Trademarks Act 2019 · Updated to 18 Mar 2022 · Chapter 3
24. Relative grounds for refusal of registration
Feedback & supportThe 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.
Registrar
“Registrar” means a person appointed as a Registrar of Trademarks under subsection 10(1);
The Registrar shall refuse to register a trademark if there exists a likelihood of confusion on the part of the public—
where the trademark is identical with an earlier trademark and is to be registered for goods or services similar to the earlier trademark; or
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.
The Registrar shall refuse to register a trademark if—
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 identical goods or services of the proprietor of the well-known trademark; or
it is identical with or similar to a well-known trademark which is registered in Malaysia and it is to be registered for goods or services which are not identical or not similar to those in respect of which the well-known trademark is registered and—
the use of the trademark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known trademark;
there exists a likelihood of confusion on the part of the public because of such use; and
the interests of the proprietor of the well-known trademark are likely to be damaged by such use.
Subject to subsection (6), the Registrar shall refuse to register a trademark if, or to the extent that, its use in Malaysia is
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prevented—
by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade including under the law of passing off; or
by virtue of an earlier right other than those referred to in paragraph (a) or in subsections (1) to (3) including under the law of copyright or industrial designs.
A person entitled to prevent the use of a trademark is referred to in this Act as the proprietor of an “earlier right” in relation to the trademark in subsection (4).
The Registrar may refuse to register a trademark on any grounds under subsection (4) if that ground is raised in proceedings in opposition to the registration under section 35 by the proprietor of the earlier right.
Notwithstanding the relative grounds for refusal of registration under subsections (1), (2), (3) and (4), the Registrar may register a trademark if the proprietor of the earlier trademark or other earlier right consents to the registration in the prescribed manner and shall take into account the interest of the public and the likelihood of confusion on the part of the public.
prescribed
“prescribed” means, in relation to proceedings before the Court or preliminary thereto or connected therewith, prescribed by rules of court made by the Rules Committee constituted under the Courts of Judicature Act 1964, and in other cases, prescribed by the Minister in the regulations made under this Act;
For the purposes of this section, if the registration of an earlier trademark expires, the Registrar, in determining the registrability of a trademark shall continue to take into account the earlier trademark for a period of twelve months after its expiry.