April 1, 2011
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MALAYSIA: Expedited Examination of Trademarks Now Available
A substantial change in the Trade Marks Regulations 1997 (Amendment 2011), which came into force on February 15, 2011, is the availability of an applicant who applies or has applied for the registration of a trademark to request an expedited examination.
The request can be made within four months from the date of filing the application in the prescribed form (Form 5A) and by paying the relevant fees. If the request is accepted by the Registrar, the applicant has five working days from the Registrar’s decision to lodge the prescribed Form 5B and pay the relevant fees. In the event that the applicant fails to submit the Form 5B within the stipulated time, the Registrar will treat the application for expedited examination as never having been filed.
The request for expedited examination must be supported by an affidavit or statutory declaration setting out the reasons for requesting the expedited examination as provided in the Regulations. Not all requests for expedited examination will be granted. The decision to accept or refuse the request will be based on the reason stated by the applicant.
The acceptable reasons for an expedited examination that will be considered by the Registrar are listed under Regulation 18A:
(a) It is in the national or public interest;
(b) There are infringement proceedings taking place or evidence showing potential infringement in respect of the trademark applied for under Regulation 18;
(c) Registration of the trademark is a condition to obtaining monetary benefits from the government or institutions recognized by the Registrar; or
(d) There are other reasonable grounds that support the request.
The Registrar will issue a written decision on the request for expedited proceedings as soon as practicable.
Any expedited examination will be subject to such objections as may be raised by the Registrar and the usual formality and procedural requirements affecting a trademark application.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2011 International Trademark Association