwithstanding any rule of law or the provisions of this Act or any other written law to the contrary, any statement, whether oral or in writing made to the agent provocateur by any person who subsequently is charged with an offence under this Act shall be admissible as evidence at his trial.

133 Chapter 3 Powers of arrest, search, seizure etc.-133. Taking of samples.

(1) Where any goods, documents, material, articles or things which are the subject matter of an offence under this Act are found in two or more packages or receptacles of the same description, it shall be presumed until the contrary is proved that all the packages or receptacles contain goods, documents, material, articles or things of the same nature, quantity and quality.

(2) Where packages or receptacles containing goods, documents, material, articles or things which contravene the provisions of this Act or are otherwise liable to seizure have been seized, it shall be sufficient only to open and examine one per centum or not less than five samples, whichever is the lesser, of the contents of each package or receptacle seized.

(3) The court shall presume that the remaining samples contained in the package or receptacle is of the same nature as those samples examined.

134 Chapter 3 Powers of arrest, search, seizure etc.-134. Jurisdiction to try offences.

Notwithstanding anything to the contrary in any written law, a Sessions Court shall have jurisdiction to try any offence under this Act and to impose the full punishment for any such offence.

135 Chapter 3 Powers of arrest, search, seizure etc.-135. Institution of prosecution.

No prosecution for an offence under this Act shall be instituted except by or with the written consent of the Public Prosecutor.

136 Chapter 3 Powers of arrest, search, seizure etc.-136. Compounding of offences.

(1) The Minister may, with the approval of the Public Prosecutor, make regulations prescribing:

(a) any offence under this Act and any regulations made under this Act that may be compounded;

(b) the criteria for compounding such offence; and

(c) the method and procedure for compounding such offence.

(2) The Controller may, with the consent in writing of the Public Prosecutor, at any time before a charge is being instituted, compound any offence prescribed as an offence which may be compounded by making a written offer to the person reasonably suspected of having committed the offence to compound the offence upon payment to the Controller of a sum of money not exceeding fifty per centum of the amount of the maximum fine to which the person would have been liable to if he had been convicted of the offence, within such time as may be specified in the written offer.

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137 Chapter 3 Powers of arrest, search, seizure etc.-137. Principal liable for acts of servant or agent.

Where the servant or agent of a person commits an offence or does anything or omits to do anything which if done or omitted to be done by that person would constitute an offence under this Act, that person shall, notwithstanding that he has no knowledge of the offence, be deemed to be guilty of the offence and shall be liable to punishment for the offence unless he proves that:

(a) the act or omission complained of was not within the ordinary scope of the employment of the servant or of the agency of the agent; or

(b) the act or omission complained of was done or omitted to be done without his consent or connivance and that he exercised all such diligence to prevent the commission or omission as he ought to have exercised having regard to all the circumstances of the case.

138 Chapter 3 Powers of arrest, search, seizure etc.-138. Offences committed by body corporate.

(1) If a body corporate commits an offence under this Act, any person who at the time of the commission of the offence was a director, chief executive officer, chief operating officer, manager, secretary or other similar officer of the body corporate or was purporting to act in any such capacity or was in any manner or to any extent responsible for the management of any of the affairs of the body corporate or was assisting in such management:

(a) may be charged severally or jointly in the same proceedings with the body corporate; and

(b) if the body corporate is found guilty of the offence, shall be deemed to be guilty of that offence unless, having regard to the nature of his functions in that capacity and to all circumstances, he proves:

(i) that the offence was committed without his knowledge, consent or connivance; and

(ii) that he had taken all reasonable precautions a

139 Chapter 3 Powers of arrest, search, seizure etc.-139. Protection of Controller, Deputy Controller, Assistant Controller or other persons.

No action, suit, prosecution or other proceedings shall be brought, instituted or maintained in any court against:

(a) the Controller, Deputy Controller, Assistant Controller or any other person in respect of any act ordered or done for the purpose of carrying into effect this Act; and

(b) any other person in respect of any act done or purported to be done by him under the order, direction or instruction of the Controller if the act was done in good faith and in a reasonable belief that it was necessary for the purpose intended to be served by it.

140 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-140. Service of applications to Court on the Registrar.

(1) A copy of every application to the Court, including appeals to the Court of Appeal or Federal Court, relating to the application for registration or registered trademark shall be filed with the Registrar by the parties to the application to the Court in the manner as determined by the Registrar within the prescribed period, without having to name the Registrar as a party.

