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October 08
​Malaysia Advances Trademark Reform, Promotes Brand Owners’ Rights

This blog post was written by Susan Taplinger, Managing Editor, Communications

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YBhg. Dato’ Mohd Roslan bin Mahayudin (pictured, right) was appointed as Director General of Intellectual Property Corporation of Malaysia (MyIPO) on January 2, 2019. With more than 30 years’ service in government, Dato’ Mohd Roslan has extensive experience in the field of prosecution. Prior to his appointment as Director General of MyIPO he was the Director of Enforcement at the Ministry of Domestic Trade and Consumer Affairs.

Here, Director General Mohd Roslan discusses some of the key legislative and policy developments affecting the intellectual property community in Malaysia.

How does MyIPO work to strengthen intellectual property (IP) laws and promote awareness of IP in Malaysia?  How is MyIPO taking the lead to promote brand value in Malaysia and globally?
To strengthen IP laws in Malaysia, it is necessary for MyIPO to make sure that the country’s IP legislation is in line with international standards. 

Over the years, MyIPO has acceded to seven treaties administered by the World Intellectual Property Organization (WIPO), including the Paris Convention, the Berne Convention, the Patent Cooperation Treaties, the Nice and Vienna Agreement, the WIPO Copyright Treaty, and the WIPO Performance and Phonograms Treaty.  Malaysia is also a signatory to the Trade-Related Aspects of the Intellectual Property Rights (TRIPS) Agreement. 

There are three main International treaties that are priorities for Malaysia: the Madrid Protocol, the  Budapest Treaty, and the Marrakesh Treaty. Due to the commitments and obligations under these international treaties, the law in Malaysia has undergone a great transformation to align the local IP laws with standards as provided under these agreements. Compliance with the treaties has shown that Malaysia’s IP laws have the appropriate legislative structure in protecting IP rights. Nevertheless, due to the rapid changes in the technologies and demand from markets, Malaysia IP law has also needed revision from time to time, in order to take into account current IP issues, and to align with international practice.

In developing Malaysia’s IP structure, MyIPO also works to enhance strategic partnerships with international IP offices, such as the Japan Patent Office, the European Union Intellectual Property Office, the United States Patent and Trademark Office, and others to collaborate in organizing trainings to educate and increase awareness of IP issues.

MyIPO also has held a number of programs and initiatives to raise awareness of the importance of IP protection, and to facilitate filing procedures and utilization of IP practices. Additionally, MyIPO has held trainings, workshops, and seminars based on its target participants. For instance, MyIPO organized National IP Day activities and awards, which were introduced to recognize the highest IP achievements in each category, to increase the recognition of the value of IP, as well as to encourage local companies, universities, researchers, SMEs, individual entrepreneurs, and students to be more creative and innovative in creating IP. 

Additional programs included seminars and workshops for stakeholders on the protection of IP and filing procedures in Malaysia. For students and teachers, MyIPO organized IP Summer Camp, aimed at raising awareness of IP protection among the younger generation through fun and interactive educational activities, and set up the IP Portal for Youngsters, which is a database of ideas for youth or students, where they can send their innovations or creative works.

MyIPO is also working to strengthen its partnership with INTA by increasing collaborative efforts in promoting the public’s awareness of IP rights and educating young consumers about IP. It is particularly important, in light of MyIPO’s accession to the Madrid Protocol, to educate the public regarding the implications of this system. 

In addition to the initiatives mentioned earlier, Malaysia has adopted brand development best practices for SMEs by through IP CONNECT, which is a major program of MyIPO and government universities in collaboration with private companies. This program includes IP Talk, IP Clinic, and Entrepreneurs Filing. Through IP Talk, MyIPO provides guidance to entrepreneurs on brand management, marketing, and growing the business, while the IP Clinic provides one-on-one consultations with companies. At the filing stage, with Entrepreneurs Filing, university involvement comes into play in the form of funds to cover the cost of application and registration.

