MALAYSIA
Trademark Act
Date of publication in the 9 December 2019
TABLE OF CONTENTSPART I PRELIMINARY
1. Short title and commencement
2. Interpretation
3. Definition of “trademark”
4. Definition of “well-known trademark”
5. Definition of “earlier trademark”
6. Definition of “infringing goods”, “infringing material”,“infringing articles”, “counterfeit goods” and “counterfeit
trademarks”
7. References to use of trademark
8. Use of trademark for export trade or where form of trade changes
9. Determination of likelihood of confusion
PART II ADMINISTRATION
10. Registrar, Deputy Registrars and Assistant Registrars
11. Protection of Registrar, Deputy Registrars, Assistant Registrars
and other officers
12. Trademarks Office and other branch offices
13. Preliminary advice and search by Registrar
PART III THE REGISTER OF TRADEMARKS
14. Register of Trademarks
15. Inspection of Register
PART IV REGISTRATION OF TRADEMARKS
Chapter 1 Introductory
16. Registered trademark
Chapter 2 Application for registration of trademark
17. Application for registration of trademark
18. Application in multiple classes
19. Classification of goods or services
20. Colour of trademark
21. Series of trademarks
122. Date of filing
Chapter 3 Grounds for refusal of registration
23. Absolute grounds for refusal of registration
24. Relative grounds for refusal of registration
25. Honest concurrent use, etc.
Chapter 4 Priority
26. Claim to priority of Convention application
27. Claim to priority from other relevant overseas application
28. Claim to priority from temporary protection of trademark whichis the subject matters of international exhibition given under
Article 11 of Paris Convention
Chapter 5 Examination
29. Examination of application
30. Voluntary disclaimer, condition or limitation
31. Publication of acceptance
Chapter 6 Withdrawal, restriction or amendment of application forregistration of trademark
32. Withdrawal or restriction of application for registration of
trademark33. Amendment of application for registration of trademark
Chapter 7 Opposition
34. Grounds of opposition
35. Opposition proceedings
Chapter 8 Registration
36. Registration
PART V DIVISION AND MERGER
37. Application for division
38. Application for merger
PART VI DURATION AND RENEWAL OF REGISTERED TRADEMARKS
39. Duration and renewal of registration
40. Status of unrenewed trademark
41. Cessation of registration2

PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND
INVALIDITY
42. Alteration of registered trademark
43. Correction of Register
44. Voluntary cancellation of registered trademark
45. Revocation of registration by Registrar
46. Revocation of registration by Court as to non-use of trademark
47. Invalidation of registration by Court
PART VIII EFFECTS OF REGISTERED TRADEMARKS
Chapter 1 Rights of registered proprietor of trademark
48. Rights conferred by registered trademark
49. Limitation on rights if similar trademarks, etc., registered bydifferent persons
50. Trademark consisting of sign that becomes accepted as signdescribing article, etc.
51. Trademark relating to article, etc., formerly manufactured underpatent52. Registration prima facie evidence
53. Registration conclusive
Chapter 2 Infringement of trademarks
54. Acts amounting to infringement of registered trademark
55. Acts not amounting to infringement
56. Action for infringement
57. Circumstances in which action may not be instituted
58. Order for erasure, etc., of offending sign
59. Order for delivery up of infringing goods, material or articles
60. Order for disposal of infringing goods, material or articles
61. Remedy for groundless threats of infringement proceedings
PART IX TRADEMARKS AS OBJECT OF PROPERTY
62. Nature of registered trademark as property
63. Co-proprietorship of registered trademark
64. Assignment, etc., of registered trademark
65. Registration of transaction affecting registered trademark
66. Trust and equities
67. Application for registration of trademark as an object ofproperty3

PART X LICENSING
68. Interpretation
69. Licensing of registered trademark
70. Rights of licensees in case of infringement
71. Exclusive licensee having rights and remedies of assignee
PART XI COLLECTIVE MARKS AND CERTIFICATION MARKS
72. Collective marks
73. Certification marks
PART XII INTERNATIONAL MATTERS
Chapter 1 Madrid Protocol
74. Interpretation
75. Regulations relating to Madrid Protocol
Chapter 2 Conventions and international arrangements
76. Protection of well-known trademarks
77. Permitted use of well-known trademarks
78. National emblems, etc., of Convention countries under Article
6ter of Paris Convention
79. Emblems, etc., of certain international intergovernmentalorganization under Article 6ter of Paris Convention
80. Notification under Article 6ter of the Paris Convention
PART XIII BORDER MEASURES
81. Interpretation
82. Restriction on importation of infringing goods
83. Security
84. Secure storage of seized goods
85. Notice
86. Inspection, release, etc., of seized goods
87. Forfeiture of seized goods by consent
88. Compulsory release of seized goods to importer
89. Compensation for failure to take action
90. Actions for infringement of registered trademark
91. Disposal of seized goods ordered to be forfeited
92. Insufficient security
93. Ex-officio action
94. De Minimis Imports

