Trade Marks
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LAWS OF MALAYSIA
REPRINT
Act 175
TRADE MARKS ACT 1976
Incorporating all amendments up to 1 January 2006
PUBLISHED BY
THE COMMISSIONER OF LAW REVISION, MALAYSIA
UNDER THE AUTHORITY OF THE REVISION OF LAWS ACT 1968
IN COLLABORATION WITH
PERCETAKAN NASIONAL MALAYSIA BHD
2006
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Laws of Malaysia
ACT 175
TRADE MARKS ACT 1976
Date of Royal Assent
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21 June 1976
Date of publication in the Gazette ...
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24 June 1976
PREVIOUS REPRINT
First Reprint
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2001
Trade Marks
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LAWS OF MALAYSIA
Act 175
TRADE MARKS ACT 1976
ARRANGEMENT OF SECTIONS
PART I
PRELIMINARY
Section
1.
Short title and application
2.
Extent of application
3.
Interpretation
PART II
ADMINISTRATION
4.
Registrar, Deputy Registrars and Assistant Registrars
4A. Protection of officers
5.
Central and regional trade marks offices
PART III
THE REGISTER OF TRADE MARKS
6.
The Register
7.
Notice of trust
8.
Inspection of Register
9.
False entries in Register
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PART IV
REGISTRABLE TRADE MARKS
Section
10.
Registrable trade marks
(Deleted)
11.
12.
Use by proposed registered user to be considered for the purpose of
determining distinctiveness, etc.
13.
Colour of trade mark
14.
Prohibition on registration
14A. Where registration shall not be refused
15.
Where registration may be refused
16.
Use of name of another person
17.
Registration for particular goods or services
18.
Disclaimer
19.
Identical trade marks
20.
Concurrent use
21.
Jointly owned trade mark
22.
Association of trade marks
23.
Assignment of associated trade marks
24.
Series of trade marks
PART V
APPLICATION FOR REGISTRATION
25.
Registration
26.
Application may be accepted where trade mark is to be used by assignee
or registered user
27.
Advertisement of acceptance of application
28.
Opposition to registration
29.
Non-completion of registration
PART VI
REGISTRATION AND EFFECT OF REGISTRATION
30.
Registration of trade mark
31.
Time for registration
32.
Duration of registration
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Section
33.
Words used as name or description of article, substance or service
34.
Powers of registered proprietor
35.
Rights given by registration
Registration prima facie evidence of validity
36.
37.
Registration conclusive
38.
Infringement of a trade mark
39.
Infringement of trade mark by breach of certain restriction
40.
Acts not constituting infringement
PART VII
RENEWAL OF REGISTRATION
41.
Renewal of registration
42.
Status of unrenewed trade mark
PART VIII
CORRECTION AND RECTIFICATION OF REGISTER
43.
Correction of Register
44.
Alterations of registered trade mark
45.
Rectification of the Register
46.
Provisions as to non-use of trade mark
47.
Registration of assignment
PART IX
REGISTERED USER
48.
Registered user
49.
Powers to vary, extend or cancel registration of a registered user
(Deleted)
50.
51.
Infringement proceeding
52.
Registered user not to assign
(Deleted)
53-54.
PART X
ASSIGNMENT OF TRADE MARKS
55.
Assignment and transmission of trade marks
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PART XI
CERTIFICATION TRADE MARKS
Section
56.
Certification trade marks
PART XII
DEFENSIVE TRADE MARKS
57.
Defensive registration of well known trade marks
58.
Defensive trade mark deemed to be associated trade mark
59.
Rectification of Register
60.
Application of Act
PART XIII
LEGAL PROCEEDINGS, COST AND EVIDENCE
61.
Certificate of validity
62.
Hearing of Registrar
63.
Costs
64.
Mode of giving evidence
65.
Sealed copies to be evidence
66.
Minister may declare documents of foreign state pertaining to trade
marks to be admissible
67.
Discretionary power
(Deleted)
68.
69.
Appeal from Registrar
PART XIV
CONVENTIONS AND INTERNATIONAL ARRANGEMENTS
Right of priority under Convention, etc.
70.
70A. Temporary protection of trade marks in respect of goods or services
which are the subject matters of international exhibitions
70B. Protection of well-known trade marks
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PART XIVA
BORDER MEASURES
Section
70C. Interpretation
70D. Restriction on importation of counterfeit trade mark goods
70E. Security
70F. Secure storage of seized goods
70G. Notice
70H. Inspection, release, etc., of seized goods
70I. Forfeiture of seized goods by consent
70J. Compulsory release of seized goods to importer
70K. Compensation for failure to take action
70L. Actions for infringement of registered trade mark
70M. Disposal of seized goods ordered to be forfeited
70N. Insufficient security
70O. Ex officio action
70P. Regulations relating to border measures
PART XV
MISCELLANEOUS
71.
Use of trade mark for export trade
72.
Use of trade mark where form of trade changes
73.
Preliminary advice by Registrar
74.
Powers of Registrar to amend document
75.
Other powers of Registrar
76.
Exercise of discretionary power
77.
Extension of time
Extension of time by reason of error in trade marks office, etc.
78.
79.
Address for service
80.
Agent
81.
Falsely representing a trade mark as registered
82.
Unregistered trade marks
83.
Regulations
84.
Repeal and saving
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Trade Marks
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LAWS OF MALAYSIA
Act 175
TRADE MARKS ACT 1976
An Act to make better provisions in the law relating to trade marks
and for other matters connected therewith.
[1 September 1983, P.U. (B) 407/1983]
BE IT ENACTED by the Seri Paduka Baginda Yang di-Pertuan
Agong with the advice and consent of the Dewan Negara and
Dewan Rakyat in Parliament assembled, and by the authority of
the same, as follows:
PART I
PRELIMINARY
Short title and application
1. (1) This Act may be cited as the Trade Marks Act 1976.
(2) This Act shall apply throughout Malaysia.
Extent of application
2. (1) This Act shall apply to applications for trade marks made
after the commencement of this Act and to trade marks registered
on such applications.
(2) Subject to subsection 6(4), this Act shall also apply to trade
marks registered under the respective repealed Ordinances.
(3) Notwithstanding their repeal, the repealed Ordinances shall
apply to applications for trade marks made before the commencement
of this Act and to the registrations of trade marks made on such
applications after the commencement of this Act.
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Interpretation
3. (1) In this Act, unless the context otherwise requires--
"appointed date" has the same meaning as is assigned to that
expression in the Intellectual Property Corporation of Malaysia
Act 2002 [Act 617];
"assignment" means assignment by act of the parties concerned;
"Assistant Registrar" means the person appointed or deemed to
h a v e been appointed to be an Assistant Registrar under
subsection 4(2) or (3);
"component regions of Malaysia" means the regions of West
Malaysia, Sabah and Sarawak;
"Convention country" means a country which is a party to any
multilateral treaty relating to trade marks to which Malaysia is
also a party;
"Corporation" means the Intellectual Property Corporation of
Malaysia established under the Intellectual Property Corporation
of Malaysia Act 2002;
"Court" means the High Court;
"Deputy Registrar" means the person appointed or deemed
t o have been appointed to be a Deputy Registrar under
subsection 4(2) or (3);
"geographical indication" means an indication which identifies
any goods as originating in a country or territory or a region or
locality in that country or territory, where a given quality, reputation
or other characteristic of the goods is essentially attributable to
their geographical origin;
"in the course of trade", in relation to the provision of services,
means in the course of business;
"limitations" means limitations of the right to the exclusive use
of a trade mark given by the registration of the trade mark including
limitations of that right as to--
(a) mode of use;
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(b) use within a territorial area within Malaysia; or
(c) use in relation to goods to be exported to a market outside
Malaysia or use in relation to services to be provided in
a place outside Malaysia;
"mark" includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral or any combination thereof;
"Minister" means the Minister for the time being charged with
the responsibility for intellectual property;
"Paris Convention" means the Paris Convention for the Protection
of Industrial Property of 20 March, 1883 as revised at Stockholm
on 14 July 1967;
"permitted use" in relation to a registered trade mark means the
use of the trade mark by a registered user thereof in relation to
goods or services with which he is connected in the course of trade
and in respect of which the trade mark remains registered and he
is registered as a registered user, being use which complies with
any conditions or restrictions to which his registration is subject;
"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 [Act 91], and in other cases, prescribed by
this Act or any regulations made thereunder;
"prescribed foreign country" means a country declared by the
Minister, by order published in the Gazette, as having made
arrangements with Malaysia for the reciprocal protection of trade
marks;
"previous registers" means the registers of trade marks kept
under the repealed Ordinances;
"Register" means the Register of Trade Marks kept under this
Act;
"registered proprietor" in relation to a trade mark means the
person for the time being entered in the Register as proprietor of
the trade marks;
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"registered trade mark" means a trade mark which is actually
upon the Register;
"registered user" means a person who is registered as such
under Part IX;
"registrable trade mark" means a trade mark which is capable
of registration under the provisions of this Act;
"Registrar" means the Registrar of Trade Marks designated in
subsection 4(1);
"repealed Ordinances" means the Trade Marks Ordinance 1950
[Ord. 26 of 1950], the Trade Marks Ordinance of Sabah [Cap. 142]
and the Trade Marks Ordinance of Sarawak [Cap. 62];
"specification" means the designation of goods or services in
respect of which a trade mark or a registered user of a trade mark
is registered or proposed to be registered;
"trade mark" means, except in relation to Part XI, a mark used
or proposed to be used in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services and a person having
the right either as proprietor or as registered user to use the mark
whether with or without an indication of the identity of that person,
and means, in relation to Part XI, a mark registrable or registered
under the said Part XI;
"transmission" means transmission by operation of law, devolution
on the personal representatives of a deceased person and any other
mode of transfer not being assignment;
"TRIPS Agreement" means the Agreement on Trade-Related
Aspects of Intellectual Property Rights 1994 which constitutes
A n n e x 1C to the Agreement Establishing the World Trade
Organization;
"word" includes an abbreviation of a word.
(2) In this Act--
(a) references to the use of a mark shall be construed as
r e f e r e n c e s to the use of a printed or other visual
representation of the mark;
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(b) references to the use of a mark in relation to goods shall
be construed as references to the use thereof upon, or in
physical or other relation to, goods; and
(c) references to the use of a mark in relation to services
shall be construed as references to the use thereof as a
statement or as part of a statement about the availability
or performance of services.
PART II
ADMINISTRATION
Registrar, Deputy Registrars and Assistant Registrars
4. (1) The Director General of the Corporation shall be the Registrar
of Trade Marks.
(2) The Corporation may appoint, on such terms and conditions
as it may determine, from amongst persons in the employment of
the Corporation, such number of Deputy Registrars of Trade Marks,
Assistant Registrars of Trade Marks and other officers as may be
necessary for the proper administration of this Act, and may revoke
the appointment of any person so appointed or deemed to have
been so appointed under subsection (3).
(3) The persons holding office as Deputy Registrars, Assistant
Registrars and other officers under this Act before the appointed
date who were given an option by the Government of Malaysia to
serve as employees of the Corporation and have so opted shall on
the appointed date be deemed to have been appointed as Deputy
Registrars, Assistant Registrars and such other officers under
subsection (2).
(4) Subject to the general direction and control of the Registrar
and to such conditions or restrictions as may be imposed by the
Registrar, a Deputy Registrar or an Assistant Registrar may exercise
any function of the Registrar under this Act, and anything by this
Act appointed or authorized or required to be done or signed by
the Registrar may be done or signed by any Deputy Registrar or
Assistant Registrar and the act or signature of a Deputy Registrar
or an Assistant Registrar shall be as valid and effectual as if done
or signed by the Registrar.