(2) Upon receipt of the application under subsection (1), the Registrar may change the status of the application or registration of trademark as the Registrar deems fit, subject to further condition, direction, instruction, order or judgment of the Court.

(3) Any order or judgment made by the Court upon the completion of the application filed under subsection (1) shall be filed with the Registrar in the manner as determined by the Registrar.

(4) The Registrar, under subsection (3), shall comply and give effect to the Court's order or judgment.

(5) I

141 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-141. Registrar's appearance in proceedings involving the Register.

(1) In any legal proceedings before the Court which includes an application for:

(a) the revocation of the registration of trademark;

(b) the declaration of the invalidity of the registration of a trademark; or

(c) the correction in 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 and signed by him, giving particulars of the proceedings before him in relation to 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 eviden

142 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-142. Costs of proceedings before the Court.

In all proceedings before the Court, the Court may, in its discretion, award any party including the Registrar such costs as it may consider reasonable but the Registrar shall not be ordered to pay the costs of any of the other parties.

143 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-143. Certificate of validity.

In any legal proceedings in which the validity of a registered trademark comes into question and is decided in favour of the registered proprietor, 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 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.

144 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-144. Evidentiary value of copies certified by Registrar.

A copy or extract from any form or document filed at the Trademark Office of which the Registrar certified to be a true copy or extract signed and sealed by the Registrar shall be admissible in evidence in any proceedings as of equal validity with the original document.

145 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-145. Sealed copies of document 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 without further proof or production of the originals.

(2) A notification or certificate of registration shall be admissible as evidence in any proceedings before any court of law without further proof or production of the originals.

(3) A certificate purporting to be under the hand of the Registrar as to any act which he is authorized to perform and which he has or has not performed shall be prima facie evidence in any proceedings before any court of law of his having or not having performed the act.

(4) No person in the employment of the Corporation shall be required to attend the court for the purposes of producing:

(a) any documents relating to a trademark application or registered trademark which

146 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-146. Electronic information, etc., certified by the Registrar admissible in evidence.

Any form, information or document, a copy or extract from any form, information or document electronically filed with the Registrar or issued by the Registrar, shall be a true extract from any form, information or documents filed with or submitted to the Registrar as required under this Act shall be prima facie evidence of matters specified in that form, information, document, copy or extract.

147 PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE-147. Minister may declare documents of foreign state pertaining to trademarks to be admissible as evidence.

(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 trademarks 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 shall be 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 purposes of this section:

(a) "authorized officer" means a person or authority authorized by the government of the fore

148 PART XVIII MISCELLANEOUS AND GENERAL-148. Intellectual Property Official Journal.

(1) The Registrar shall publish an Intellectual Property Official Journal which shall contain:

(a) all matters relating to trademarks which are required to be published under this Act; and

(b) such other information or matters relating to trademarks as the Registrar deems necessary.

(2) The Intellectual Property Official Journal shall be made available to the public on the payment of the prescribed fee.

(3) Publication in the Intellectual Property Official Journal shall constitute sufficient notice of any matter required to be published under this Act.

(4) A copy of the Intellectual Property Official Journal shall on its production be admitted in legal proceedings as evidence without further proof being given that the copy was so published.

(5) A copy of the Intellectual Property Official Journal shall be prima facie evidence of the facts stated therein.

149 PART XVIII MISCELLANEOUS AND GENERAL-149. Electronic filing.

(1) The Registrar may provide a service for the electronic filing of documents required by this Act to be filed with the Registrar.

(2) A document electronically filed under this section shall be deemed to have satisfied the requirement for filing if the document is communicated or transmitted to the Registrar in such manner as determined by the Registrar.

(3) A document that is required to be stamped, signed or sealed shall, if the document is to be electronically filed, be certified to be true copy or authenticated in such manner as determined by the Registrar.

(4) Where a document that is required to be signed and attested under this Act is to be filed electronically, the requirement for attestation of the signature does not apply.

(5) If a document is electronically filed with the Registrar, the Registrar shall not be liable for any loss or damage suffered by any person by reason of any error or omission of whatever

150 PART XVIII MISCELLANEOUS AND GENERAL-150. Issuing document electronically.

The Registrar may, by electronic means, issue a document which is to be issued by the Registrar under this Act.

