MALAYSIA Trends and Developments Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
In addition, the Madrid System imposes relatively strict timelines on designated trade mark offices to examine applications and issue provisional refusals within 18 months of the international filing date. From a strategic perspective, this promotes greater proce- dural predictability and encourages faster examination timelines amongst participating jurisdictions. Additionally, companies in the digital economy and international e-commerce sectors can benefit greatly from the Madrid System. Coordinated filing dates and standardised portfolio management systems may be advantageous for companies planning to launch goods or services concurrently in several jurisdictions. The ability to obtain extensive international cover- age at a comparatively lower initial cost, rather than submitting multiple separate national applications, is especially advantageous for start-ups, SMEs and technology companies. Nevertheless, despite its benefits, the Madrid Sys- tem has also led to misunderstandings among trade mark owners, who might erroneously believe that the examination procedure is carried out consist- ently worldwide. In practice, substantive examination remains wholly territorial, even though filing is cen- tralised. Every designated nation reviews the trade mark application in compliance with local examination procedures, public policy considerations, registrabil- ity thresholds and domestic laws. As a result, a trade mark may succeed in one jurisdiction but encounter resistance or rejection in another. This issue is increasingly evident in Malaysia, where local examination practices under the Trademarks Act 2019 and the Trade Marks Regulations 2019 may dif- fer substantially from those adopted in other jurisdic- tions. In particular, Malaysia adopts relatively specific requirements concerning the specifications of goods and services. Unlike national applications, where local trade mark agents may tailor specifications to align with MyIPO’s local practice and examination preferences, international applications filed through the Madrid System require the applicant to select or rely upon goods and services descriptions contained within the Madrid Goods and Services Manager data- base. Such descriptions may not always align neatly
with local examination standards or acceptable ter- minology. For example, specifications acceptable in jurisdictions such as the European Union or the United States may face objections in Malaysia due to local classification practices, insufficient clarity, overly broad wording or unacceptable terminology under MyIPO’s examination standards. This frequently results in provisional refus- als that require amendments, limitations, disclaimers or narrowing of the specifications. In some circumstances, applicants may need to reduce or delete goods and services in certain juris- dictions while maintaining broader specifications in others, resulting in additional costs for:
• handling office actions; • appointing local agents;
• meeting translation requirements; and • navigating procedural complexities.
This may undermine some of the anticipated cost sav- ings initially associated with the Madrid filing strategy. The relatively restricted procedural flexibility offered by Madrid applications is another growing issue in Malaysia. In contrast to national filings, the authority and practical flexibility of local examiners are restrict- ed once the international application has been sent to the International Bureau of WIPO. Local trade mark agents may proactively interact with MyIPO examiners in a direct national application to handle objections, strategically modify specifications, expedite exami- nations in extraordinary situations or more effectively address procedural flaws. Due to procedural limita- tions imposed by the international framework, such flexibility is frequently more restricted under Madrid designations. Furthermore, for the first five years following the date of international registration, registrations are still sus- ceptible to the “central attack” principle. The validity and survival of the base application or registration in the office of origin could affect the international regis- tration during this dependency period. Therefore, the entire international registration may be impacted if the
197 CHAMBERS.COM
Powered by FlippingBook