4

PART XIV TRADEMARK AGENTS
95. Recognition of registered trademark agents and circumstances inwhich a registered trademark agent shall be required
96. Register of Trademark Agents
97. Registration of trademark agent
98. Privileged communications with registered trademark agent
PART XV OFFENCE
99. Counterfeiting a trademark
100. Falsely applying a registered trademark to goods or services
101．Making or possessing of article for committing offence
102. Importing or selling, etc., goods with falsely applied
trademark103. False entries to Trademarks Office or in Register104. Falsely representing trademark as registered
105. Offence relating to disobedience to summons or refusal to give
evidence
106. Falsely representing trademark as a protected international
registration designating Malaysia
107. Misuse of title “Trademarks Office”
108. Unregistered persons practising, etc., as a registeredtrademark agent
PART XVI INVESTIGATION AND ENFORCEMENT
Chapter 1 Investigation and complaints
109. Interpretation
110. Power of Controller, Deputy Controllers or AssistantControllers
111. Power of investigation
112. Complaints to the Assistant Controller
Chapter 2 Information gathering powers
113. Power of the Assistant Controller to require provision of
information
114. Assistant Controller may retain documents
115. Confidentiality
116. Privileged communication
117. Giving false or misleading information, evidence or document
118. Destruction, concealment, mutilation and alteration of records

5Chapter 3 Powers of arrest, search, seizure etc.
119. Power of arrest
120. Power to enter premises, inspect and seize goods, etc.
121. Magistrate may issue search warrant
122. Search may be made without warrant
123. Access to recorded information or computerized data, etc.
124. Tipping-off
125. Warrant admissible notwithstanding defects
126. List of seized goods, etc.
127. Forfeiture of seized goods, etc.
128. Release of seized goods, etc.
129. Seizure of perishable goods
130. No cost or damages arising from seizure to be recoverable
131. Obstruction
132. Evidence of agent provocateur is admissible
133. Taking of samples
134. Jurisdiction to try offences135. Institution of prosecution
136. Compounding of offences137. Principal liable for acts of servant or agent
138. Offences committed by body corporate
139. Protection of Controller, Deputy Controller, AssistantController or other persons
PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE
140. Service of applications to Court on the Registrar
141. Registrar's appearance in proceedings involving the Register142. Costs of proceedings before the Court
143. Certificate of validity
144. Evidentiary value of copies certified by Registrar
145. Sealed copies of document to be evidence
146. Electronic information, etc., certified by the Registrar
admissible in evidence
147. Minister may declare documents of foreign state pertaining
to trademarks to be admissible as evidencePart XVIII MISCELLANEOUS AND GENERAL
148. Intellectual Property Official Journal
149. Electronic filing
150. Issuing document electronically151. Address for service
6152. Power of Registrar to allow amendments of documents
153. Power of Registrar to allow extension of time154. Mode of giving evidence
155. Exercise of discretionary power156. Power of the Registrar to treat documents as confidential
157. Adaptation of entries to new classification
158. Costs awarded by Registrar
159. Unregistered trademarks
160. Guidelines or practice directions by Registrar
161. Power to amend Schedules
162. Power to make regulations
163. Appeal from Registrar
Part XIX REPEAL, SAVINGS AND TRANSITIONAL PROVISIONS
Chapter 1 Repeal and savings
164. Repeal and savings
Chapter 2 Transitional provisions for trademarks
165. Interpretation
166. Existing registered marks
167. Effects of registration in relation to infringement
168. Infringing goods, material or articles
169. Rights and remedies of licensee or authorized user
170. Co-proprietorship of registered mark171. Assignment, etc., of registered mark172. Licensing of registered mark173. Pending applications for registration
174. Conversion of pending application
175. Trademarks registered according to old classification
176. Claim to priority of Convention application
177. Duration and renewal of registration
178. Pending application for alteration of registered mark179. Revocation for non-use
180. Application for rectification, etc.
181. Rules as to use of certification mark182. Agents
183. Guidelines, etc., on transitional matters
FIRST SCHEDULE COLLECTIVE MARKS
1. Interpretation
7