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(5) The Registrar shall have a seal of such device as may be
approved by the Corporation and the impressions of such seal shall
be judicially noticed and admitted in evidence.
Protection of officers
4A.  No action or prosecution shall be brought, instituted or
maintained in any Court against--
(a) the Registrar of Trade Marks;
(b) a Deputy Registrar of Trade Marks; or
(c) an Assistant Registrar of Trade Marks,
for any act or omission done in good faith in the performance of
his functions and the exercise of his powers under this Act.
Central and regional trade marks offices
5. (1) For the purposes of this Act there shall be established a
Central Trade Marks Office which shall be located at Kuala Lumpur.
(2) In each of the States of Sabah and Sarawak there shall be
established one regional trade marks office.
(2A) In addition to the regional trade marks office established
in the State of Sabah and Sarawak, there may be established such
number of trade marks offices as may be necessary for the purposes
of this Act.
(3) A document required or permitted by this Act to be submitted
at the Central Trade Marks Office may be submitted at any trade
marks office and reference in this Act to the submission at the
Central Trade Marks Office includes reference to the submission
at a trade marks office.
PART III
THE REGISTER OF TRADE MARKS
The Register
6. (1) There shall be kept and maintained at the Central Trade
Marks Office a Register of Trade Marks which shall contain--
(a) all registered trade marks with the names, addresses and
d e s c r i p t i o n s of their proprietors, notifications of
assignments and transmissions, the names, addresses and
descriptions of all registered users, disclaimers, conditions,
limitations; and
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(b) such other matters relating to the trade marks as the
Minister may from time to time prescribe.
(2) (Deleted by Act A1078).
(3) The previous registers of trade marks kept under the repealed
Ordinances shall be incorporated with and form part of the Register
in accordance with the entries in the previous registers immediately
before this Act comes into force.
(4) The incorporation of the previous registers into the Register
shall have the following effect:
(a) where a trade mark has been registered and entered in all
the previous registers by a proprietor for all three component
regions of Malaysia, such a trade mark shall in its
incorporation into the Register be deemed to be a registered
trade mark in the name of such proprietor under this Act;
(b) where a trade mark has been registered and entered in
any of the previous registers by a proprietor for any one
or two of the component regions of Malaysia, such a
trade mark shall in its incorporation into the Register be
deemed to be a registered trade mark in the name of such
proprietor under this Act if on the date on which this Act
comes into force--
(i) no identical trade mark or trade mark so nearly
resembling the first-mentioned trade mark in respect
of the same goods or same description of goods
as is likely to deceive or cause confusion has been
registered and entered in the remaining previous
register or registers prior to the date of the coming
into force of this Act by a different proprietor or
proprietors for any of the remaining component
regions of Malaysia; and
(ii) no application for the registration of an identical
trade mark or trade mark so nearly resembling the
first-mentioned trade mark in respect of the same
goods or same description of goods as is likely to
deceive or cause confusion has been made prior
to the date of the coming into force of this Act by
another person for any of the remaining component
regions of Malaysia or, where it has been made,
it is subsequently refused, abandoned or successfully
opposed;
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(c) where a trade mark has been registered and entered in
any of the previous registers by a proprietor for any one
or two of the component regions of Malaysia and an
identical trade mark or trade mark so nearly resembling
the first mentioned trade mark in respect of the same
goods or same description of goods as is likely to deceive
or cause confusion has been registered and entered in any
of the previous registers by a different proprietor or
proprietors for all or any one of the remaining component
regions of Malaysia both the first mentioned trade mark
and the identical trade mark or trade mark so nearly
r e s e m b l i n g the first mentioned trade mark in their
incorporation into the Register shall be deemed to be
registered trade marks in the names of the respective
proprietors under this Act subject to concurrent use of
the trade marks by their respective proprietors in accordance
with subsection 20(1);
(d) where a trade mark has been registered and entered in
any of the previous registers by a proprietor for any one
or two of the component regions of Malaysia and only
an application or applications for the registration of an
identical trade mark or trade mark so nearly resembling
the first mentioned trade mark in respect of the same
goods or same description of goods as is likely to deceive
or cause confusion has been made prior to the date of the
coming into force of this Act by another person for any
of the remaining component regions of Malaysia, the
first mentioned trade mark in its incorporation into the
Register shall be effective only in respect of the component
region or regions of Malaysia in which it was originally
registered unless the application or applications has or
have been subsequently refused, abandoned or successfully
opposed in which case the first mentioned trade mark
shall be deemed to be a registered trade mark in the name
of such proprietor under this Act.
(5) Notwithstanding section 30 the date of the entry of a trade
mark in any of the previous registers incorporated and forming
part of the Register shall be deemed to be the date of the original
registration of the trade mark.
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Notice of trust
7.  Notice of a trust express, implied or constructive shall not be
entered in the Register or be received by the Registrar.
Inspection of Register
8. (1) The Register shall be open to the inspection of the public
at such times and in accordance with such conditions as may be
prescribed.
(2) Certified copies or extracts of any entry in the Register
sealed with the seal of the Registrar shall be given to any person
requiring the same on payment of the prescribed fees.
(3) Certified copies of the Register shall be deposited in any
trade marks office for the purpose of facilitating any search to be
made by the public at such times as the Minister may by regulations
prescribe and no copy or extract of any entry in such copies shall
be made or given to any person.
False entries in Register
Every person who--
9.
(a) makes or causes to be made a false entry in the Register;
(b) makes or causes to be made a false entry in any certified
copy of the Register deposited in a trade marks office;
(c) makes or causes to be made a false document purporting
to be a copy of an entry in the Register;
(d) produces or tenders or causes to be produced or tendered
in evidence any such document knowing such document
or any entry therein to be false,
is guilty of an offence and is liable, on conviction, to a fine not
exceeding five thousand ringgit or to a term of imprisonment not
exceeding five years or to both.
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PART IV
REGISTRABLE TRADE MARKS
Registrable trade marks
10. (1) In order for a trade mark (other than a certification trade
mark) to be registrable, it shall contain or consist of at least one
of the following particulars:
(a) the name of an individual, company or firm represented
in a special or particular manner;
(b) the signature of the applicant for registration or of some
predecessor in his business;
(c) an invented word or words;
(d) a word having no direct reference to the character or
quality of the goods or services not being, according to
its ordinary meaning, a geographical name or surname;
or
(e) any other distinctive mark.
(2) A name, signature or word which is not described in
paragraph (1)(a), (b), (c) or (d) is not registrable unless it is by
evidence shown to be distinctive.
(2A) For the purposes of this section, "distinctive", in relation
to the trade mark registered or proposed to be registered in respect
of goods or services, means the trade mark must be capable of
distinguishing goods or services with which the proprietor of the
trade mark is or may be connected in the course of trade from
goods or services in the case of which no such connection subsists,
either generally or, where the trade mark is registered or proposed
to be registered, subject to conditions, amendments, modifications
or limitations, in relation to use within the extent of the registration.
( 2  B ) I n determining whether a trade mark is capable of
distinguishing as aforesaid, regard may be had to the extent to
which--
(a) the trade mark is inherently capable of distinguishing as
aforesaid; and
(b) by reason of the use of the trade mark or of any other
circumstances, the trade mark is in fact capable of
distinguishing as aforesaid.
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(3) A trade mark may be registered in the Register in respect
of any goods or services.
(Deleted by Act A1078).
11.
Use by proposed registered user to be considered for the purpose
of determining distinctiveness, etc.
12. (1) Where an application for registration of a trade mark has
been made by a person, and before the date of the application the
trade mark had been used by a person other than the applicant
under the control of and with the consent and authority of the
applicant, and where an application is made by the applicant and
that other person for the registration of that other person as a
registered user of the trade mark immediately after the registration
of the trade mark and the Registrar is satisfied that the other
person is entitled to be registered as a registered user of the trade
mark, the Registrar may, for the purpose of determining whether
the trade mark is distinctive of or capable of distinguishing the
goods or services of the applicant, treat use of the trade mark by
that other person as equivalent to use of the trade mark by the
applicant and may make an order that the trade mark is so distinctive
or capable of distinguishing.
(2) An order of the Registrar under subsection (1) is subject to
appeal to the Court.
(3) Where an order is made under subsection (1), the registration
of the trade mark shall cease to have effect if at the expiration of
the prescribed period, or such further period not exceeding six
months as the Registrar may allow, that other person has not
become registered as the registered user of the trade mark.
Colour of trade mark
13. (1) A trade mark may be limited in whole or in part to one
or more specified colours and, in any such case, the fact that the
trade mark is so limited shall be taken into consideration for the
purpose of determining whether the trade mark is distinctive.
(2) Where a trade mark is registered without limitations as to
colour, it shall be deemed to be registered for all colours.
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Prohibition on registration
14. (1) A mark or part of a mark shall not be registered as a trade
mark--
(a) if the use of which is likely to deceive or cause confusion
to the public or would be contrary to law;
(b) if it contains or comprises any scandalous or offensive
matter or would otherwise not be entitled to protection
by any court of law;
(c) if it contains a matter which in the opinion of the Registrar
is or might be prejudicial to the interest or security of the
nation;
(d) if it is identical with or so nearly resembles a mark which
is well known in Malaysia for the same goods or services
of another proprietor;
(e) if it is well known and registered in Malaysia for goods
or services not the same as to those in respect of which
registration is applied for:
Provided that the use of the mark in relation to those
goods or services would indicate a connection between
those goods or services and the proprietor of the well
known mark, and the interests of the proprietor of the
well known mark are likely to be damaged by such use;
(f) if it contains or consists of a geographical indication with
respect to goods not originating in the territory indicated,
if use of the indication in the mark for such goods in
Malaysia is of such a nature as to mislead the public as
to the true place of origin of the goods; or
(g) if it is a mark for wines which contains or consists of a
geographical indication identifying wines, or is a mark
for spirits which contains or consists of a geographical
indication identifying spirits, not originating in the place
indicated by the geographical indication in question.
(2) Article 6bis of the Paris Convention and Article 16 of the
TRIPS Agreement shall apply for the purpose of determining whether
a trade mark is a well known trade mark.
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Where registration shall not be refused
14A. (1) A trade mark shall not be refused registration by virtue
of paragraphs 14(f) and (g) if the application for its registration
had been made in good faith, or if it had been used continuously
in good faith in the course of trade by the applicant for its registration
or his predecessor in title, either--
(a before the commencement of the Geographical Indications
Act 2000 [Act 602]; or
(b) before the geographical indication in question is protected
in its country of origin.
(2) A trade mark shall not be refused registration by virtue of
paragraphs 14(f) and (g) if the geographical indication in question--
(a) has ceased to be protected; or
(b) has fallen into disuse,
in its country of origin.
Where registration may be refused
15.  The Registrar shall refuse to accept an application for the
registration of a trade mark which contains or consists of any of
the following marks or a mark so nearly resembling any of those
marks as is likely to be taken for that mark:
(a) the word or words "Patent", "Patented", "By Royal Letters
Patent", "Registered", "Registered Design" and "Copyright"
or a word or words to the like effect in any language
whatsoever; or
(b) any mark which is specifically declared by the Minister
in any regulations made under this Act to be a prohibited
mark.
