Section 35
Opposition proceedings
(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 him; and
(ii)
does not withdraw the opposition.
(4)
The applicant shall file a counterstatement in the form as determined by the Registrar together with the payment of the prescribed fee, within the prescribed period after the receipt of the notice of opposition and if the applicant does not do so, the application shall be deemed withdrawn.
(5)
The counterstatement in subsection (4) shall include the grounds upon which the applicant relies on for the application.
(6)
The opponent and applicant shall file evidence and exhibits in the prescribed manner within the prescribed period in support of the opposition or the counterstatement, as the case may be, and if the opponent or applicant does not do so, the opposition or application, as the case may be, shall be deemed withdrawn.
42
(7)
If the applicant files evidence and exhibits under subsection (6), the opponent may file evidence in reply in the prescribed manner.
(8)
In considering the evidence and exhibits and after giving the applicant and the opponent an opportunity of making written submissions, the Registrar shall decide whether—
(a)
to refuse to register the trademark;
(b)
to register the trademark absolutely; or
(c)
to register the trademark subject to such conditions, amendments, modifications, disclaimers or limitations as he thinks fit.
(9)
The Registrar, upon request by the opponent or applicant in the form as determined by the Registrar together with the payment of the prescribed fee, may defer any action in relation to the opposition proceedings under prescribed circumstances and for a prescribed period.
(10)
Where an appeal lies to the Court against the decision of the
Registrar refusing to register a trademark or refusing to register a trademark absolutely, or registering the trademark subject to conditions, amendments, modifications, disclaimers or limitations under this section—
(a)
the appeal shall be made in the prescribed manner;
(b)
the Court shall, where necessary, hear the parties and the
Registrar; and
(c)
any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court but no further grounds of opposition to the registration of trademark shall be allowed to be taken by the opponent other than those stated by the opponent except by leave of the
Court.
(11)
Where any further grounds of opposition are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.
Trademarks 43
(12)
In any appeal under this section, the Court may, after hearing the Registrar, permit the trademark intended to be registered to be modified in any manner not substantially affecting the identity of the trademark, but in any such case the trademark as modified shall be published in the Intellectual Property Official Journal before being registered.
(13)
If a person giving notice of opposition, an applicant sending a counterstatement, or an appellant, neither resides nor carries on business in Malaysia, the Registrar or the Court may require him to give security for costs of the proceedings relating to the opposition, application or appeal, as the case may be, and in default of such security being duly given, the Registrar or the Court may deem the opposition, application, or appeal, as the case may be, as withdrawn.