MALAYSIA Trends and Developments Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
base application or registration is withdrawn, rejected, cancelled or invalidated within this time frame. From the standpoint of a Malaysian practitioner, this raises serious strategic issues in cases where the base application comes from jurisdictions that have:
Accordingly, careful drafting of specifications, assess- ment of registrability and pre-filing clearance searches in Malaysia remain highly important even where the ultimate intention is international expansion. Emerging Regulatory Pressure Point in Malaysia Despite Malaysia’s efforts to promote international brand expansion and attract foreign investment, recent regulatory changes have raised practical con- cerns for foreign trade mark owners who rely solely on Madrid designations. In recent years, local regulatory authorities and gov- ernmental bodies have adopted a more stringent approach towards licensing approvals, advertising approvals, operational permits, franchise-related compliance and commercial legitimacy verification. This development is driven by increasing concerns relating to: • consumer protection; • anti-counterfeiting enforcement; • commercial accountability; • misleading representations; and • verification of lawful brand ownership. As part of regulatory approval procedures, a grow- ing number of authorities now require applicants and company owners to provide evidence of trade mark registration in Malaysia, including local trade mark registration certificates. In practical terms, regulatory bodies increasingly view trade mark registration as a means of confirming com- mercial legitimacy rather than merely as an intellectual property right. A registered trade mark certificate is often perceived as evidence that: • the applicant has a genuine commercial presence; • the brand has undergone legal scrutiny; • the applicant possesses lawful rights to market the goods or services; and • the risk of counterfeit or misleading commercial conduct is reduced. For international applicants who depend on pending Madrid designations, this poses a serious practical challenge. The issuance of a local registration cer-
• aggressive opposition environments; • stricter distinctiveness thresholds; • vulnerability to bad-faith attacks; or • uncertain registrability positions.
Although the Madrid framework has transformation mechanisms, the process of transitioning interna- tional designations into national applications can be expensive and time-consuming, thus reducing some of the commercial efficiencies the Madrid System was designed to achieve. Requirements for Madrid International Registration with Malaysia as the Office of Origin To file an international application through the Madrid System with Malaysia as the office of origin, the applicant must satisfy the eligibility requirements pre- scribed under the Trademarks Act 2019 and related regulations. The applicant must either: • be a citizen of Malaysia; • be a body corporate or entity incorporated under Malaysian laws; • be domiciled in Malaysia; or • have a real and effective industrial or commercial establishment in Malaysia. In addition, the applicant must have made a Malaysian basic application or registration for the same trade mark. The international application must: • have the same owner as the Malaysian basic mark; • relate to the identical trade mark; and • cover goods and/or services that are identical to or narrower than those claimed in the Malaysian basic application or registration. In practice, applicants must also appreciate that the strength and registrability of the Malaysian basic application become commercially critical due to the dependency principle under the Madrid framework.
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