151 PART XVIII MISCELLANEOUS AND GENERAL-151. Address for service.

(1) For the purposes of this Act, an address for service in Malaysia of an applicant, any person who opposes the registration of a trademark or any other person who is involved in any proceedings before the Registrar, who is residing or carrying on business principally in Malaysia shall be furnished with the Registrar in the manner as determined by the Registrar.

(2) The address furnished with the Registrar under subsection (1) shall be entered into the Registrar's record or Register and shall be deemed to be the address for service of the person under subsection (1) for all the proceedings before the Registrar.

(3) An address for service may be changed upon notifying the Registrar in the form as determined by him and within the prescribed period which shall be entered into the Registrar's record or Register.

(4) Upon receipt of the request for change in subsection (3) together with the payment of the prescribed fee, the Registr

152 PART XVIII MISCELLANEOUS AND GENERAL-152. Power of Registrar to allow amendments of documents.

(1) The Registrar may, upon an application in the form as determined by the Registrar together with the payment of the prescribed fee and on such terms as to costs as he thinks just, whether for the purpose of amending a clerical error or an obvious mistake, allow the amendment of:

(a) an application for the registration of trademark;

(b) notice of opposition;

(c) counterstatement; or

(d) any documents as the Registrar thinks fit.

(2) An amendment applied under subsection (1), shall not be permitted, under this section if the amendment would substantially affect:

(a) the identity of the trademark as specified in the application before amendment or without extending in any way the rights given by the existing registration of trademark; or

(b) the content of the documents filed with the Trademarks Office.

153 PART XVIII MISCELLANEOUS AND GENERAL-153. Power of Registrar to allow extension of time.

(1) Where by this Act, 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 form as determined by the Registrar, extend the time either before or after its expiration upon payment of the prescribed fee.

(2) Subsection (1) shall not be applicable to sections 26, 27 and 28 except where the circumstances under subsection (3) apply.

(3) Where by reason of:

(a) an error or omission by the person or by his registered trademark agent;

(b) circumstances beyond the control of the person or by his registered trademark agent; or

(c) an error or action on the part of the Trademark Office, an act in relation to an application for the registration of trademark or in proceedings under this Act (not being proceedings in a Court) required to be done within a certain time has n

154 PART XVIII MISCELLANEOUS AND GENERAL-154. Mode of giving evidence.

(1) For the purposes of subsection 105(1), in all proceedings before the Registrar, 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 an 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 a trademark, 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 trademarks or trade name or business name or get-up legitimately used by other persons.

155 PART XVIII MISCELLANEOUS AND GENERAL-155. Exercise of discretionary power.

Where any discretionary power is given to the Registrar by this Act, he shall not exercise that power adversely to the applicant for registration of trademark or the registered proprietor in question without, if duly required to do so within the prescribed period, giving to the applicant an opportunity of being heard.

156 PART XVIII MISCELLANEOUS AND GENERAL-156. Power of the Registrar to treat documents as confidential.

(1) In accordance with the regulations, the Registrar may:

(a) require that specified information in a document that has been filed, or is to be filed, in relation to a trademark be held in the Trademarks Office confidentially;

(b) make such a requirement subject to specified conditions or limitations; and

(c) vary or revoke such a requirement, condition or limitation.

(2) For the purposes of this section, procedures in connection with the making, varying or revoking of any requirements, conditions or limitations shall be as prescribed.

157 PART XVIII MISCELLANEOUS AND GENERAL-157. Adaptation of entries to new classification.

(1) The Registrar may consider the necessary to implement any amendment or substitution of classification of goods or services for the purposes of the registration of trademarks including making the amendment of existing entries on the Register so as to accord with the new classification as prescribed.

(2) The amendment made under subsection (1) shall not extend the rights conferred by the registration, except where it appears to the Registrar that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the rights of any person.

(3) The Registrar may:

(a) require the registered proprietor, within such prescribed period, to file a proposal for amendment of the Register; and

(b) cancel any relevant goods or services as identified by the Registrar or refuse to renew the registration of trademark in the event

158 PART XVIII MISCELLANEOUS AND GENERAL-158. Costs awarded by Registrar.

(1) In all proceedings before the Registrar, the Registrar shall have power to award to any party such costs including taxation of the 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.

(2) A party to any proceedings before a Registrar who is desirous to obtain costs or to have the costs taxed shall apply to the Registrar in the prescribed manner.