Use of name of another person
16.  Where a person makes an application to register a trade mark
which consists of or includes the name or representation of another
person whether living or dead the Registrar may require the applicant
to furnish him with the consent of that person if living or of the
legal representative of that person if deceased before permitting
the name or representation to be used as a trade mark.
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Registration for particular goods or services
17. (1) A trade mark may be registered in respect of any or all
of the goods comprised in a prescribed class of goods or in respect
of any or all of the services comprised in a prescribed class of
services.
(2) If any question arises as to the class in which goods or
services are comprised that question shall be decided by the registrar
whose decision shall be final.
Disclaimer
18. (1) If a trade mark--
(a) contains any part--
(i) which is not the subject of a separate application
by the proprietor for registration as a trade mark;
or
(ii) which is not separately registered by the proprietor
as a trade mark; or
(b) contains matter which is common to the trade or business
or is not distinctive,
the Registrar or the Court, in deciding whether the trade mark shall
be entered or shall remain in the Register, may require as a condition
of its being upon the Register, that the proprietor shall disclaim
any right to the exclusive use of any such part or matter, to the
exclusive use of which the Registrar or the Court holds him not
to be entitled or that the proprietor shall make such other disclaimer
as the Registrar or the Court may consider necessary for the purpose
of defining his rights under the registration.
(2) No disclaimer on the Register shall affect any right of the
proprietor of a trade mark except a right arising out of the registration
of the trade mark in respect of which the disclaimer is made.
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23
Identical trade marks
19. (1) No trade mark shall be registered in respect of any goods
or description of goods--
(a) that is identical with a trade mark belonging to a different
proprietor and entered in the Register in respect of the
same goods or description of goods or in respect of services
that are closely related to those goods; or
(b) that so nearly resembles such a trade mark as is likely
to deceive or cause confusion.
(2) No trade mark shall be registered in respect of any services
or description of services--
(a) that is identical with a trade mark belonging to a different
proprietor and entered in the Register in respect of the
same services or description of services or in respect of
goods that are closely related to those services; or
(b) that so nearly resembles such a trade mark as is likely
to deceive or cause confusion.
(3) Where separate applications are made by different persons
to be registered as proprietors respectively of trade marks which
are identical or so nearly resembling each other as are likely to
deceive or cause confusion and--
(a) such applications are in respect of the same goods or
description of goods; or
(b) at least one of such applications is in respect of goods
and the other or others is or are in respect of services
closely related to those goods,
the Registrar may refuse to register any of them until their rights
have been determined by the Court or have been settled by agreement
in a manner approved by him or by the Court.
(4) Where separate applications are made by different persons
to be registered as proprietors respectively of trade marks which
are identical or so nearly resembling each other as are likely to
deceive or cause confusion and--
(a) such applications are in respect of the same services or
description of services; or
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(b) at least one of such applications is in respect of services
and the other or others is or are in respect of goods
closely related to those services,
the Registrar may refuse to register any of them until their rights
have been determined by the Court or have been settled by agreement
in a manner approved by him or by the Court.
Concurrent use
20. (1) Notwithstanding subsection 19(1), in the case of honest
concurrent use or of the circumstances described in paragraph
6(4)(c) or of other special circumstances which, in the opinion of
the Court or the Registrar, make it proper so to do, the Court or
the Registrar may permit the registration of more than one proprietor
in respect of trade marks which are identical or so nearly resembling
each other as are likely to deceive or cause confusion where the
registration of the different proprietors--
(a) is in respect of the same goods or description of goods;
or
(b) in the case of at least one proprietor, is in respect of
goods, and in the case of the other or others, is in respect
of services closely related to those goods,
subject to such conditions, amendments, modifications or limitations,
if any, as the Court or the Registrar, as the case may be, may think
right to impose.
(1A) Notwithstanding subsection 19(2), in the case of honest
concurrent use or of other special circumstances which, in the
opinion of the Court or the Registrar, make it proper so to do, the
Court or the Registrar may permit the registration of more than
one proprietor in respect of trade marks which are identical or so
nearly resembling each other as are likely to deceive or cause
confusion where the registration of the different proprietors--
(a) is in respect of the same services or description of services;
or
(b) in the case of at least one proprietor, is in respect of
services, and in the case of the other or others, is in
respect of goods closely related to those services,
subject to such conditions, amendments, modifications or limitations,
if any, as the Court or the Registrar, as the case may be, may think
right to impose.
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(2) The Registrar shall not refuse to register a trade mark which
is identical to or so nearly resembling another trade mark in the
Register if the applicant of the first mentioned trade mark or his
predecessor in business has continuously used that trade mark
from a date before--
(a) the use of that other trade mark by the registered proprietor
or his predecessor in business or by a registered user; or
(b) the registration of that other trade mark by the registered
proprietor or his predecessor in business,
whichever is the earlier.
Jointly owned trade mark
21. (1) Where two or more persons are interested in a trade mark
and none of them is entitled as between himself or the other or
others to use the trade mark except--
(a) on behalf of both or all of them; or
(b) in relation to goods or services with which both or all of
them are connected in the course of trade,
both or all of them may be registered as joint proprietors of the
trade mark and this Act has effect in relation to any rights of such
persons to the use of the trade mark as if those rights were rights
of a single person.
(2) Subject to subsection (1), nothing in this Act authorizes the
r e g i s t r a t i o n of two or more persons who use a trade mark
independently, or propose so to use it, as joint proprietors of the
trade mark.
Association of trade marks
22. (1) Where a trade mark which is registered or is the subject
of an application for registration in respect of any goods--
(a) is identical with another trade mark which is registered
or is the subject of an application for registration in the
name of the same proprietor in respect of the same goods
or description of goods or in respect of services that are
closely related to those goods; or
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(b) is so nearly resembling it as is likely to deceive or cause
confusion if used by a person other than the proprietor,
the Registrar may at any time require that the trade marks be
entered on the Register as associated trade marks.
(1A) Where a trade mark which is registered or is the subject
of an application for registration in respect of any services--
(a) is identical with another trade mark which is registered
or is the subject of an application for registration in the
name of the same proprietor in respect of the same services
or description of services or in respect of goods that are
closely related to those services; or
(b) is so nearly resembling it as is likely to deceive or cause
confusion if used by a person other than the proprietor,
the Registrar may at any time require that the trade marks be
entered on the Register as associated trade marks.
(2) On application made in the prescribed manner by the registered
proprietor of two or more associated trade marks the Registrar
may dissolve the association as respects any of them if he is
satisfied that there would be no likelihood of deception or confusion
being caused if that trade mark were used by another person in
relation to any of the goods or services in respect of which it is
registered and may amend the Register accordingly.
(3) A decision of the Registrar under subsection (2) is subject
to appeal to the Court.
Assignment of associated trade marks
23. (1) Associated trade marks shall be assignable or transmissible
only as a whole and not separately but they shall for all other
purposes be deemed to have been registered as separate trade
marks.
(2) Where under this Act use of a registered trade mark is
required to be proved for any purpose, the Court or the Registrar
may, if and so far as it or he shall think right, accept use of an
associated trade mark or of the trade mark with additions and
alterations not substantially affecting its identity as an equivalent
for such use.
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27
(3) The foregoing provisions apply in relation to proof of use
of any registered trade mark and not in relation only to proof of
use of a trade mark which is one of two or more associated trade
marks.
Series of trade marks
24. (1) Where several trade marks in respect of the same goods
or description of goods in a single class or in respect of the same
services or description of services in a single class resemble each
other in material particulars but differ in respect of--
(a) statements or representation as to the goods or services
in respect of which the trade marks are used or proposed
to be used;
(b) statements or representations as to number, price, quality
or names of places;
(c) other matter which is not distinctive and does not
substantially affect the identity of the trade marks; or
(d) colour,
and a person who claims to be the proprietor thereof seeks to
register the trade marks, the trade marks may be registered as a
series in one registration.
(2) All trade marks registered in a series shall be deemed to be
and shall be registered as associated trade marks.
PART V
APPLICATION FOR REGISTRATION
Registration
25. (1) Any person claiming to be the proprietor of a trade mark
used or proposed to be used by him may make application to the
Registrar for the registration of that mark in the Register in the
prescribed manner.
(2) An application shall not be made in respect of goods or
services comprised in more than one class.
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(3) Subject to the provisions of this Act, the Registrar may
refuse the application or may accept it absolutely or subject to
such conditions, amendments, modifications or limitations, if any,
as he may think right to impose.
(4) In the case of refusal or conditional acceptance the Registrar
shall, if required by the applicant, state in writing the grounds of
his decision and the material used by him in arriving at the same.
(5) A decision of the Registrar under subsection (3) is subject
to appeal to the Court.
(6) An appeal under this section shall be made in the prescribed
manner and the Court shall, if required, hear the applicant and the
Registrar, and shall make an order determining whether, and subject
to what conditions, amendments, modifications or limitations, if
any, the application is to be accepted.
(7) The appeal shall be heard on the material stated by the
Registrar to have been used by him in arriving at his decision and
no further grounds of objection to the acceptance of the application
shall be allowed to be taken by the Registrar other than those so
stated except by leave of the Court.
(8) Where any further grounds of objection are taken the applicant
shall be entitled to withdraw his application without payment of
costs on giving notice in the prescribed manner.
(9) The Registrar or the Court, as the case may be, may at any
time, whether before or after acceptance, correct any error in or
in connection with the application or may permit the applicant to
amend his application upon such terms as he or it may think fit.
(10) Any application submitted and accepted under this section
shall notwithstanding any correction or amendment permitted by
the Registrar or the Court to be made in such application be
deemed to have been made on the date of its original submission.
(11) (Repealed by Act A1078).
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29
(12) Without prejudice to subsection (10) where after the
acceptance of an application for registration of a trade mark but
before the registration of the trade mark the Registrar is satisfied--
(a) that the application has been accepted in error; or
(b) that in the special circumstances of the case the trade
mark shall not be registered or shall be registered subject
to additional or different conditions or limitations,
the Registrar may withdraw the acceptance and proceed as if the
application had not been accepted or, in respect only of a trade
mark which shall be registered subject to additional or different
conditions or limitations, reissue a new acceptance subject to
additional or different conditions or limitations.
Application may be accepted where trade mark is to be used
by assignee or registered user
26. (1) An application for the registration of a trade mark in
respect of any goods or services shall not be refused nor shall
permission for such registration be withheld on the ground that it
appears that the applicant does not use or propose to use the trade
mark--
(a) if the Registrar is satisfied that a body corporate is about
to be constituted and that the applicant intends to assign
the trade mark to the corporation with a view to the use
thereof in relation to those goods or services by the
corporation; or
(b) if an application has been made for the registration of a
person as a registered user of the trade mark, and the
Registrar is satisfied that the proprietor intends it to be
used by that person in relation to those goods or services
and the Registrar is also satisfied that that person will be
registered as a registered user thereof immediately after
registration of the trade mark.
(2) The Registrar may, as a condition of the exercise of the
power conferred by subsection (1) in favour of the applicant,
require him to give security for the costs of any proceedings before
him relative to any opposition and, in default of such security
being duly given, may treat the application as abandoned.
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(3) Where a trade mark is registered in respect of any goods or
services under the power conferred by subsection (1), then unless
the corporation has been registered as the proprietor of the trade
mark in respect of those goods or services within a period of six
months, the registration shall cease to have effect in respect thereof
at the expiration of that period and the Registrar shall amend the
Register accordingly.
