MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
4.7 Revocation, Change, Amendment or Correction of an Application Under Section 33 of the TMA 2019, an appli - cant 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 obvious mistakes. The amend - ment 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 Registrar 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 applica - tions for the registration of a trade mark. The request will be made to the Registrar of Trade - marks before or after the trade mark is regis - tered in the form determined by the Registrar of Trademarks together with the payment of the prescribed fee. Division applications are usually considered when objections are raised against certain goods or services in a multi-class or single class application. Dividing 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 person who makes or causes a false entry to
conducting business in Malaysia must appoint a local registered trade mark agent to act on their behalf. 4.5 Use in Commerce Prior to Registration Malaysia does not require proof of actual use before applying to register a trade mark but applicants must declare their intent to use the trade mark with the specified goods/services in Malaysia. 4.6 Consideration of Prior Rights in Registration As part of its examination, the Registrar of Trade - marks conducts a search of the Trade Mark Reg - ister to identify existing registered or pending trade marks that may conflict with the applica - tion. If a conflict is found, a provisional refusal may be issued under Section 24(2) of the TMA 2019 for trade marks identical or confusingly similar to existing trade marks. Under Section 24(3) of the TMA 2019, regis - tration is also refused for trade marks that are identical or similar to well-known trade marks, whether registered or unregistered, if such use could cause public confusion or damage the well-known trade mark proprietor’s interests. Additionally, Section 24(4) of the TMA 2019 provides 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 protecting 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.
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