Malaysia a step closer to Madrid Protocol as Dewan Rakyat passes Trademarks Bill

The move will offer trademark protection for businesses and assist them in expanding their products internationally

by ALIFAH ZAINUDDIN & DASHVEENJIT KAUR / pic by BERNAMA

MALAYSIA has acceded to the Madrid Protocol, which now allows a trademark owner to file an international trademark application through the Intellectual Property Corp of Malaysia (MyIPO).

This comes after the Trade Descriptions (Amendment) Bill 2019 and Trademarks Bill 2019 were passed with a simple majority following debate among eight MPs in the Dewan Rakyat yesterday.

The first reading of the Trademarks Bill 2019 was presented at the Parliament on April 9 and was debated yesterday before passing in the lower house.

The accession to the Madrid Protocol was part of Malaysia’s obligation under the Asean Economic Community and commitment to the Asean Blueprint 2025.

The move is long overdue as Malaysia was previously one of two members of Asean that had yet to accede to the Madrid Protocol.

According to the World Intellectual Property Organisation (WIPO), Asean countries that have acceded to the protocol are Brunei, Cambodia, Indonesia, Laos, the Philippines, Singapore, Thailand and Vietnam.

The Madrid Protocol is an international treaty administered by the International Bureau of WIPO and it allows a trademark owner to seek protection of the trademark in several countries simultaneously by filing one application with a single office, in one language and by paying one fee.

The treaty currently has 104 countries acceding to it, with Canada as the latest addition to the list.

Deputy Domestic Trade and Consumer Affairs Minister Chong Chieng Jen (picture), in his winding-up speech, said this move will offer trademark protection for businesses and assist them in expanding their products internationally.

This move has been long due since 2013 when Malaysia had expressed the intention to accede to the Madrid Protocol at the National Seminar on Madrid Protocol jointly organised by the Ministry of Domestic Trade, Cooperatives and Consumerism, MyIPO and WIPO in 2011.

“It is hoped that this step will attract more foreign companies to seek business opportunities and invest in Malaysia,” Chong said.

Among the notable proposed amendments are registration of non-traditional marks, protection of collective marks, procedure for single filing of international trademarks, and applications in multiple classes.

The amendments also cover revocation of registration by the registrar, registration conclusive after five years instead of seven under the previous act, and remedy for groundless threats of infringement proceedings.

According to Sections 99 to 102 of the new bill, counterfeiters who falsely apply for a registered trademark to goods or services and selling it in the market may be liable to a fine not exceeding RM1 million and/or imprisonment for a term not exceeding five years, or both.

As for Section 104, any person who falsely represents a trademark may be liable to a fine not exceeding RM10,000.

Section 124 states that any person who tips off any offender that an investigation is being or going to be conducted may be liable to a fine not more than RM100,000.

Chong also highlighted that all pending applications (whether for registrations, amendments or post-grant applications) which have been examined before the commencement of the new bill shall proceed under the previous law.