MALAYSIA Trends and Developments Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
tificate may take some time, depending on examina- tions, objections, opposition proceedings or proce- dural requirements, even though a Madrid designation ultimately extends protection to Malaysia. As the local officers are typically more accustomed to and at ease with locally issued Malaysian trade mark certificates that can be verified through MyIPO records, many local authorities are hesitant to rely exclusively on proof of pending designation or interna- tional registration details issued by WIPO. Before final local acceptance, some authorities may lack opera- tional familiarity with the legal implications of Madrid designations or international registrations. Consequently, foreign investors frequently encounter commercial anxieties where pending trade mark reg- istration status becomes an obstacle to obtaining the following, depending on the local authorities’ queries: • licences; • advertising approvals; • import permits; • distributorship arrangements; • franchise approvals; • operational clearances; or • onboarding by local commercial partners. For instance, under the Guidelines for Certification and Marking of Engine Oils for Motor Vehicles issued by SIRIM Malaysia, effective February 2025, to com- bat counterfeiting engine oils in the domestic and international market, new measures of strict quality control, consumer education and enforcement of rele- vant laws are introduced to combat the proliferation of counterfeit engine oils. Amongst others, a trade mark registration certificate is now required to be provided for applicants and/or trade mark owners of engine oils seeking to obtain the license and Conformity Label for their engine oil under SIRIM. Further, Section 24 of the Franchise Act 1998 also requires a franchisor to register its trade mark relevant to its franchise before applying for registration of the franchise. Based on past experience, franchise appli- cants often face challenges registering their franchise while awaiting trade mark registration.
In the aspect of an enforcement proceeding in e-Com- merce platforms, where the bona fide owner’s listings have been removed by the e-Commerce platforms because of a bad-faith complaint lodged by an unau- thorised user. The most efficient method to over- come such complaints is to provide the certificate of registration. Similarly, for enforcement actions such as raids and/or seizures of counterfeit products by local authorities, a certificate of registration is usually required. Likewise, past experience suggests that certain local government agencies may, at their discretion, request a copy of the trade mark registration certificate. Simi- larly, collaboration with the National Film Development Corporation Malaysia (FINAS) may require furnishing a trade mark registration certificate. Premised on the above, this issue becomes commer- cially significant when investment projects are time- sensitive and regulatory approvals are directly tied to the existence of a registered Malaysian trade mark certificate. Strategic Considerations: Madrid Filing v Local Malaysian Filing In light of this, the strategic question of when an appli- cant should rely on the Madrid System and when direct national filing in Malaysia would be more pru- dent from a business standpoint is becoming increas- ingly important. In actuality, Madrid filings are still very appropriate in the following situations: • the trade mark is in the early stages of international expansion; • broad multi-jurisdictional protection is needed; • budget efficiency is a crucial factor; • the applicant wants streamlined international port- folio management; • the mark is comparatively distinctive and commer- cially stable; or • immediate operational reliance on a Malaysian registration certificate is not essential.
199 CHAMBERS.COM
Powered by FlippingBook