MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
Revocation/Cancellation of Copyrights Copyright protection in Malaysia is governed by the CA 1987 and there are no formal registration require - ments. As such, revocation or cancellation is not applicable to copyrights in the same way it is to trade marks. 5.2 Legal Grounds for Filing an Opposition or Cancellation Grounds for Opposition In Section 34 (2) of the TMA 2019, the grounds for opposition are as follows. • The trade mark falls within the prohibition on regis - tration (absolute grounds or relative grounds). • The applicant is not the proprietor of the trade mark. • The opposed trade mark conflicts with a well- known trade mark. An opponent must further establish all of the require - ments, namely, the opposed trade mark, if registered, would: • indicate a connection between those goods or services and the proprietor of the trade mark; • create a likelihood of confusion on the part of the public because of such use by the opposed trade mark; and • likely damage the interests of the proprietor of the trade mark. Grounds and Remedies for Revocation/ Cancellation of Trade Marks In addition to the provisions in 5.1 Timeframes for Fil- ing an Opposition or Cancellation , a trade mark can be invalidated or revoked if it has become generic, misleads the public, breaches absolute grounds for refusal, conflicts with an earlier right or was obtained by fraud or misrepresentation. The court, not the Reg - istrar of Trademarks, has jurisdiction to invalidate a trade mark. 5.3 Ability to File an Opposition or Revocation/Cancellation Filing an Opposition Any person may file a notice of opposition in the form determined by the Registrar of Trademarks together
with the payment of the prescribed fee and send the notice of opposition to the applicant within the pre - scribed period from the date of the publication of the acceptance of an application for the registration of the opposed trade mark. It is not necessary to appoint an agent for opposition proceedings. Under Section 95 (2) of the TMA 2019, persons who do not reside or carry on business prin - cipally in Malaysia will have to appoint and authorise a local trade mark agent to act on their behalf. Average Fees for Filing an Opposition The average fees for a trade mark opposition are MYR950 for each class and the legal fees vary depending on the complexity of the matter. Filing Revocation/Cancellation Proceedings The applicant for revocation must be an “aggrieved person”. In Mesuma Sports Sdn Bhd v Majlis Sukan Negara [2015] 9 CLJ 125, an “aggrieved person” was considered to be a person who had used their mark as a trade mark or who had a genuine and present inten - tion to use their mark as a trade mark in the course of trade which was the same as or similar to the reg - istered trade mark that the person wanted to have removed from the Trade Mark Register. The person had to be someone who had some element of legal interest, right or legitimate expectation in its own mark which was being substantially affected by the pres - ence of the registered trade mark. The interest and right also had to be legal and lawful. 5.4 Opposition or Revocation/Cancellation Procedure Opposition Procedure Upon receiving a notice of opposition, the applicant must file a counterstatement, failing which the appli - cation will be deemed withdrawn. The opponent and the applicant are then required to submit evidence in support of the opposition and application for reg - istration of the trade mark respectively. Once this is completed, the Registrar of Trademarks will request the parties submit written submissions. The Registrar of Trademarks will decide to either refuse registra - tion, register the mark or impose conditions. Appeals against refusals or conditional registrations can be made to the court.
298 CHAMBERS.COM
Powered by FlippingBook