Advertisement of acceptance of application
27. (1) When an application for registration of a trade mark has
b e e n accepted whether absolutely or subject to conditions,
amendments, modifications or limitations, the Registrar shall, as
soon as may be after acceptance, cause the application as accepted
to be advertised in the prescribed manner.
(2) The advertisement shall set forth all conditions, amendments,
modifications and limitations subject to which the application has
been accepted except that the Registrar may cause an application
for registration of a trade mark to be advertised before acceptance
thereof if the considerations in subsection 10(2B) or subsection
11(1A) apply or in any other case where it appears to him that it
is expedient by reason of any exceptional circumstances to do so.
( 3 ) W h e r e an application has been advertised under
subsection (2) the Registrar may, if he thinks fit, advertise it
again when it has been accepted but he shall not be bound
to do so.
Opposition to registration
28. (1) Any person may, within the prescribed time from the date
of the advertisement of an application for the registration of a
trade mark, give notice to the Registrar and applicant of opposition
to the registration.
(2) The notice shall be given in writing in the prescribed manner
and shall include a statement of the grounds of opposition.
(3) The applicant shall, within the prescribed time after the
receipt of the notice of opposition, send to the Registrar and the
opponent a counter-statement, in the prescribed manner, of the
grounds for his application, and, if he does not do so, he shall be
deemed to have abandoned his application.
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31
(3A) If the applicant submits a counter-statement under subsection
(3), the opponent and applicant shall file evidence and exhibits in
the prescribed manner and within the prescribed time support of
the opposition or the counter-statement, as the case may be, to be
adduced in the prescribed manner, and if the opponent or applicant
fails to do so, the opposition or application, as the case may be,
shall be treated as abandoned.
(3B) If the applicant files evidence and exhibits under subsection
(3A), the opponent may, within the prescribed time, send to the
Registrar and applicant evidence in reply to be adduced in the
prescribed manner.
(4A) After 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 trade mark;
(b) to register the trade mark absolutely; or
(c) to register the trade mark subject to such conditions,
amendments, modifications or limitations as he may think
fit.
(5) A decision of the Registrar under subsection (4) is subject
to appeal to the Court.
(6) An appeal under this section shall be made in the prescribed
manner and the Court shall, if required, hear the parties and the
Registrar, and shall make an order determining whether, and subject
to what conditions, amendments, modifications or limitations, if
any, registration is to be permitted.
(7) On the hearing of an appeal under this section 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 objection to the registration of a
trade mark shall be allowed to be taken by the opponent or the
Registrar other than those stated by the opponent except by leave
of the Court.
(8) Where any further grounds of objection are taken the applicant
shall be entitled to withdraw his application without payment of
the costs of the opponent on giving notice as prescribed.
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(9) In any appeal under this section the Court may after hearing
the Registrar, permit the trade mark proposed to be registered to
be modified in any manner not substantially affecting the identity
of the trade mark, but in any such case the trade mark as modified
shall be advertised in the prescribed manner before being registered.
(10) If a person giving notice of opposition or an applicant
sending a counter-statement after receipt of such a notice, 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 relative to the opposition, application or appeal,
as the case may be, and in default of such security being duly
given, may treat the opposition, application, or appeal, as the case
may be, as abandoned.
Non-completion of registration
29. (1) When an application for registration of a trade mark is not
completed within twelve months from the date of the application
by reason of default on the part of the applicant, the Registrar may,
after giving notice in writing of the non-completion to the applicant
in the prescribed manner, treat the application as abandoned unless
it is completed within the time specified in that behalf in the
notice.
(2) Where an appeal under any of the provisions of this Act has
been instituted in respect of an application for registration of a
trade mark, the Registrar shall not give notice of non-completion
of the application until the expiration of three months after the
determination of the appeal or until the expiration of such further
time as the Court may allow.
PART VI
REGISTRATION AND EFFECT OF REGISTRATION
Registration of trade mark
30. (1) When an application for registration of a trade mark in the
Register has been accepted and either--
(a) the application has not been opposed and the time for
opposition has expired; or
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33
(b) the application has been opposed and the opposition has
been decided in favour of the applicant,
the Registrar shall, unless the application has been accepted in
error, register the trade mark in the Register on payment of the
prescribed fees in the name of the proprietor, and the trade mark
so registered shall be registered as of the date of application for
registration and that date shall be deemed for the purpose of this
Act to be the date of registration.
(2) On the registration of a trade mark the Registrar shall issue
to the applicant a certificate of the registration of the trade mark
in the prescribed form under the seal of the Registrar.
Time for registration
31. (1) Subject to subsection (2) a trade mark shall not be registered
after twelve months from the date of the advertisement of the
acceptance of the application for registration of the trade mark.
(2) Where the registration of a trade mark is delayed by--
(a) opposition to the registration of the trade mark;
(b) any appeal made to the Court; or
(c) an action on the part of the Central Trade Marks office
or any trade marks office,
that trade mark may be registered within such time as directed by
the Registrar or the Court respectively.
(3) Where a trade mark has not been registered within the time
applicable to it the application shall lapse.
Duration of registration
32. (1) The registration of a trade mark shall be for a period of
ten years but may be renewed from time to time in accordance with
this Act.
(2) Where a trade mark is registered under the repealed Ordinances
and is incorporated into and forms part of the Register under this
Act the registration of such trade mark unless renewed under this
Act shall be for a period equal to the unexpired portion of the
period for which the trade mark was registered or renewed under
the repealed Ordinances.
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(3) The registration of a trade mark may be renewed from time
to time in accordance with Part VII.
Words used as name or description of article, substance or
service
33. (1) The registration of a trade mark shall not be deemed to
have become invalid by reason only of any use after the date of
the registration of a word or words which the trade mark contains
or of which it consists as the name or description of an article, a
substance or a service.
(2) If it is proved either--
(a) that there is a well known and established use of the
word or words as the name or description of the article
or substance by a person or persons carrying on a trade
therein, not being use in relation to goods connected in
the course of trade with the proprietor or a registered
user of the trade mark or, in the case of a certification
trade mark, goods certified by the proprietor;
(b) that the article or substance was formerly manufactured
under a patent, that a period of two years after the cesser
of the patent has elapsed and that the word or words is
or are the only practicable name or description of the
article or substance; or
(c) that there is a well known and established use of the
word or words as the name or description of some service
by a person or persons providing services which include
that service, not being use in relation to services the
provision of which the proprietor or registered user of
the trade mark is connected to in the course of trade,
subsection (3) shall have effect.
(3) When the facts mentioned in paragraph 2(a), (b) or (c) are
proved with respect to any word or words then--
(a) if the trade mark consists solely of that word or those
words, the registration of the trade mark, so far as regards
registration in respect of the article, substance or service
in question or of any goods or service of the same
description, shall be deemed for the purpose of section
45 to be an entry wrongly remaining in the Register;
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35
(b) if the trade mark contains the word or those words and
other matter, the Court or the Registrar in deciding whether
the trade mark shall remain on the Register so far as
regards registration in respect of the article, substance or
service in question or of any goods or service of the same
description may in case of a decision in favour of its
remaining on the Register require as a condition thereof
that the proprietor shall disclaim any right to the exclusive
use in relation to that article, substance or service in
question or any goods or service of the same description
of that word or those words so, however, that no disclaimer
on the Register shall affect any right of the proprietor of
a trade mark except such as arising out of the registration
of the trade mark in respect of which the disclaimer is
made; and
(c) for the purposes of any other legal proceedings relating
to the trade mark--
(i) if the trade mark consists solely of that word or
those words, all rights of the registered proprietor
to the exclusive use of the trade mark in relation
to the article, substance or service in question or
to any goods or service of the same description;
or
(ii) if the trade mark contains that word or those
words and other matter, all rights of the registered
p r o p r i e t o r to the exclusive use of the word
o r those words, in such relation as in
subparagraph (1),
shall be deemed to have ceased on the date at which the
use mentioned in paragraph (2)(a) or (c) first became
well known and established or at the expiration of the
period of two years mentioned in paragraph (2)(b).
(4) No word which is the commonly used and accepted name
of any single chemical element or single chemical compound, as
distinguished from a mixture, shall be registered as a trade mark
in respect of a chemical substance or preparation except that this
subsection shall not have effect in relation to a word which is used
to denote only a brand or make of the element or compound as
made by the proprietor or a registered user of the trade mark as
distinguished from the element or compound as made by others
and in association with a suitable name or description open to the
public use.
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Powers of registered proprietor
Subject to the provisions of this Act,--
34.
(a) the person for the time being entered in the Register as
registered proprietor of a trade mark shall, subject to any
rights appearing from such Register to be vested in any
other person, have power to assign the same and give
good discharges for any consideration for the assignment;
(b) any equities in respect of a trade mark may be enforced
in like manner as in respect of any other personal property.
Rights given by registration
35. (1) Subject to the provisions of this Act, the registration of
a person as registered proprietor of a trade mark (other than a
certification trade mark) in respect of any goods or services shall,
if valid, give or be deemed to have been given to that person the
exclusive right to the use of the trade mark in relation to those
g o o d s or services subject to any conditions, amendments,
modifications or limitations entered in the Register.
(2) Where two or more persons are proprietors of registered
trade marks which are identical or nearly resembling each other
rights of exclusive use of either of those trade marks are not
(except so far as their respective rights have been defined by the
Registrar or the Court) acquired by any one of those persons as
against any other of those persons by registration of the trade mark
but each of those persons have the same rights as against other
persons (not being registered users) as he would if he were the sole
registered proprietor.
Registration prima facie evidence of validity
36.  In all legal proceedings relating to a registered trade mark
(including applications under section 45) the fact that a person is
registered as proprietor of the trade mark shall be prima facie
evidence of the validity of the original registration of the trade
mark and of all subsequent assignments and transmissions thereof.
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37
Registration conclusive
37.  In all legal proceedings relating to a trade mark registered
in the Register (including applications under section 45) the original
registration of the trade mark under this Act shall, after the expiration
of seven years from the date thereof, be taken to be valid in all
respects unless it is shown--
(a) that the original registration was obtained by fraud;
(b) that the trade mark offends against section 14; or
(c) that the trade mark was not, at the commencement of the
proceedings, distinctive of the goods or services of the
registered proprietor,
except that this section shall not apply to a trade mark registered
under the repealed Ordinances and incorporated in the Register
pursuant to subsection 6(3) until after the expiration of three years
from the commencement of this Act.
Infringement of a trade mark
38. (1) A registered trade mark is infringed by a person who, not
being the registered proprietor of the trade mark or registered user
of the trade mark using by way of permitted use, uses a mark
which is identical with it or so nearly resembling it as is likely
to deceive or cause confusion in the course of trade in relation to
goods or services in respect of which the trade mark is registered
in such a manner as to render the use of the mark likely to be taken
either--
(a) as being use as a trade mark;
(b) in a case in which the use is use upon the goods or in
physical relation thereto or in an advertising circular, or
other advertisement, issued to the public, as importing a
reference to a person having the right either as registered
proprietor or as registered user to use the trade mark or
to goods with which the person is connected in the course
of trade; or
(c) in a case in which the use is use at or near the place
where the services are available or performed or in an
advertising circular or other advertisement issued to the
public, as importing a reference to a person having a
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right either as registered proprietor or as registered user
to use the trade mark or to services with the provision
of which the person is connected in the course of trade.
(2) (Deleted by Act A1078).