2. Signs of which a collective mark may consist
3. Collective mark consisting of geographical indication
4. Collective mark not to be misleading as to character orsignificance5. Rules governing the use of collective mark6. Approval of rules and application for registration of collective
mark
7. Inspection of rules
8. Amendment of rules of registered collective mark9. Rights of authorized users relating to infringement proceedings
10. Limitation on rights given by registered collective mark11. Grounds for revocation of registration
12. Grounds for invalidity of registration
SECOND SCHEDULE CERTIFICATION MARKS
1. Signs of which a certification mark may consist
2. Certification mark consisting of geographical indication
3. Nature of proprietor's business
4. Certification mark not to be misleading as to character orsignificance5. Rules governing the use of certification mark6. Approval of rules and application for registration ofcertification mark7. Inspection of rules
8. Amendment of rules of registered certification mark9. Consent to assignment of registered certification mark10. Rights of authorized users relating to infringement proceedings
11. Grounds for revocation of registration
12. Grounds for invalidity of registration

8

PART I PRELIMINARY
1. Short title and commencement(1) This Act may be cited as the Trademarks Act 2019.
(2) This Act comes into operation on a date to be appointed by the
Minister by notification in the Gazette and the Minister may appoint
different dates for the coming into operation of different Parts orprovisions of this Act.
2. Interpretation
In this Act, unless the context otherwise requires—“Assistant Registrar” and “Deputy Registrar” mean a person appointed
under subsection 10(3) to be an Assistant Registrar of Trademarks ora Deputy Registrar of Trademarks;“certification mark” has the meaning assigned to it under subsection
73(1);“collective mark” has the meaning assigned to it under subsection
72(1);“Convention country” means a country which is a party to any
multilateral treaty relating to trademarks to which Malaysia is alsoa party;“Convention application” means an application for protection of a
trademark in a Convention country;“Corporation” means the Intellectual Property Corporation of
Malaysia established under the Intellectual Property Corporation of
Malaysia Act 2002 [Act 617];“Court” means the High Court;“declared foreign country” means a country declared by the Minister
under subsection 27(1);“distinctive character” means the trademark shall be capable ofdistinguishing goods or services—(a) which the proprietor of the trademark is or may be connected toin the course of trade from goods or services; or(b) in the case of which no such connection subsists or where thetrademark is registered or intended to be registered, subject toconditions, amendments, modifications or limitations,in relation to use within the extent of the registration;“geographical indication” has the meaning assigned to it under
section 2 of the Geographical Indications Act 2000 [Act 602];“International Register” means the official collection of data9

concerning international registration of trademarks maintained by
the International Bureau of the World Intellectual Property
Organization;“international registration” means registration of a trademark in
the International Register;“licensee” means a person who is entitled to exercise his rights
under Part X upon being authorized by a registered proprietor of
trademark;“limitations” means limitations of the right to the exclusive use ofa trademark given by the registration of the trademark including
limitations of that right as to—(a) mode of use;(b) use within a territorial area within Malaysia; or(c) use in relation to goods to be exported to a market outside
Malaysia or use in relation to services to be provided in a placeoutside Malaysia;“Paris Convention” means the Paris Convention for the Protection ofIndustrial Property of 20 March 1883 as revised from time to time;“prescribed” means, in relation to proceedings before the Court or
preliminary thereto or connected therewith, prescribed by rules ofcourt made by the Rules Committee constituted under the Courts of
Judicature Act 1964 [Act 91], and in other cases, prescribed by the
Minister in the regulations made under this Act;
“protected international registration designating Malaysia” means a
trademark to which protection resulting from the international
registration of the trademark is extended to Malaysia;“Register” means the Register of Trademarks kept under section 14;“registered proprietor” means the person for the time being enteredin the Register as the registered proprietor of the trademarks;“registered trademark” has the meaning assigned to it under section
16;“registrable transactions” means transactions determined by theRegistrar in the guidelines or practice directions under section
160;“Registrar” means a person appointed as a Registrar of Trademarks
under subsection 10(1);“repealed Act” means the Trade Marks Act 1976 [Act 175];“sign” includes any letter, word, name, signature, numeral, device,brand, heading, label, ticket, shape of goods or their packaging,colour, sound, scent, hologram, positioning, sequence of motion or
any combination thereof;10

