ARC News • March 12, 2020
On 27 September 2019, Malaysia officially acceded to Madrid Protocol (“Protocol”), historically marked Malaysia as the 106th member of the Madrid System. The Protocol is enforced in Malaysia since 27 December 2019. Correspondingly, the long-awaited Malaysia new Trademarks Act 2019 (“TMA 2019”) also come into force on the same date.
With the enforcement of the Protocol and TMA 2019, Malaysian businesses are able to file one trademark application with a single set of fees to protect their trademarks internationally in over 122 countries that are part of the Madrid System. The accession to the Protocol greatly reduces the cost of doing business in Malaysia and made Malaysia readily accessible to the global market.
Prior to the accession of the Protocol, it is a norm for a proprietor of a trademark to file multiple single trademark applications for each class in Malaysia. However, with the enforcement of the Protocol and TMA 2019, multiple class trademark application is now made available for the first time in Malaysia on 27 December 2019. In other words, a proprietor of trademark is now allowed to file a single multiple class trademark application (up to 3 classes) in Malaysia without the need to fill in separate application forms for each class.
Whilst this option in TMA 2019 is very much welcomed by proprietor of trademarks, there are advantages and disadvantages in both single class and multiple class trademark applications. As such, this article intends to provide a brief overview of options available for proprietor of trademarks under both approaches.
|1||Enable a speedier trademark registration in circumstances where the trademark registrar has no objections. Objections from the trademark registrar (if any) in a single class trademark application will not delay the registration of trademark filed in other classes.
|Promote greater administrative efficiency as a multiple class application contains one application with one application number / registration number and registration date. As such, administrative work will be reduced in maintaining the multiple class trademark application.|
|1||Requires more administrative efforts in maintaining multiple single trademark applications as separate single trademark application forms are required to be filled in and there are different individual trademark numbers and application date / registration date to monitor for the purpose of registration and renewal.||Possibility of delay in obtaining trademark registration as any objection from the trademark registrar would affect the entire multiple class trademark application. Additional time and cost will be incurred for divisional application for ensuring registration under the remaining (unopposed) classes.|
Acknowledging that multiple class trademark applications is a positive advancement in Malaysia trademark system, nevertheless businesses should diligently assess the advantages and disadvantages whether to file a single or multiple class trademark application. Such decisions ultimately depend on several factors namely (a) the need for registration to be issued swiftly; (b) individual preference on administration of the trademarks; and (c) possibility of encountering objections in some classes in the multiple class trademark applications.
This Article is co-written by Yeo Shu Pin (Partner) and Serene, Tee Jia Qing (Legal Executive) of Messrs. Afif Rahman & Chong
Disclaimer: Every attempt to ensure the accuracy and reliability of the information provided in this publication has been made. This publication does not constitute legal advice and is not intended to be used as a substitute for specific legal advice or opinions. Please contact the authors for a specific technical or legal advice on the information provided and related topics.