Trademarks Act 2019

This Act may be cited as the Trademarks Act 2019.

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

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);

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“collective mark” has the meaning assigned to it under subsection 72(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 [Act 617];

“Court” means the High Court;

“declared foreign country” means a country declared by the Minister under subsection 27(1);

“distinctive character” means the trademark shall be capable of distinguishing goods or services—

which the proprietor of the trademark is or may be connected to in the course of trade from goods or services; or

in the case of which no such connection subsists or where the trademark is registered or intended to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration;

mode of use;

use within a territorial area within Malaysia; or

use in relation to goods to be exported to a market outside

operation of law;

testamentary disposition; or

any other kind of transfer except assignment;

“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.

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.

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

“Well-known trademark” means any trademark that is well-known in Malaysia and that belongs to a person who—

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

“Earlier trademark” means—

a registered trademark or a protected international registration designating Malaysia, the application for registration of which was made earlier than the trademark in question, taking into account the priorities claimed in respect of the trademarks, where appropriate; or

a trademark which, at the date of application for registration of the trademark in question or of the priority claimed in respect of the application, where appropriate, was a well-known trademark, and includes a trademark in respect of which an application for registration has been made and which, if registered, would be an earlier trademark by virtue of paragraph (a) subject to it being so registered.

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—

Material is “infringing material”, in relation to a registered trademark, if it bears a sign identical with or similar to that trademark and either—

“Infringing articles”, in relation to a registered trademark, means articles—

Goods are “counterfeit goods”, in relation to a registered trademark, if—

A sign is a “counterfeit trademark”, in relation to a registered trademark, if the sign—

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.

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.

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.

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

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.

Where a trademark is applied to goods to be exported from

The use of a registered trademark in relation to goods or services where a form of connection in the course of trade subsists between the goods or services and the person using the 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.

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.

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.