Infringement of trade mark by breach of certain restriction
39. (1) Where, by notice upon goods or upon the container of
goods, the registered proprietor or a registered user of a trade mark
registered in the Register makes a statement prohibiting the doing
of an act to which this section applies, a person who, being the
owner for the time being of the goods, does that act, or authorizes
it to be done, in relation to the goods in the course of trade or with
a view to a dealing with the goods in the course of trade, shall be
deemed to infringe the trade mark unless--
(a) at the time when he agreed to buy the goods he acted in
good faith without notice that the statement appeared on
the goods; or
(b) he became the owner of the goods by virtue of a title
derived from another person who had agreed to buy the
goods.
(2) The acts to which this section applies are--
(a) the application of the trade mark upon goods after they
have suffered alteration to their state, conditions, get-up
or packing;
(b) in a case in which the trade mark is upon the goods the
alteration, partial removal or partial obliteration of the
trade mark, the application of some other trade mark to
the goods or the addition to the goods of other matter in
writing or otherwise that is likely to injure the reputation
of the trade mark; and
(c) in the case in which the trade mark is upon the goods and
there is also other matter upon the goods indicating a
connection in the course of trade between the registered
proprietor or registered user and the goods, the removal
or obliteration, whether wholly or partially, of the trade
mark unless that other matter is wholly removed or
obliterated.
Trade Marks
39
(3) In this section references in relation to goods to the registered
proprietor, to a registered user, and to the registration of a trade
mark shall be construed, respectively, as references to the registered
proprietor of the trade mark, to a registered user of the trade mark
and to the registration of the trade mark in respect of those goods
and the expression "upon" includes, in relation to goods, a reference
to physical relation to the goods.
Acts not constituting infringement
40. (1) Notwithstanding anything contained in this Act, the following
acts do not constitute an infringement of a trade mark--
(a) the use in good faith by a person of his own name or the
name of his place of business or the name of the place
of business of any of his predecessors in business;
(b) the use in good faith by a person of a description of the
character or quality of his goods or services, and in the
case of goods not being a description that would be likely
to be taken as importing any reference as is mentioned
in paragraph 38(1)(b) or paragraph 56(3)(b);
(c) the use by a person of a trade mark in relation to goods
or services in respect of which he has by himself or his
predecessors in business, continuously used the trade
mark from a date before--
(i) the use of the registered trade mark by the registered
proprietor, by his predecessors in business or by
a registered user of the trade mark; or
(ii) the registration of the trade mark,
whichever is the earlier;
(d) in relation to goods connected in the course of trade
with the registered proprietor or a registered user of the
trade mark if, as to those goods or a bulk of which they
form part, the registered proprietor or the registered
user in conforming to the permitted use has applied the
t r a d e mark and has not subsequently removed or
obliterated it or has at any time expressly or impliedly
consented to the use of the trade mark;
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(dd) the use by a person of a trade mark in relation to goods
or services to which the registered proprietor or registered
user has at any time expressly or impliedly consented to;
(e) the use of the trade mark by a person in relation to goods
or services adapted to form part of, or to be accessory
to, other goods or services in relation to which the trade
mark has been used without infringement of the right
given or might for the time being be so used, if the use
of the trade mark is reasonably necessary in order to
indicate that the goods or services are so adapted and
neither the purpose nor the effect of the use of trade mark
is to indicate otherwise than in accordance with the facts
a connection in the course of trade between any person
and the goods or services; and
(f) the use of a trade mark, which is one of two or more
registered trade marks which are substantially identical,
in exercise of the right to the use of that trade mark given
by registration as provided by this Act.
(2) Where a trade mark is registered subject to conditions,
amendments, modifications or limitations, the trade mark is not
infringed by the use of the trade mark in any manner in relation
to goods to be sold or otherwise traded in in a place or in relation
to goods to be exported to a market or in relation to services to
be provided in a place or in any other circumstances to which
having regard to those conditions, amendments, modifications or
limitations the registration does not extend.
PART VII
RENEWAL OF REGISTRATION
Renewal of registration
41. (1) The Registrar shall, on application made by the registered
proprietor of a trade mark in the prescribed manner and within the
prescribed period, renew the registration of the trade mark for a
period of ten years from the date of expiration of the original
registration, or of the last renewal of registration, as the case may
be, and this date shall hereinafter be referred to as "the date of
expiration of the last registration".
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(2) At the prescribed time before the date of expiration of the
last registration of a trade mark the Registrar shall send notice in
the prescribed manner to the registered proprietor of the date of
expiration of the last registration and the conditions as to payment
of fees upon which the renewal of the registration may be obtained
and if such conditions have not been duly complied with, the
Registrar may remove the trade mark from the Register subject to
such conditions, if any, as to its restoration to the Register as may
be prescribed, upon payment of fees for restoration.
(3) Notwithstanding subsection (2), the registration of a trade
mark shall not be renewed where the application for renewel is
made after one year has lapsed from the date of expiration of the
last registration.
Status of unrenewed trade mark
42.  Where a trade mark has been removed from the Register for
non-payment of the fee for renewal, it shall, nevertheless, for the
purpose of an application for the registration of a trade mark
within one year from the date of expiration of the last registration
be deemed to be a trade mark which is already on the Register
except that this section shall not have effect when the Registrar
is satisfied either--
(a) that there has been no use in good faith of the trade mark
which has been removed during the two years immediately
preceding its removal; or
(b) that no deception or confusion is likely to arise from the
use of the trade mark which is the subject of the application
for registration by reason of any previous use of the trade
mark which has been removed.
PART VIII
CORRECTION AND RECTIFICATION OF REGISTER
Correction of Register
43. (1) The Registrar may, on request made in the prescribed
manner by the registered proprietor of a trade mark, amend or alter
the Register--
(a) by correcting an error or entering any change in the
name, address or description of the registered proprietor
of a trade mark;
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(b) by cancelling the entry of a trade mark in the Register;
(c) by amending the specification of the goods or services
in respect of which the trade mark is registered or entering
a disclaimer or memorandum relating to the trade mark
without extending in any way the rights given by the
existing registration of the trade mark,
and may make any consequential amendment or alteration in the
certificate of registration and for that purpose may require the
certificate of registration to be submitted to him.
(2) The Registrar may on the request made in the prescribed
manner by a registered user of a trade mark correct an error or
enter any change in the name, address or description of that registered
user.
(3) A decision of the Registrar under this section is subject to
appeal to the Court.
Alterations of registered trade mark
44. (1) The registered proprietor of a trade mark may apply in the
prescribed manner to the Registrar for leave to add to or alter the
trade mark in any manner not substantially affecting the identity
thereof and the Registrar may refuse leave or may grant it on such
terms and subject to such limitations as he may think fit.
(2) The Registrar may cause an application under this section
to be advertised in the prescribed manner in any case where it
appears to him that it is expedient to do so, and if within the
prescribed time from the date of the advertisement any person
gives notice to the Registrar in the prescribed manner of opposition
to the application, the Registrar shall, after hearing the parties if
so required, decide the matter.
(3) A decision of the Registrar under this section is subject to
appeal to the Court.
(4) Where leave under subsection (1) is granted the trade mark,
as altered, shall be advertised in the prescribed manner unless it
has already been advertised in the form to which it has been
altered in an advertisement under subsection (2).
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Rectification of the Register
45. (1) Subject to the provisions of this Act--
(a) the Court may on the application in the prescribed manner
of any person aggrieved by the non-insertion in or omission
from the Register of any entry or by any entry made in
the Register without sufficient cause or by any entry
wrongfully remaining in the Register, or by any error or
defect in any entry in the Register, make such order for
making, expunging or varying such entry as if thinks fit;
(b) the Court may in any proceeding under this section decide
any question that may be necessary or expedient to decide
in connection with the rectification of the Register;
(c) in case of fraud in the registration, assignment or
transmission of a registered trade mark or if in his opinion
it is in the public interest to do so, the Registrar may
himself apply to the Court under this section;
(d) an order of the Court rectifying the Register shall direct
that notice of the rectification be served on the Registrar
in the prescribed manner and the Registrar shall upon
receipt of the notice rectify the Register accordingly.
(2) (Deleted by Act A1078).
Provisions as to non-use of trade mark
46. (1) Subject to this section and to section 57, the Court may,
on application by a person aggrieved, order a trade mark to be
removed from the Register in respect of any of the goods or
services in respect of which it is registered on the ground--
(a) that the trade mark was registered without an intention
in good faith, on the part of the applicant for registration
or, if it was registered under subsection 26(1), on the part
of the body corporate or registered user concerned, to use
the trade mark in relation to those goods or services and
that there has in fact been no use in good faith of the
trade mark in relation to those goods or services by the
registered proprietor or registered user of the trade mark
for the time being up to the date one month before the
date of the application; or
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(b) that up to one month before the date of the application
a continuous period of not less than three years had
elapsed during which the trade mark was a registered
trade mark and during which there was no use in good
faith of the trade mark in relation to those goods or
services by the registered proprietor or registered user of
the trade mark for the time being.
( 2 ) E x c e p t where an applicant has been permitted under
section 20 to register an identical or a nearly resembling trade
mark in respect of the goods or services to which the application
relates or the Court is of the opinion that the applicant can properly
be permitted to register the trade mark, the Court may refuse an
application made under subsection (1)--
(a) in relation to any goods, if there has been, before the
relevant date or during the relevant period, as the case
may be, use in good faith of the trade mark by the registered
proprietor of the trade mark for the time being in relation
to goods of the same description, being goods in respect
of which the trade mark is registered; and
(b) in relation to any services, if there has been, before the
relevant date or during the relevant period, as the case
may be, use in good faith of the trade mark by the registered
proprietor of the trade mark for the time being in relation
to services of the same description, being services in
respect of which the trade mark is registered.
(3) Where in relation to goods in respect of which a trade mark
is registered--
(a) the matter referred to in paragraph (1)(b) are shown as
far as regards failure to use the trade mark in relation to
goods to be sold or otherwise traded in in a particular
place in Malaysia (otherwise than for export from Malaysia)
or in relation to goods to be exported to a particular
market outside Malaysia; and
(b) a person has been permitted under section 20 to register
an identical or nearly resembling trade mark in respect
of those goods under a registration extending to the use
in relation to goods to be sold or otherwise traded in in
that place (otherwise than for export from Malaysia) or
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45
in relation to goods to be exported to that market, or the
Court is of the opinion that that person might properly
be permitted to register the trade mark,
the Court may, on application by that person, direct that the
registration of the first-mentioned trade mark shall be subject to
such conditions, amendments, modifications or limitations as the
Court thinks proper for securing that that registration shall cease
to extend to use of the trade mark in relation to goods to be sold
or otherwise traded in that place (otherwise than for export from
Malaysia) or in relation to goods to be exported to that market.
(3A) Where in relation to services in respect of which a trade
mark is registered--
(a) the matters referred to in paragraph (1)(b) are shown as
far as regards failure to use the trade mark in relation to
services provided in a particular place in Malaysia; and
(b) a person has been permitted under section 20 to register
an identical or a nearly resembling trade mark in respect
of those services under a registration extending to the use
in relation to services provided in that place, or the Court
is of the opinion that that person might properly be permitted
to register the trade mark,
the Court may, on application by that person, direct that the
registration of the first-mentioned trade mark shall be subject to
such conditions, amendments, modifications or limitations as the
Court thinks proper for securing that that registration shall cease
to extend to use of the trade mark in relation to services provided
in that place.
(4) An applicant is not entitled to rely for the purpose of
paragraph (1)(b) or for the purpose of subsection (3) or (3A) on
any failure to use a trade mark if failure is shown to have been
due to special circumstances in the trade and not to an intention
not to use or to abandon the trade mark in relation to the goods
to which the application relates.
