MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
• a body or corporation incorporated under the laws of Malaysia; • a person domiciled in Malaysia; or • a person who has a real and effective indus - trial or commercial establishment in Malaysia. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Filing a Trade Mark Opposition An opposition must be filed with the Registrar of Trademarks within two months of the publica - tion of the acceptance of the trade mark appli - cation. An extension of up to two months may be granted by the Registrar of Trademarks. The TMA 2019 does not provide a cooling-off period for resolution. Revocation/Cancellation of Trade Marks Under the TMA 2019, an aggrieved person may apply to the court for the revocation of a trade mark where within a period of three years fol - lowing the date of issuance of the notification of registration, the trade mark has not been put to use in good faith in relation to the goods or services for which the trade mark is registered in Malaysia and there are no proper reasons for non-use. In respect of revocation by the Registrar of Trademarks, the Registrar of Trademarks may revoke the registration of a trade mark within 12 months from the date of registration of the trade mark if the Registrar of Trademarks is satisfied that it is reasonable to revoke the registration, taking the following into account. • Any relevant obligations of Malaysia under an international agreement or convention.
• Any special circumstances making it appro - priate: (a) not to register the trade mark; or (b) to register the trade mark only if the registration were subject to disclaimer, conditions, amendments, modifications or limitations to which the registration was not made subject. Revocation/Cancellation of Copyrights Copyright protection in Malaysia is governed by the CA 1987 and there are no formal registration requirements. As such, revocation or cancella - tion 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 registration (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 requirements, 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.
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