(3) Costs awarded by the Registrar under subsection (1) 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.

159 PART XVIII MISCELLANEOUS AND GENERAL-159. Unregistered trademarks.

(1) No person shall be entitled to initiate any action to prevent or to recover damages for the infringement of an unregistered trademark.

(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 of the goods or services.

160 PART XVIII MISCELLANEOUS AND GENERAL-160. Guidelines or practice directions by Registrar.

(1) The Registrar may issue guidelines or practice directions on any matter.

(2) The guidelines or practice directions issued by the Registrar under this section shall be published in the Intellectual Property Official Journal and shall be effective from the date as specified in the guidelines or directions.

(3) Any person who are specified in the provision under this Act shall comply with the guidelines and practice directions.

(4) The Registrar may vary, review or revoke any guidelines or practice directions.

(5) Subject to subsection (4), the procedures set out in subsections (2) and (3) shall apply in respect of any variation, review or revocation of the guidelines or practice directions.

(6) Any person, applicant or registered proprietor who does not comply with any guidelines or practice directions of the Registrar, where such guidelines or practice directions are applicable to such person, applicant or reg

161 PART XVIII MISCELLANEOUS AND GENERAL-161. Power to amend Schedules.

(1) The Minister may, by order published in the Gazette, amend the First and Second Schedules.

(2) The Minister shall, before making an amendment to the First or Second Schedule:

(a) publish a notice of his intention in the Intellectual Property Official Journal to make the amendment and the proposed amendment;

(b) give at least thirty days from the date of notice to allow any submission to be made by members of the association, competent body or the public in relation to the proposed amendment; and

(c) give due consideration to any submission made.

162 PART XVIII MISCELLANEOUS AND GENERAL-162. Power to make 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 purposes:

(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 trademarks;

(c) to provide for all matters relating to registration of trademark including renewal of registered trademark;

(d) to provide for all matters relating to alteration or voluntary cancellation of registered trademark, revocation or invalidity of registration, or correction of Register;

(e) to secure and regulate the publishing and selli

163 PART XVIII MISCELLANEOUS AND GENERAL-163. Appeal from Registrar.

Notwithstanding any provision in any written law in relation to judicial review, any person aggrieved by the decision of the Registrar in relation to the following matters may appeal to the Court:

(a) decision of the Registrar relating to examination of application under subsection 29(8);

(b) decision of the Registrar not to allow any amendment of application for registration of trademark under section 33;

(c) decision of the Registrar relating to opposition proceedings under subsection 35(10);

(d) decision of the Registrar not to allow any alteration of a registered trademark under section 42;

(e) decision of the Registrar not to allow any correction in the Register under section 43;

(f) decision relating to the revocation of registration by the Registrar under subsection 45(4);

(g) decision of the Registrar relating to t

164 PART XIX REPEAL, SAVINGS AND TRANSITIONAL PROVISIONS Chapter 1 Repeal and savings-164. Repeal and savings.

(1) The Trade Marks Act 1976 is repealed.

(2) Notwithstanding the repeal of the Act under subsection (1):

(a) any appointment made under the repealed Act shall continue in force and have effect as if it had been made under this Act;

(b) all decisions, directions and notices made or issued under the repealed Act shall, to the extent that the decisions, directions and notices are consistent with this Act, continue in force until such decisions, directions and notices are revoked or amended;

(c) any investigation, trial and proceedings done, taken or commenced under the repealed Act immediately before the commencement of this Act shall, on the commencement of this Act, be dealt with as if the repealed Act has not been repealed by this Act; and

(d) nothing in the repealed Act or this Act shall affect any person's liability to be prosecuted or punished for offences comm

165 Chapter 2 Transitional provisions for trademarks-165. Interpretation.

(1) Notwithstanding the repeal, the following subsections shall be applicable. (2) In this Chapter, "existing registered mark" means a trade mark, certification trade mark or defensive trade mark registered under the repealed Act immediately before the commencement of this Act.

(3) For the purposes of this Chapter:

(a) an application shall be treated as pending on the commencement of this Act if it was made but not finally determined before commencement of this Act; and

(b) the date on which it was made shall be taken to be the date of filing under the repealed Act.

166 Chapter 2 Transitional provisions for trademarks-166. Existing registered marks.

(1) Any existing registered marks kept in the Register under the repealed Act, subject to the provision of this Part, shall be a registered trademark for the purposes of this Act.