(5) (Deleted by Act A881).
Registration of assignment
4 7 . ( 1 ) W h e r e a person becomes entitled by assignment or
transmission to a registered trade mark he shall make application
to the Registrar to register his title and the Registrar shall, on
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receipt of the application and proof of title to his satisfaction,
register that person as the proprietor of the trade mark in respect
of the goods or services in respect of which the assignment or
transmission has effect and cause particulars of the assignment or
transmission to be entered in the Register.
(2) A decision of the Registrar under subsection (1) is subject
to appeal to the Court.
(3) Except in the case of an appeal under this section or of an
application under section 45 a document or instrument in respect
of which no entry has been made in the Register in accordance
with subsection (1) shall not, unless the Court otherwise directs,
be admissible in evidence in Court to prove title to a registered
trade mark.
PART IX
REGISTERED USER
Registered users
48. (1) Subject to the provisions of this section, where the registered
proprietor of a trade mark grants, by lawful contract, a right to any
person to use the trade mark for all or any of the goods or services
in respect of which the trade mark is registered, that person may
be entered on the Register as a registered user of the said trade
mark whether with or without any conditions or restrictions, provided
that it shall be a condition of any such registration that the registered
proprietor shall retain and exercise control over the use of the
trade mark and over the quality of the goods or services provided
by the registered user in connection with that trade mark.
(2) Where it is proposed that a person shall be registered as a
registered user of a trade mark, the registered proprietor shall
submit an application to the Registrar for the registration of that
person as a registered user of the trade mark and such application
shall be accompanied by the prescribed fee and the following
information:
(a) the representation of the registered trade mark;
(b) the names, addresses, and addresses for service of the
parties;
(c) the goods or services in respect of which the registration
is proposed;
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47
(d) any conditions or restrictions proposed with respect to
the characteristics of the goods or services, to the mode
or place of permitted use or to any other matter; and
(e) whether the permitted use is to be for a period or without
limit of period, and if for a period, the duration of that
period.
(3) The registered proprietor shall furnish the Registrar with
such further documents, information or evidence as may be required
by the Registrar or any regulations made under this Act.
(4) On receipt of an application for registration of a person as
a registered user of a trade mark under subsection (2), the Registrar
shall enter on the Register all the particulars required to be provided
thereunder.
(5) Where a person has been registered as a registered user of
a trade mark, the use of that trade mark by the registered user
within the limits of his registration shall be deemed to be use by
the registered proprietor of the trade mark to the same extent as
the use of the trade mark by the registered user and shall be
deemed not to be use by any other person.
(6) Subsection (5) shall cease to have effect with regard to any
registered user of a trade mark--
(a) if the trade mark ceases to be a registered trade mark for
any reason;
(b) if the goods or services for which the trade mark is
registered are subsequently limited so as to exclude any
or all of the goods or services in respect of which the
registration of the registered user has been made;
(c) if the registered proprietor ceases to exercise control
over the use of the trade mark and over the quality of the
goods or services provided by the registered user concerned
in relation to that trade mark;
(d) at the date of expiration of the last registration of the
trade mark unless a fresh application under subsection
(2) accompanies any application for renewal of the
registration of that trade mark;
(e) at the date of any assignment or transmission of the
registered trade mark, unless and until the devolution of
title is recorded on the Register in accordance with the
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provisions of this Act and the subsequent proprietor of
the registered trade mark makes a fresh application under
subsection (2).
(7) If the registered proprietor of a trade mark fails to exercise
any of the rights conferred on him by his registration to the prejudice
of any registered user of that trade mark, the registered user may
apply to the Court for such relief as the Court may consider just,
including rectification of the Register by ordering that the registered
user be recorded as the registered proprietor of the trade mark, and
in any case where use of the trade mark by any person entitled to
use it would be likely to deceive or cause confusion, the Court may
order that the trade mark shall be removed from the Register,
notwithstanding the provisions of section 37.
( 8 ) S e c t i o n 62 shall apply to any proceedings under
subsection (7) that might lead to any alteration or rectification of
the Register.
Powers to vary, extend or cancel registration of a registered
user
49. (1) Without prejudice to section 45, the registration of a person
as a registered user--
(a) may be varied by the Registrar on the written application
in the prescribed manner of the registered proprietor with
respect to the goods or services for which or with respect
to any conditions or restrictions subject to which the
registration has effect;
(b) may be extended by the Registrar on the application in
writing of the registered proprietor for such period as the
Registrar thinks fit;
(c) may be cancelled by the Registrar on the application of
the registered proprietor.
(d) (Deleted by Act A881).
(2) The Registrar may at any time cancel the registration of a
person as a registered user of a trade mark for any goods or
services in respect of which the trade mark is no longer registered.
(3) Any decision of the Registrar under subsection (1) or (2) is
subject to appeal to the Court.
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49
(Deleted by Act A881).
50.
Infringement proceeding
51. (1) Subject to any agreement subsisting between the registered
user of a trade mark and the registered proprietor of the trade
mark, the registered user is entitled to call upon the registered
proprietor to take proceedings for infringement of the trade mark,
and if the registered proprietor refuses or neglects to do so within
two months after being so called upon, the registered user may
institute proceedings for infringement in his own name as if he
were the registered proprietor and shall make the registered proprietor
a defendant.
(2) A registered proprietor so added as a defendant is not liable
for costs unless he enters an appearance and takes part in the
proceedings.
Registered user not to assign
52.  This Part does not confer on the registered user of a trade
mark an assignable or transmissible right to the use of that trade
mark.
(Deleted by Act A881).
5354.
PART X
ASSIGNMENT OF TRADE MARKS
Assignment and transmission of trade marks
55. (1) Subject to this section, a registered trade mark shall be
assignable and transmissible with or without the goodwill of the
business concerned in the goods or services in respect of which
the trade mark is registered or in part of the goods or services.
(1A) Subsection (1) shall have effect in the case of an unregistered
trade mark used in relation to any goods or services as it has effect
in the case of a registered trade mark registered in respect of any
goods or services, if at the time of the assignment or transmission
of the unregistered trade mark it is or was used in the same
business as a registered trade mark, and if it is or was assigned
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or transmitted at the same time and to the same person as that
registered trade mark and in respect of goods or services all of
which are goods or services in relation to which the unregistered
trade mark is or was used in that business and in respect of which
that registered trade mark is or was assigned or transmitted.
(2) Notwithstanding subsection (1), an assignment of a registered
t r a d e mark without goodwill whether before or after the
commencement of this Act is invalid if the trade mark has not at
any time before the assignment been in use in good faith in Malaysia
by the assignor or his predecessor in title except that this subsection
does not apply where--
(a) the trade mark was registered with the intention that it
shall be assignable to a body corporate yet to be formed
and the trade mark has been assigned; or
(b) the trade mark was registered with the intention that a
person shall be permitted to use it as a registered user
and such registered user has been registered in respect
of the trade mark within six months after the registration
of the trade mark and has used that trade mark within that
period.
(3) Notwithstanding subsections (1) and (1A), a trade mark shall
be deemed not to be assignable or transmissible if, as a result of
the assignment or transmission, whether under common law or by
registration, more than one of the persons concerned would have
exclusive rights to the use of an identical trade mark or to the use
of trade marks so nearly resembling each other as are likely to
deceive or cause confusion.
(4) Where an application is made in the prescribed manner by
the registered proprietor of a trade mark who proposes to assign
it or by a person who claims that a trade mark has been transmitted
to him or to a predecessor in title of his since the commencement
of this Act, the Registrar, if he is satisfied that in all circumstances
the use of the trade marks in exercise of the said rights would not
be contrary to the public interest, may in writing approve the
assignment or transmission and an assignment or transmission so
approved shall not be deemed to be or to have been invalid under
this section but this provision shall not have effect unless application
for the registration under section 47 of the title of the person
becoming entitled is made within six months from the date on
which the approval is given or, in the case of a transmission, was
made before that date.
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51
(5) Where an assignment in respect of any goods or services of
a trade mark which is at the time of the assignment used in a
business in those goods or services is made otherwise than in
connection with the goodwill of that business, the assignment shall
not be deemed to have taken effect unless the assignment has been
advertised in the prescribed manner and the application for the
assignment without goodwill, accompanied by the advertisement,
has been sent to the Registrar.
(6) (Deleted by Act A881).
(7) A decision of the Registrar under this section is subject to
appeal to the Court.
PART XI
CERTIFICATION TRADE MARKS
Certification trade marks
56. (1) A mark must be capable, in relation to any goods or
services, of distinguishing in the course of trade goods or services
certified by any person in respect of origin, material, mode of
manufacture, quality, accuracy, or other characteristic, from goods
or services not so certified shall be registrable as a certification
trade mark in the Register in respect of those goods or services
in the name of that person as proprietor thereof except that a mark
shall not be so registrable in the name of a person who carries on
a trade in goods or services of the kind certified.
(2) In determining whether a mark is capable of distinguishing,
the Registrar may have regard to the extent to which--
(a) the mark is inherently capable of distinguishing in relation
to the goods or services in question; and
(b) by reason of the use of the mark or any other circumstances,
the mark is in fact capable of distinguishing in relation
to the goods or services in question.
(3) Subject to paragraphs 37(a) and (b), paragraphs 40(1)(a) to
(c) and this Part, the registration of a person as registered proprietor
of a certification trade mark in respect of any goods or services
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shall, if valid, give to that person the exclusive right to the use
of the trade mark in relation to those goods or services, and without
prejudice to the generality of the foregoing words, that right shall
be deemed to be infringed by any person who, not being the
registered proprietor of the trade mark or a person authorized by
him under the rules in that behalf using it in accordance therewith,
uses a mark identical with it or so nearly resembling it as is likely
to deceive or cause confusion, in the course of trade, in relation
to any goods or services in respect of which it is registered and
in such manner as to render the use of the mark likely to be taken
either--
(a) as being use as a trade mark;
(b) in the case in which the use is use upon the goods or
services or in physical relation thereto or in an advertising
circular, or other advertisement issued to the public, as
importing a reference to some person having the right
either as registered proprietor or by his authorization
under the relevant rules to use the trade mark or to goods
or services certified by the registered proprietor; or
(c) in a case in which the use is use at or near the place
where the services are available or performed or in an
advertising circular or other advertisement issued to the
public, as importing a reference to a person having a
right either as proprietor or as a registered user to use the
trade mark or to services with the provision of which
such person is connected in the course of trade.
(4) The right to the use of a certification trade mark given by
registration shall be subject to any conditions, amendments,
modifications or limitations entered on the Register and shall not
be deemed to be infringed by the use of any such mark in any
mode, in relation to goods to be sold or otherwise traded in in any
place, in relation to goods to be exported to any market, in relation
to services to be provided in a place or in any circumstances to
w h i c h having regard to any such conditions, amendments,
modifications or limitations, the registration does not extend.
(5) The right to the use of a certification trade mark given by
registration shall not be deemed to be infringed by the use of any
such mark by a person--
(a) in relation to goods certified by the registered proprietor
of the trade mark if, as to those goods or a bulk of which
they form part, the proprietor or another in accordance
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53
with his authorization under the relevant rules has applied
the trade mark and has not subsequently removed or
obliterated it;
(aa) where the registered proprietor has at any time expressly
or impliedly consented to the use of the trade mark; or
(b) in relation to goods or services adapted to form part of,
or to be accessory to, other goods or services in relation
to which the trade mark has been used without infringement
of the right given or might for the time being be so used,
if the use of the mark is reasonably necessary in order
to indicate that the goods or services are so adapted and
neither the purpose nor the effect of the use of the mark
is to indicate otherwise than in accordance with the fact
that the goods or services are certified by the registered
proprietor,
except that paragraph (a) shall not have effect in the case of use
consisting of the application of any such mark to any goods,
notwithstanding that they are such goods as are mentioned in that
paragraph, if such application is contrary to the relevant rules.
