MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
Grounds and Remedies for Revocation/ Cancellation of Trade Marks In addition to the provisions in 5.1 Timeframes for Filing 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 mis - representation. The court, not the Registrar 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 appli - cant within the prescribed period from the date of the publication of the acceptance of an appli - cation for the registration of the opposed trade mark. It is not necessary to appoint an agent for oppo - sition proceedings. Under Section 95(2) of the TMA 2019, persons who do not reside or carry on business principally 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 intention to use their mark as a trade mark in the course of trade which was the same as or similar to the registered trade mark that the person wanted to have removed from the Trade Mark Register. The person had to be someone who had some ele - ment of legal interest, right or legitimate expec - tation in its own mark which was being substan - tially affected by the presence 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a notice of opposition, the appli - cant must file a counterstatement, failing which the application will be deemed withdrawn. The opponent and the applicant are then required to submit evidence in support of the opposition and application for registration of the trade mark respectively. Once this is completed, the Regis - trar of Trademarks will request the parties sub - mit written submissions. The Registrar of Trade - marks will decide to either refuse registration, register the mark or impose conditions. Appeals against refusals or conditional registrations can be made to the court. Revocation/Cancellation Proceedings Under Section 46 of the TMA 2019, an aggrieved person may apply to the court for the revocation of trade marks. Partial Revocation Section 46(4) of the TMA 2019 provides for par - tial 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 regis - tered. In this situation revocation will only relate to those goods or services.
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