(2) Any existing registered mark registered as a certification trade mark in the Register kept under the repealed Act shall be a registered certification mark for the purposes of this Act.

(3) Any existing registered mark registered as a series of trade marks in the Register kept under the repealed Act shall be similarly registered in the Register kept under this Act for the purposes of this Act.

(4) Any indication that an existing registered mark is associated with any other mark shall cease to have effect on the commencement of this Act.

(5) A condition, disclaimer or limitation entered into the Register under the repealed Act in relation to an existing registered mark immediately before the commencement of this Act shall be incorporated into

167 Chapter 2 Transitional provisions for trademarks-167. Effects of registration in relation to infringement.

(1) Sections 48, 49, 50, 51 and 54 of this Act apply in relation to an existing registered mark as from the commencement of this Act and section 56 of this Act applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to subsection (2).

(2) Sections 38 and 51 of the repealed Act continue to apply in relation to infringements committed before the commencement of this Act.

168 Chapter 2 Transitional provisions for trademarks-168. Infringing goods, material or articles.

Section 59 of this Act applies to infringing goods, material or articles whether the application for the order is made before or after the commencement of this Act.

169 Chapter 2 Transitional provisions for trademarks-169. Rights and remedies of licensee or authorized user.

(1) Section 70 of this Act applies to licences granted before the commencement of this Act only in relation to infringements committed after the commencement of this Act.

(2) Subparagraph 9(2) of the Second Schedule of this Act apply only in relation to infringements committed after the commencement of this Act.

170 Chapter 2 Transitional provisions for trademarks-170. Co-proprietorship of registered mark.

(1) Section 63 of this Act applies as from the commencement of this Act to an existing registered mark of which two or more persons were immediately before commencement of this Act registered as joint proprietors.

(2) Where two or more persons are registered as joint proprietors under section 21 of the repealed Act shall continue to exist as if this Act has not been enacted.

171 Chapter 2 Transitional provisions for trademarks-171. Assignment, etc., of registered mark.

(1) Section 64 of this Act applies to transactions occurring after the commencement of this Act in relation to an existing registered mark and the repealed Act continues to apply in relation to transactions occurring before the commencement of this Act.

(2) Existing entries under section 47 of the repealed Act shall be transferred on the commencement of this Act to the Register kept under this Act and have effect as if made under section 65 of this Act.

(3) An application for registration under section 47 of the repealed Act which is pending before the Registrar on the commencement of this Act or which has been determined by the Registrar but not finally determined before the commencement of this Act shall be treated as an application for registration under sections 65 and 67 of this Act and shall proceed accordingly.

(4) For the purposes of subsection (3), the Registrar may require the applicant to amend his application so as t

172 Chapter 2 Transitional provisions for trademarks-172. Licensing of registered mark.

(1) Section 69 of this Act applies only in relation to licences granted after the commencement of this Act and the repealed Act continues to apply in relation to licences granted before the commencement of this Act until the expiration of such licences.

(2) Existing entries under section 48 of the repealed Act shall be transferred on the commencement of this Act to the Register kept under this Act and have effect as if made under section 65 of this Act.

(3) An application for registration as a registered user which is pending before the Registrar on the commencement of this Act or which has been determined by the Registrar but not finally determined before the commencement of this Act shall be treated as an application for registration of a licence under section 65 or 67 of this Act and shall proceed accordingly.

(4) The Registrar may require the applicant to amend his application so as to conform to the requirements of this Act

173 Chapter 2 Transitional provisions for trademarks-173. Pending applications for registration.

(1) An application for registration of a mark under the repealed Act which is pending on the commencement of this Act shall be dealt with under the repealed Act subject to the following subsections, and if registered, the mark shall be treated for the purposes of this section as an existing registered mark.

(2) Section 22 of the repealed Act shall be disregarded after the commencement of this Act for an application for registration.

(3) Sections 34 and 35 of this Act shall apply to an application for registration of a mark under the repealed Act which is pending publication on the commencement of this Act.

(4) Sections 32, 33 and 155 of this Act shall apply to an application for registration of a mark under the repealed Act which is pending registration on the commencement of this Act.(5) Section 37 or 38 of this Act may be applied in relation to an application for registration of a mark under the repealed Act which is pending r

174 Chapter 2 Transitional provisions for trademarks-174. Conversion of pending application.

(1) In the case of a pending application for registration which has not been examined under the repealed Act before the commencement of this Act, the applicant may give notice to the Registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Act.

