MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
5.7 Combining Revocation/Cancellation and Infringement The TMA 2019 does not specifically provide that pro - ceedings involving invalidation and infringement can be heard together. However, as invalidation proceed - ings are also heard before the High Court, it is com - mon for both invalidation and infringement actions to be consolidated (if they were commenced separately) and heard together, or for the party seeking invalida - tion to be heard first. 5.8 Measures to Address Fraud Under Section 47 (6) of the TMA 2019, an aggrieved person can apply to the court to invalidate a trade mark registration on the ground of fraud. The TMA 2019 does not provide a special procedure for these proceedings. Alternatively, an aggrieved person can apply to the court to have pending trade mark applica - tions suspended pending fraud investigations. If the invalidation proceedings succeed, the trade mark registration will be invalidated. Assignments of trade mark applications/registrations are required to be in writing (usually by way of a deed of assignment) to be effective. These assignments may be done with or without the goodwill of the trade mark. Partial assignments are also recognised, where - by all goods and specifications to be assigned should be clearly listed in the deed. Aside from assignments, trade marks are also trans - missible including by way of any operation of law or upon the death of a trade mark owner. All assignments and transmissions must be recorded with MyIPO. If they are not, the transaction will be inef - fective against a person acquiring a conflicting interest in the trade mark. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark Assignments
Revocation/Cancellation Proceedings Under Section 46 of the TMA 2019, an aggrieved per - son may apply to the court for the revocation of trade marks. Partial Revocation Section 46 (4) of the TMA 2019 provides for partial revocation, where use has been made of a trade mark in respect of only some of the goods or services for which the trade mark is registered. In this situation revocation will only relate to those goods or services. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Any person aggrieved by the decision of the Registrar of Trademarks may appeal to the court. In the context of opposition proceedings, any appeal to the court against the Registrar of Trademarks decision will be made within one month from the date on which the Registrar of Trademarks written grounds of decision is issued to the parties. For appeals against any refusal issued by the Reg - istrar of Trademarks, the applicant has two months from the date of a total provisional refusal to request the Registrar of Trademarks written grounds for the decision, accompanied by the prescribed fee. The date of issuance of the written grounds is deemed the date of the Registrar of Trademarks decision for court appeals, which must be filed within one month of that date. For the procedure and timescales for other appeals, specifically for infringement proceedings, see 11.1 Appellate Procedure and 11.2 Timeframes for Appealing Trial Court Decisions . 5.6 Amendment in Revocation/Cancellation Proceedings The TMA 2019 does not contain a provision that pre - vents an applicant from filing an amendment to the trade mark application during revocation or cancel - lation proceedings. However, see 4.9 Incorrect Infor- mation in an Application on the limitations on amend- ments.
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