“this Act” includes any subsidiary legislation made under this Act;
“trade” includes any business or profession;“transmission” means transmission by—(a) operation of law;(b) testamentary disposition; or(c) any other kind of transfer except assignment;“TRIPS Agreement” means the Agreement on Trade-Related Aspects ofIntellectual Property Rights 1994 which constitutes Annex 1C to theAgreement Establishing the World Trade Organization.
3. Definition of “trademark”(1) “Trademark” means any sign capable of being represented
graphically which is capable of distinguishing goods or services of
one undertaking from those of other undertakings.
(2) A sign may constitute a trademark even though it is used inrelation to a service ancillary to the trade or business of anundertaking and whether or not the service is provided for money ormoney’s worth.
(3) References in this Act to a trademark includes, unless thecontext otherwise requires, references to a collective mark or
certification mark.
4. Definition of “well-known trademark”(1) “Well-known trademark” means any trademark that is well-known in
Malaysia and that belongs to a person who—(a) is a national of a Convention country; or(b) is domiciled, or has a real and effective industrial orcommercial establishment, in a Convention country,
whether or not that person carries on business, or has any goodwill,in Malaysia.
(2) In determining whether a trademark is well-known in Malaysia,
the Registrar or the Court shall have regard to the criteria asprescribed.
5. Definition of “earlier trademark”“Earlier trademark” means—(a) a registered trademark or a protected international registration
designating Malaysia, the application for registration of which was
11made earlier than the trademark in question, taking into account thepriorities claimed in respect of the trademarks, where appropriate;or(b) a trademark which, at the date of application for registrationof the trademark in question or of the priority claimed in respectof the application, where appropriate, was a well-known trademark,and includes a trademark in respect of which an application forregistration has been made and which, if registered, would be an
earlier trademark by virtue of paragraph (a) subject to it being so
registered.
6. Definition of “infringing goods”, “infringing material”,“infringing articles”, “counterfeit goods” and “counterfeit
trademarks”(1) Goods are “infringing goods”, in relation to a registeredtrademark, if the goods or their packaging bear a sign identicalwith or similar to that trademark and—(a) the application of the sign to the goods or their packaging was
an infringement of the registered trademark;(b) the goods are proposed to be imported into Malaysia and theapplication of the sign in Malaysia to them or their packaging would
be an infringement of the registered trademark; or(c) the sign has otherwise been used in relation to the goods insuch a way as to infringe the registered trademark.
(2) Material is “infringing material”, in relation to a registeredtrademark, if it bears a sign identical with or similar to that
trademark and either—(a) it is used for labelling or packaging goods, as a businesspaper, or for advertising goods or services, in such a way as toinfringe the registered trademark; or(b) it is intended to be so used and such use would infringe theregistered trademark.
(3) “Infringing articles”, in relation to a registered trademark,means articles—(a) which are specifically designed or adapted for making copies ofa sign identical with or similar to that trademark; and(b) which a person has in his possession, custody or control,
knowing or having reason to believe that they have been or are to be
used to produce infringing goods or material.
12(4) Goods are “counterfeit goods”, in relation to a registeredtrademark, if—(a) they are infringing goods in relation to that trademark; and(b) the sign borne by them or their packaging is a counterfeit
trademark.
(5) A sign is a “counterfeit trademark”, in relation to a registeredtrademark, if the sign—(a) is identical with the registered trademark as to be calculated
to deceive; and(b) is applied to goods or services—(i) without the express or implied consent, conditional orotherwise, of the registered proprietor; and(ii) to falsely represent the goods or services to be the genuine
goods or actual services of the registered proprietor or a licenseeof the registered trademark.
7. References to use of trademark(1) References to the use of a trademark shall be construed as
references to the use of a printed or other visual or non-visual
representation of the trademark.
(2) References to the use of a trademark in relation to goods shallbe construed as reference to the use of the trademark upon, or inphysical or other relation to, the goods.
(3) References to the use of a trademark in relation to services
shall be construed as references to the use of the trademark as astatement or as part of a statement about the services.
(4) Any aural representation of a trademark shall be construed as
references to the use of the trademark.
(5) Where a person has used a trademark with additions oralterations, the Registrar or the Court may decide that the person
has used the trademark if it does not substantially affect theidentity of the trademark as the Registrar or the Court thinks fit.
8. Use of trademark for export trade or where form of trade changes(1) Where a trademark is applied to goods to be exported from13

Malaysia and any other act is done in Malaysia in relation to thegoods which if done in relation to goods to be sold or otherwise
traded in Malaysia, such act would constitute use of a trademark in
Malaysia in relation to those goods.
(2) The use of a registered trademark in relation to goods orservices where a form of connection in the course of trade subsists
between the goods or services and the person using the trademark
shall not be deemed to be likely to cause deception or confusion
only on the ground that the trademark has been or is used inrelation to goods or services where a different form of connectionin the course of trade subsisted or subsists between the goods orservices and that person or predecessor in title of that person.
9. Determination of likelihood of confusion(1) In determining whether the use of a trademark is likely to cause
confusion on the part of the public, the Registrar or the Court may
take into account all factors relevant in the circumstances,including whether the use is likely to be associated with an earlier
trademark.
(2) In determining whether the use of a sign is likely to cause
confusion on the part of the public, the Registrar or the Court may
take into account all factors relevant in the circumstances,including whether the use is likely to be associated with aregistered trademark.