What are some of the most important developments and recent amendments to Malaysia’s trademark law that practitioners and brand owners should be aware of? Will this encourage greater numbers of trademark registrations? 
On July 23, the Malaysian parliament passed a new and revamped trademark bill titled “Trademarks Bill 2019.” The new act, which will soon come into force, would bring significant changes to the existing legal regime for trademark protection and enforcement in Malaysia. The major reforms in the Trademarks Bill 2019 include:

  1. A new definition of “trademark” and the recognition of nontraditional trademarks;
  2. New examination approach and practices by the substitution of current practices with provisions on absolute grounds and relative grounds of refusal;
  3. Extension of the mode of applications from single class application to multiple class application;
  4. New provisions regarding the international registration system to facilitate Malaysia’s accession to the Madrid Protocol;
  5. Enhanced provisions on infringement, including remedies such as injunction, damages, account profit, delivery order, destruction, order as to disposal of infringing goods, and erasure of offending marks;
  6. The introduction of criminal offenses for counterfeiting a trademark (Sections 8 and 9 of the Trade Description Act 2011 are adopted into Trademark Bill 2019.);
  7. Provisions on monetization and securitization of trademark rights in the financial sector; and
  8. Additional provisions on licensing where licensees are allowed to bring proceedings for infringement, introducing collective marks as obligation under the Paris Convention as well as enhancement of border measure provisions for customs. 

MyIPO believes that the coming Trademark Act may encourage greater numbers of trademark registrations due to a wider scope of protection for trademarks, including sound marks, scent/smell marks, and color marks. In addition, being a member of the Madrid Protocol may also contribute to increase trademark protections for other countries that are members of the Madrid Protocol. MyIPO estimates an increase of 7‒10 percent in yearly trademark applications. 

What opportunities will there be to provide feedback on draft implementing rules? How does this kind of feedback help MyIPO advance its initiatives?
In implementing the trademark rules to align with Malaysia’s economic growth and to protect customers’ needs, from 2010 to 2018, MyIPO conducted several public consultation sessions, seminars, meetings, and dialogue sessions with stakeholders, universities, government agencies, legal practitioners, and the public in order to receive their feedback and suggestions. 

MyIPO has also conducted regulatory assessments through the Malaysia Productivity Corporation to determine the regulatory costs and the impact of the new proposed regulations on businesses. The assessment also emphasized strategies for implementation, including mechanisms to ensure their effective implementation. MyIPO is currently considering all the feedback, comments, and suggestions received from all the above initiatives regarding the new Trademark Bill 2019.

What do you see as some of the most important emerging issues for enforcement of trademarks in Malaysia? How can brand owners feed into efforts and initiatives by authorities? 
The most important emerging issues for the enforcement of trademarks in Malaysia is the same that many other countries are facing, such as counterfeit goods in the market, especially through online selling. Monitoring counterfeit trade and controlling cross-border counterfeit goods are among the most important and challenging issues to be tackled by enforcement bodies in Malaysia.

For brand owners, it is important for them to be aware of their IP rights, and not to hesitate to initiate their own legal actions against those that breach those rights. Brand owners may bring civil actions against infringers in the High Court or file complaints at the Ministry of Domestic Trade and Consumer Affairs for criminal enforcement. 

With the new Trademarks Bill 2019, MyIPO has enhanced the criminal enforcement of trademark rights with respect to the false application of trademarked goods and services. The provision also grants powers to investigate, arrest suspects, search, and seize suspicious goods—powers which were previously governed under the Trade Description Act.


Join us at the 2019 Asia Conference: Brands in Changing Times

Innovate. Protect. Enforce. GrowOctober 17–18, Kuala Lumpur, Malaysia

This two-day, advanced-le​vel Conference features leading business and legal experts and government officials, to help you navigate innovation in the marketplace and in the practice of trademark law, IP protection strategies, the changing enforcement landscape, and growth opportunities in the region. 

Register today!

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