MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
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 Registrar of Trademarks, the applicant has two months from the date of a total provisional refus - al to request the Registrar of Trademarks written grounds for the decision, accompanied by the prescribed fee. The date of issuance of the writ - ten 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 proceed - ings, see 11.1 Appellate Procedure and 11.2 Timeframes for Appealing Trial Court Deci- sions . 5.6 Amendment in Revocation/ Cancellation Proceedings The TMA 2019 does not contain a provision that prevents an applicant from filing an amendment to the trade mark application during revocation or cancellation proceedings. However, see 4.9 Incorrect Information in an Application on the limitations on amendments. 5.7 Combining Revocation/Cancellation and Infringement The TMA 2019 does not specifically provide that proceedings involving invalidation and infringe - ment can be heard together. However, as invali - dation proceedings are also heard before the
High Court, it is common for both invalidation and infringement actions to be consolidated (if they were commenced separately) and heard together, or for the party seeking invalidation 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 invali - date 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 applications suspend - ed pending fraud investigations. If the invalidation proceedings succeed, the trade mark registration will be invalidated. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark Assignments Assignments of trade mark applications/regis - trations 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 assign - ments are also recognised, whereby all goods and specifications to be assigned should be clearly listed in the deed. Aside from assignments, trade marks are also transmissible 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 trans - action will be ineffective against a person acquir - ing a conflicting interest in the trade mark.
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