(6) Where a certification trade mark is one of two or more
registered trade marks which are identical or nearly resembling
each other, the use of any of those trade marks in exercise of the
right to the use of that trade mark given by registration shall not
be deemed to be an infringement of the right so given to the use
of any other of those trade marks.
(7) An application for the registration of a trade mark under this
section must be made to the Registrar in writing in the prescribed
manner by the person who proposes to be registered as the proprietor
thereof.
(8) Subsections 25(2) to (8) and subsection 25(10) shall have
effect in relation to an application under this section as they have
effect in relation to an application under subsection (1) of that
section.
(9) In dealing with an application under this section the Registrar
shall have regard to the like considerations, as far as relevant, as
if the application were an application under section 25 and to any
other considerations relevant to applications under this section,
including the desirability of securing that a certification trade
mark shall comprise some indication that it is such a trade mark.
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(10) An applicant for the registration of a trade mark under this
section shall transmit to the Registrar draft rules for governing the
use thereof, which shall include provisions as to the cases in which
the proprietor is to certify goods or services and to authorize the
use of the trade mark and may contain any other provisions that
the Registrar may require or permit to be inserted therein (including
provisions conferring a right of appeal to the Registrar against any
refusal of the proprietor to certify goods or services or to authorize
the use of the trade mark in accordance with the rules) and such
rules, if approved, shall be deposited with the Registrar and shall
be open to inspection in like manner as the Register.
(11) The Registrar shall consider the application with regard to
the following matters, that is to say--
(a) whether the applicant is competent to certify the goods
or services in respect of which the mark is to be registered;
(b) whether the draft rules are satisfactory; and
(c) whether in all the circumstances the registrations applied
for would be to the public advantage,
and may either--
(i) refuse to accept the application; or
(ii) accept the application and approve the rules, either without
m o d i f i c a t i o n and unconditionally or subject to any
conditions, amendments, modifications or limitations of
the application or of the rules, which he may think requisite,
but except in the case of acceptance and approval without modification
and unconditionally, the Registrar shall not decide the matter without
giving to the applicant an opportunity of being heard and the
Registrar may, at the request of the applicant, consider the application
before authorization to proceed with the application has been given,
so that he shall be at liberty to reconsider any matter on which he
has given a decision if any amendment or modification is thereafter
made in the application or in the draft rules.
(12) Where an application has been accepted the Registrar shall,
as soon as may be after such acceptance, cause the application as
accepted to be advertised in the prescribed manner and section 28
shall have effect in relation to the registration of the mark as if
the application had been an application under section 25 except
that, in deciding under section 28, the Registrar shall have regard
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55
only to the consideration referred to in subsection (9), and a decision
under section 28 in favour of the applicant shall be conditional on
t h e determination in his favour by the Registrar under
subsection (13) of any opposition relating to any of the matters
referred to in subsection (11).
(13) When notice of opposition is given relating to any of the
matters referred to in subsection (11), the Registrar shall, after
hearing the parties, if so required, and considering any evidence,
decide whether, and subject to what conditions, amendments,
modifications or limitations of the application or of the rules, if
any, registration is, having regard to those matters, to be permitted.
(14) (a) The rules deposited in respect of a certification trade
mark may, on the application of the registered proprietor, be altered
by the Registrar.
(b) The Registrar may cause an application for his consent to
be advertised in any case where it appears to him that it is expedient
to do so, and, where the Registrar causes an application to be
advertised, if within the prescribed time from the date of the
advertisement any person gives notice to the Registrar of opposition
to the application, the Registrar shall not decide the matter without
giving the parties an opportunity of being heard.
(15) The Court may, on the application in the prescribed manner
of any person aggrieved, or on the application of the Registrar,
make such order as it thinks fit for expunging or varying any entry
in the Register, relating to a certification trade mark, or for varying
the deposited rules, on the ground--
(a) that the registered proprietor is no longer competent, in
the case of any of the goods or services in respect of
which the trade mark is registered, to certify the goods
or services;
(b) that the registered proprietor has failed to observe a
provision of the deposited rules to be observed on his
part;
(c) that it is no longer to the public advantage that the trade
mark should be registered; or
(d) that it is requisite for the public advantage that, if the
trade mark remains registered, the rules should be varied,
but the Court shall not have any jurisdiction to make an order
under section 45 on any of these grounds.
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(16) The Registrar shall rectify the Register and the deposited
rules in such manner as may be requisite for giving effect to an
order made under subsection (15).
(17) Notwithstanding anything in subsection 63(2) the Registrar
shall not have any jurisdiction to award costs to or against any
party on an appeal to him against a refusal of the registered proprietor
of certification trade mark to certify goods or services or to authorize
the use of the trade mark.
(18) (Deleted by Act AA1078).
(19) The provisions of this Part shall be construed subject to
section 19 of the *Standards Act 1966 [Act 76 of 1966]*.
PART XII
DEFENSIVE TRADE MARKS
Defensive registration of well known trade marks
57. (1) Where a trade mark consisting of an invented word or
words has become so well known as regards any goods or services
in respect of which it is registered and, in relation to which it has
been used, that the use thereof in relation to other goods or services
would likely to be taken as indicating a connection in the course
of trade between the other goods or services and a person entitled
to use the trade mark in relation to the first mentioned goods or
services, then, notwithstanding that the proprietor registered in
respect of the first mentioned goods or services does not use or
propose to use the trade mark in relation to the other goods or
services and notwithstanding anything in section 46 the trade mark
may, on the application in a prescribed manner of the proprietor
registered in respect of the first mentioned goods or services, be
registered in his name in respect of the other goods or services
as a defensive trade mark and while so registered, shall not be
liable to be taken off the Register in respect of other goods or
services under section 46.
(2) The registered proprietor of a trade mark may apply for the
registration thereof in respect of any goods or services as a defensive
trade mark notwithstanding that it is already registered in his name
in respect of the goods or services otherwise than as a defensive
*NOTE--The Standards Act 1966 [Act 76 of 1966] was repealed by the Standards and Industrial Research
Institute of Malaysia (Incorporation) Act 1975 [Act 157]--see s.42 of Act 157. Act 157 has since been
repealed by the Standards of Malaysia Act 1996 [Act 549]--see s.23 of Act 549.
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57
trade mark, or may apply for the registration thereof in respect of
any goods or service otherwise than as a defensive trade mark
notwithstanding that it is already registered in his name in respect
of the goods as a defensive trade mark, in lieu in each case of the
existing registration.
Defensive trade mark deemed to be associated trade mark
58.  A trade mark registered as a defensive trade mark and that
trade mark as otherwise registered in the name of the same proprietor
shall notwithstanding that the respective registrations are in respect
of different goods or services be deemed to be, and shall be registered
as, associated trade marks.
Rectification of Register
59.  The Registrar may at any time cancel the registration of a
defensive trade mark of which there is no longer any registration
in the name of the same proprietor otherwise than as a defensive
trade mark.
Application of Act
60.  Subject to this Part, this Act applies in relation to the registration
of a trade mark as a defensive trade mark and a trade mark registered
as a defensive trade mark but it is not necessary for the registered
proprietor of a defensive trade mark to prove use of the trade mark
for the purpose of obtaining renewal of the registration.
PART XIII
LEGAL PROCEEDINGS, COST AND EVIDENCE
Certificate of validity
61.  In any legal proceedings in which the validity of a registered
trade mark comes into question and is decided in favour of the
registered proprietor of the trade mark, the Court may certify to
that effect, and if it so certifies then in any subsequent legal
proceedings in which the validity of the registration comes into
question the registered proprietor of the trade mark on obtaining
a final order or judgment in his favour shall have his full costs,
charges and expenses as between solicitor and client, unless in the
subsequent proceedings the Court certifies that he ought not to
have them.
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Hearing of Registrar
62. (1) In any legal proceedings in which the relief sought includes
alteration or rectification of the Register, the Registrar shall have
the right to appear and be heard, and shall appear if so directed
by the Court.
(2) Unless otherwise directed by the Court, the Registrar, in
lieu of appearing and being heard, may submit to the Court a
statement in writing signed by him, giving particulars of the
proceedings before him in relation of the matter in issue or of the
grounds of any decision given by him affecting the same or of the
practice of the office in like cases, or of such other matters relevant
to the issues, and within his knowledge as Registrar, as he thinks
fit, and such statement shall be deemed to form part of the evidence
in the proceedings.
Costs
63. (1) In all proceedings before the Court under this Act, the
Court may award to any party such costs as it may consider reasonable
and the costs as it may consider reasonable and the costs of the
Registrar shall be in the discretion of the Court, but the Registrar
shall not be ordered to pay the costs of any of the other parties.
(2) In all proceedings before the Registrar under this Act, the
Registrar shall have power to award to any party such costs as he
may consider reasonable and to direct how and by what parties
they are to be paid, and any such order may, by leave of the Court,
be enforced in the same manner as a judgment or order of the
Court to the same effect.
Mode of giving evidence
64. (1) In all proceedings before the Registrar under this Act, the
evidence shall be given by statutory declaration in the absence of
directions to the contrary, but, in any case in which he thinks fit,
the Registrar may take evidence viva voce in lieu of or in addition
to evidence by declaration.
(2) Any such statutory declaration may, in the case of appeal,
be used before the Court in lieu of evidence by affidavit, but if
so used, shall have all the incidents and consequences of evidence
by affidavit.
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59
(3) In any action or proceedings relating to a trade mark or
trade name, the Registrar or the Court, as the case may be, shall
admit evidence of the usages of the trade concerned or evidence
of business usages in the provision of the services in question, and
evidence of any relevant trade marks or trade name or business
name or get-up legitimately used by other persons.
Sealed copies to be evidence
65. (1) Printed or written copies or extracts of or from the Register
purporting to be certified by the Registrar and sealed with his seal
shall be admissible as evidence in any proceedings before any
court of law without further proof or production of the originals.
(2) A certificate purporting to be under the hand of the Registrar
as to any act which he is authorized under this Act to perform and
which he has or has not performed, as the case may be, shall be
prima facie evidence in any proceedings before any court of law
of his having or not having performed the act.
Minister may declare documents of foreign state pertaining to
trade marks to be admissible
66. (1) The Minister may by order published in the Gazette declare
any documents or class of documents of a foreign state to be
admissible as evidence in any proceedings before a Court if--
(a) the document is sealed with the seal of the authorized
officer or the government of the foreign state and the seal
pertains to the trade marks registered in or otherwise
recognized by the foreign country or if there is no such
seal there is enclosed a certificate signed by the authorized
officer to the effect that the document is evidence of the
matter contained therein; and
(b) the foreign state or part thereof has entered into reciprocal
arrangements with the Government of Malaysia in respect
of the admissibility of the documents.
