MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
Additionally, Section 24 (4) of the TMA 2019 pro - vides that the Registrar of Trademarks will refuse the registration of a trade mark if its use in Malaysia is prevented either by virtue of any rule of law protect - ing an unregistered trade mark (passing off), or any right existing beyond the provisions of the TMA 2019, including under the CA 1987 or the Industrial Designs Act 1996. 4.7 Revocation, Change, Amendment or Correction of an Application Under Section 33 of the TMA 2019, an applicant may request an amendment to a trade mark application before registration, for issues such as changes in the applicant’s name or address, wording errors or obvi - ous mistakes. The amendment must not substantially alter the trade mark’s identity or expand the goods or services covered. Additionally, Section 32 of the TMA 2019 allows the applicant to withdraw the application or limit the goods or services by filing a request with the Regis - trar of Trademarks. 4.8 Dividing a Trade Mark Application Section 37 of the TMA 2019 provides that a trade mark application or registration may, upon the request of the applicant or registered proprietor, be divided into two or more separate applications for the regis - tration of a trade mark. The request will be made to the Registrar of Trademarks before or after the trade mark is registered in the form determined by the Reg - istrar of Trademarks together with the payment of the prescribed fee. Division applications are usually considered when objections are raised against certain goods or ser - vices in a multi-class or single class application. Divid - ing the application allows the uncontested goods or services to proceed to registration while addressing the objection to the contested items separately. 4.9 Incorrect Information in an Application Consequences of Providing Incorrect Information Section 103 of the TMA 2019, provides that any per - son who makes or causes a false entry to be made to the Trade Mark Register, knowing or having reasons to believe that the entry or thing is false, commits an
offence and may be liable to a fine not exceeding MYR50,000, a term of imprisonment not exceeding five years or to both. The applicant is required to declare that the informa - tion provided in the application form is true to the best of their knowledge. In the case of error or mistake, the registered proprietor can request the Registrar of Trademarks correct any incorrect information on the trade mark application (see 4.7 Revocation, Change, Amendment or Correction of an Application ). Under Section 43 (5) of the TMA 2019, any person having sufficient interest may apply to the court for the correction of any error or omission in the Trade Mark Register. Rectifying Incorrect Information In addition to the amendment procedure set out in 4.7 Revocation, Change, Amendment or Correction of an Application , Section 43 of the TMA 2019 provides that the Registrar of Trademarks may, at the request of the registered proprietor in the form determined by the Registrar of Trademarks together with the payment of the prescribed fee: • correct an error or enter any change in the name, address or description of the registered proprietor; • correct the details of description of the goods or services in respect of which the trade mark is registered without extending the rights given by the existing registration of trade mark in any way; or • enter a disclaimer relating to the trade mark without extending the rights given by the existing registration of the trade mark in any way. Section 43 (6) of the TMA 2019 provides that any application for correction will not be made in respect of a matter affecting the validity of the registration of a trade mark. 4.10 Refusal of Registration Consequences of Providing Incorrect Information Section 103 of the TMA 2019, provides that any per - son who makes or causes a false entry to be made to the Trade Mark Register, knowing or having reasons to believe that the entry or thing is false, commits an offence and may be liable to a fine not exceeding
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