(2) The notice shall be filed in the form as determined by the Registrar together with the payment of the prescribed fee within two months from the date of the commencement of this Act.

(3) A notice filed under subsection (2) shall be irrevocable and shall have the effect that the application shall be treated as if the application for registration is made after the commencement of this Act.

175 Chapter 2 Transitional provisions for trademarks-175. Trademarks registered according to old classification.

(1) The Registrar may exercise the powers conferred by regulations under section 162 of this Act to secure that any existing registered marks which do not conform to the system of classification as prescribed under section 19 of this Act are brought into conformity with that system.

(2) Subsection (1) shall apply to existing registered marks classified in accordance with the classification as specified in Third Schedule of the Trade Marks Regulations 1997 [P.U. (A) 460/1997].

176 Chapter 2 Transitional provisions for trademarks-176. Claim to priority of Convention application.

(1) Where before the commencement of this Act, a person has duly filed an application for protection of a trademark in a Convention country, section 26, 27 or 28 of this Act shall apply to an application for registration under this Act made after the commencement of this Act.

(2) Nothing in this section affects proceedings on an application for registration under the repealed Act made before the commencement of this Act.

177 Chapter 2 Transitional provisions for trademarks-177. Duration and renewal of registration.

(1) Subsection 39(1) of this Act shall apply in relation to the registration of trademark pursuant to an application made after the commencement of this Act and the repealed law shall continue to apply in relation to a trademark registered before the commencement of this Act.

(2) Subsection 39(2) and section 40 of this Act shall apply where the renewal of existing registered marks under the repealed Act falls due on or after the commencement of this Act and the repealed Act shall continue to apply for existing registered marks where its renewal does not fall due on or after the commencement of this Act.

(3) For the purposes of subsection (2), the renewal fee under this Act shall be applicable regardless that such fee has been paid before the commencement of this Act.

178 Chapter 2 Transitional provisions for trademarks-178. Pending application for alteration of registered mark.

An application under section 44 of the repealed Act which is pending on the commencement of this Act shall be dealt with under the repealed Act and any necessary alteration shall be made to the Register in this Act.

179 Chapter 2 Transitional provisions for trademarks-179. Revocation for non-use.

(1) An application under section 46 of the repealed Act which is pending on the commencement of this Act shall be dealt with under the repealed Act and any necessary alteration shall be made to the Register in this Act.

(2) An application under section 46 of this Act may be made in relation to an existing registered mark after the commencement of this Act.(3) Notwithstanding subsection (2), the application for the revocation of the registration of an existing registered mark registered under section 57 of the repealed Act may only be made five years after the commencement of this Act.

180 Chapter 2 Transitional provisions for trademarks-180. Application for rectification, etc.

(1) An application under section 43 or 45 of the repealed Act which is pending on the commencement of this Act shall be dealt with under the repealed Act and any necessary alteration shall be made to the Register in this Act.

(2) For the purposes of proceedings under section 47 of this Act as it applies in relation to an existing registered mark, the provisions of this Act shall be deemed to have been in force at all material times, except there is no objection to the validity of the registration of an existing registered mark may be taken on the ground specified in subsection 24(3) of this Act.

181 Chapter 2 Transitional provisions for trademarks-181. Rules as to use of certification mark.

(1) Rules governing the use of an existing registered certification trademark deposited at the Trade Mark Central Office pursuant to section 56 of the repealed Act shall be treated after the commencement of this Act as if it is filed in accordance with the Second Schedule to this Act.

(2) Any request for amendment of the rules which was pending on the commencement of this Act shall be dealt with in accordance with this Act.

182 Chapter 2 Transitional provisions for trademarks-182. Agents.

(1) Registration of an agent applied under the repealed Act before the commencement of this Act shall continue to be in force and have effect as if made under section 97 of this Act and if registered, the agent shall be treated as a registered trademark agent under this Act.

(2) The requirements for renewal of registration of trademark agents under this Act shall apply to the registration of the agent obtained under the repealed Act.

183 Chapter 2 Transitional provisions for trademarks-183. Guidelines, etc., on transitional matters.

The Registrar may issue guidelines or practice directions to provide for any matters in force before the commencement of this Act to be dealt with in such manner to bring them in conformity with this Act.