(2) For the purpose of this section--
"authorized officer" means a person or authority authorized by
the government of the foreign state to keep and maintain a register
or other record of trade marks under any written law in force in
the foreign state relating to trade marks;
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"document" means--
(a) a printed or written copy of extract or other record of
trade marks kept and maintained in the foreign state
under any written law in force in the foreign state relating
to trade marks; or
(b) any other document pertaining to any matter or act in
relation to trade marks registered in or otherwise recognized
by the foreign state as trade marks;
"trade mark" means any device, brand, heading, label, ticket,
name, signature, word, letter, numeral or any combination thereof
which is used or proposed to be used in relation to goods or
services for the purpose of indicating or so as to indicate a connection
in the course of trade between the goods or services and a person
having the right either as proprietor or as registered user to use
the trade mark (in the foreign state) whether with or without any
indication of the identity of that person and which is registered or
otherwise recognized by the foreign state as a trade mark (under
any written law in force in the foreign state relating to trade
marks) but does not include the trade marks of another foreign
state registered in or otherwise recognized by the foreign state by
virtue of a reciprocal arrangement between the foreign state and
that other foreign state.
(3) For avoidance of doubt this section shall not be construed
to confer recognition of the trade marks of any foreign state for
the purpose of registration under this Act but shall be construed
only with references to the admissibility of evidence in any
proceedings before a Court of the documents of the foreign state.
Discretionary power
67.  In any appeal from the decision of the Registrar under this
Act the Court shall have and exercise the same discretionary powers
as are conferred upon the Registrar under this Act.
(Deleted by Act A881).
68.
Appeal from Registrar
69.  Except where expressly given by the provisions of this Act
or regulations made thereunder there shall be no appeal from a
decision of the Registrar but the Court, in dealing with any question
of the rectification of the Register (including all applications under
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61
section 45), shall have power to review any decision of the
Registrar relating to the entry in question or the correction sought
to be made.
PART XIV
CONVENTIONS AND INTERNATIONAL
ARRANGEMENTS
Right of priority under Convention, etc.
70. (1) Where any person has applied for protection of any trade
mark in a Convention country or prescribed foreign country, such
person or his legal representative or assignee, after furnishing a
declaration within the prescribed time indicating the date of the
application and the country in which it was made, shall in respect
of the application for registration of his trade mark, be entitled to
a right of priority and such application in Malaysia shall have the
same date as the date of the application for protection in the
Convention country or prescribed foreign country concerned, as
the case may be, subject to the following:
(a) that the application for registration is made within six
months from the date of application for protection in the
C o n v e n t i o n country or prescribed foreign country
concerned, as the case may be; and where an application
for protection is made in more than one Convention country
or prescribed foreign country, the period of six months
referred to herein shall be reckoned from the date on
which the earlier or earliest of those applications is made;
(b) that the applicant shall be either a national or resident of,
or a body corporate incorporated under the laws of, the
C o n v e n t i o n country or prescribed foreign country
concerned, as the case may be; and
(c) that nothing in this section shall entitle the proprietor of
a trade mark to recover damages for infringements or any
happening prior to the date on which the application for
protection of the trade mark is made in Malaysia.
(2) N o t w i t h s t a n d i n g any other provision of this Act, the
registration of a trade mark in respect of which a right of priority
exists shall not be refused or revoked by reason only of the use
of the trade mark by some other person in Malaysia during the said
period of six months.
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(3) The application for the registration of a trade mark in respect
of which a right of priority exists--
(a) shall be made and dealt with in the same manner as an
ordinary application for registration under this Act; and
(b) shall specify the Convention country or prescribed foreign
country, as the case may be, in which the application for
protection, or the first such application, was made and
the date on which such application for protection was
made.
(4) As regards prescribed foreign countries, this section shall
apply only for the duration of the period the order continues in
force in respect of that country.
(5) For the purposes of this Act, the Minister may, by order
published in the Gazette, declare a country as having made
arrangements with Malaysia for the reciprocal protection of trade
marks.
Temporary protection of trade marks in respect of goods or
services which are the subject matters of international exhibitions
70A. (1) Notwithstanding anything in this Act, temporary protection
shall be granted to a trade mark in respect of goods or services
which are the subject matters of an exhibition at an official or
officially recognized international exhibition held in Malaysia or
in any Convention country or prescribed foreign country.
(2) The temporary protection granted under subsection (1) shall
not extend any period of priority claimed by an applicant and
where a right of priority is claimed by an applicant subsequent to
the temporary protection, the period of priority shall remain six
months but the period shall commence from the date of the
introduction of the goods or services into the exhibition.
(3) An applicant for registration of a trade mark whose goods
or services are the subject matters of an exhibition at an official
or officially recognized international exhibition in Malaysia or in
any Convention country or prescribed foreign country and who
applies for registration of that mark in Malaysia within six months
from the date on which the goods or services first became the
subject matters of the exhibition shall, on his request, be deemed
to have applied for registration on the date on which the goods or
services first became the subject matters of the exhibition.
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(4) Evidence that the goods or services bearing the trade mark
are the subject matters of an exhibition at an official or officially
recognized international exhibition shall be by a certificate issued
by the competent authorities of the exhibition.
Protection of well-known trade marks
70B. (1) The proprietor of a trade mark which is entitled to protection
under the Paris Convention or the TRIPS Agreement as a well
known trade mark is entitled to restrain by injunction the use in
Malaysia in the course of trade and without the proprietor's consent
of the trade mark which, or the essential part of which, is identical
with or nearly resembles the proprietor's mark, in respect of the
same goods or services, where the use is likely to deceive or cause
confusion.
(2) Nothing in subsection (1) shall affect the continuation of
any bona fide use of a trade mark begun before the commencement
of this Act.
(3) In this section, references to a trade mark which is entitled
to protection under Article 6bis of the Paris Convention or Article
16 of the TRIPS Agreement as a well known trade mark are to a
mark which is well known in Malaysia as being the mark of a
person whether or not that person carries on business, or has any
goodwill, in Malaysia, and references to the proprietor of such a
mark shall be construed accordingly.
PART XIVA
BORDER MEASURES
Interpretation
In this Part, unless the context otherwise requires--
70C.
"authorized officer" means--
(a) a proper officer of customs as defined under the Customs
Act 1967 [Act 235]; or
(b) any public officer or any person in the employment of
the Corporation appointed by the Minister by notification
in the Gazette to exercise the powers and perform the
duties conferred and imposed on an authorized officer by
this Part;
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"counterfeit trade mark goods" means any goods, including
packaging, bearing without authorization a trade mark which is
identical with or so nearly resembles the trade mark validly registered
in respect of such goods, or which cannot be distinguished in its
essential aspects from such a trade mark, and which infringes the
rights of the proprietor of the trade mark under this Act;
"goods in transit" means goods imported, whether or not landed
or transshipped within Malaysia, which are to be carried to another
country either by the same or another conveyance;
"import" means to bring or cause to be brought into Malaysia
by whatever means;
"retention period", in relation to seized goods, means--
(a) the period specified in a notice given under section 70G
in respect of the goods; or
(b) if the period has been extended under section 70G, that
period so extended;
"security" means any sum of money in cash;
"seized goods" means goods seized under section 70D.
Restriction on importation of counterfeit trade mark goods
70D. (1) Any person may submit an application to the Registrar
stating--
(a) that he is the proprietor of a registered trade mark or an
agent of the proprietor having the power to submit such
application;
(b) that, at a time and place specified in the application,
goods which, in relation to the registered trade mark, are
counterfeit trade mark goods are expected to be imported
for the purpose of trade; and
(c) that he objects to such importation.
(2) An application under subsection (1) shall be supported by
such documents and information relating to the goods as to enable
them to be identified by the authorized officer, and accompanied
by such fee as may be prescribed.
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(3) Upon receipt of the application under subsection (1), the
Registrar shall determine the application, and the Registrar shall
within a reasonable period inform the applicant whether the
application has been approved.
(4) In determining the reasonable period under subsection (3),
the Registrar shall take into consideration all relevant circumstances
of the case.
(5) An approval under subsection (3) shall remain in force until
the end of the period of sixty days commencing on the day on
which the approval was given, unless it is withdrawn before the
end of that period by the applicant by giving a notice in writing
to the Registrar.
(6) Where an approval has been given under this section and
has not lapsed or been withdrawn, the importation of any counterfeit
trade mark goods into Malaysia for the duration of the period
specified in the approval shall be prohibited.
(7) Upon giving his approval under subsection (3) the Registrar
shall immediately take the necessary measures to notify the authorized
officer.
(8) Where an authorized officer has been notified by the Registrar,
he shall take the necessary action to prohibit any person from
importing goods identified in the notice, not being goods in transit,
and shall seize and detain the identified goods.
Security
70E. (1) The Registrar shall, upon giving his approval under section
70D, require the applicant to deposit with the Registrar a security
which in the opinion of the Registrar is sufficient to--
(a) reimburse the Registrar for any liability or expense it is
likely to incur as a result of the seizure of the goods;
(b) prevent abuse and to protect the importer; or
(c) pay such compensation as may be ordered by the Court
under this Part.
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Secure storage of seized goods
70F. (1) Seized goods shall be taken to such secure place as the
Registrar may direct or as the authorized officer deems fit.
(2) If it is stored on the direction of the authorized officer, the
authorized officer shall inform the Registrar of the whereabouts
of the seized goods.
Notice
70G. (1) As soon as is reasonably practicable after goods are
seized under section 70D, the authorized officer shall give to the
Registrar, importer and the applicant, either personally or by registered
post, a written notice identifying the goods, stating that they have
been seized and the whereabout of the goods.
(2) A notice under subsection (1) shall also state that the goods
will be released to the importer unless an action for infringement
in respect of the goods is instituted by the applicant within a
specified period from the date of the notice.
(3) If at the time of the receipt of the notice an action for
infringement has been instituted by the applicant, the applicant
shall notify the Registrar of that fact.
(4) The applicant may, by written notice given to the Registrar
before the end of the period specified in the notice (the initial
period), request that the period be extended.
(5) Subject to subsection (6), if--
(a) a request is made in accordance with subsection (4); and
(b) the Registrar is satisfied that it is reasonable that the
request be granted,
the Registrar may extend the intial period.
( 6 ) A decision on a request made in accordance with
subsection (4) shall be made within two working days after the
request is made, but such a decision cannot be made after the end
of the initial period to which the request relates.
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Inspection, release, etc., of seized goods
70H. (1) The Registrar may permit the applicant or the importer
to inspect the seized goods if he agrees to give the requisite
undertakings.
(2) The requisite undertakings mentioned in subsection (1) are
undertakings in writing that the person giving the undertakings
will--
(a) return the sample of the seized goods to the Registrar at
a specified time that is satisfactory to the Registrar; and
(b) take reasonable care to prevent damage to the sample.
(3) If the applicant gives the requisite undertakings, the Registrar
may permit the applicant to remove a sample of the seized goods
from the custody of the Registrar for inspection by the applicant.
(4) If the importer gives the requisite undertakings, the Registrar
may permit the importer to remove a sample of the seized goods
from the custody of the Registrar for inspection by the importer.
(5) If the Registrar permits inspection of the seized goods, or
the removal of a sample of the seized goods, by the applicant in
accordance with this section, the Registrar is not liable to the
importer for any loss or damage suffered by the importer arising
out of--
(a) damage to any of the seized goods incurred during that
inspection; or
(b) anything done by the applicant or any other person to,
or in relation to, a sample removed from the custody of
the Registrar or any use made by the applicant or any
other person of such a sample.
Forfeiture of seized goods by consent
70I. (1) Subject to subsection (2), the importer may, by written
notice to the Registrar, consent to the seized goods being forfeited.
(2) The notice shall be given before any action for infringement
in