14

PART II ADMINISTRATION
10. Registrar, Deputy Registrars and Assistant Registrars(1) The Director General of the Corporation shall be the Registrarof Trademarks and have the control of the Trademarks Office.
(2) The Registrar shall perform the duties imposed and exercise thepowers conferred on him under this Act for the proper administrationof this Act.
(3) The Corporation may appoint, on such terms and conditions as the
Corporation may determine, from amongst persons in the employment of
the Corporation, such number of Deputy Registrars of Trademarks,
Assistant Registrars of Trademarks and other officers as may benecessary for the proper administration of this Act.
(4) Subject to the general direction and control of the Registrar
and to such conditions or restrictions as may be imposed by theRegistrar, a Deputy Registrar or an Assistant Registrar may exercise
any power of the Registrar under this Act.
(5) The Registrar shall have a seal of such device as may beapproved by the Corporation and the impressions of such seal shallbe judicially noticed and admitted in evidence.
11. Protection of Registrar, Deputy Registrars, Assistant Registrars
and other officers
No action, suit, prosecution or other proceedings shall be brought,
instituted or maintained in any court against—(a) the Registrar, Deputy Registrars, Assistant Registrars or any
other officer, in respect of any act ordered or done for the purposeof carrying into effect this Act; and(b) any other officer in respect of any act done or purported to bedone by him under the order, direction or instruction of theRegistrar,
if the act was done in good faith and in a reasonable belief that itwas necessary for the purpose intended to be served by it.
12. Trademarks Office and other branch offices(1) The Central Trade Marks Office and regional trade marks offices
established under section 5 of the repealed Act shall be known as
15

Trademarks Office and branch offices, respectively.
(2) In addition to subsection (1), for the purposes of this Act,
such number of branch offices of the Trademarks Office as may benecessary shall be established.
(3) Any document required by this Act to be filed at the Trademarks
Office may be filed at any branch office of the Trademarks Office
and reference in this Act to the submission at the Trademarks Officeincludes reference to the submission at a branch office.
(4) All communication with the Trademarks Office shall be in thenational language or English language.
13. Preliminary advice and search by Registrar(1) The Registrar may give preliminary advice and search result toany person who proposes to apply for the registration of trademark
in the Register as to whether the trademark is prima facie aregistrable trademark.
(2) Any person may apply for a preliminary advice and search resultin the form as determined by the Registrar together with the paymentof the prescribed fee.
(3) Notwithstanding that an application for the registration of
trademark is made within the prescribed period and the Registrar has
given preliminary advice or search result in the affirmative, theRegistrar, after further investigation or consideration, may raise
any refusal to the effect that the trademark is not registrable.
(4) In the circumstances under subsection (3), the applicant shallbe entitled to have any fee paid on the filing of the application
refunded to him subject to the prescribed conditions, upon giving
notice of the withdrawal of the application within the prescribedperiod.
(5) The application made by the applicant in subsection (2), and thepreliminary advice and search result given by the Registrar are
confidential and shall not be made available for public inspection.

16

PART III THE REGISTER OF TRADEMARKS
14. Register of Trademarks(1) The Registrar shall keep and maintain a register called theRegister of Trademarks.
(2) The Register shall contain all such matters and particulars
relating to trademarks as prescribed.
(3) The Register shall be kept in such form as determined by theRegistrar.
15. Inspection of Register(1) The Register shall be made available for public inspection
subject to the conditions as prescribed upon application in the form
as determined by the Registrar together with the payment of theprescribed fee.
(2) Subject to the conditions in subsection (1), certified copies orextracts of any entry in the Register sealed with the seal of theRegistrar shall be given to any person upon application in the form
as determined by the Registrar together with the payment of theprescribed fee.

17PART IV REGISTRATION OF TRADEMARKS
Chapter 1 Introductory
16. Registered trademark
A registered trademark shall be a property right obtained by theregistration of trademark under this Act and a registered proprietorof the trademark has the rights and remedies provided under this
Act.

18

Chapter 2 Application for registration of trademark
17. Application for registration of trademark(1) Any person who claims to be the bona fide proprietor of a
trademark may apply for the registration of the trademark if—(a) the person is using or intends to use the trademark in thecourse of trade; or(b) the person has authorized or intends to authorize another person
to use the trademark in the course of trade.
(2) An application for the registration of trademark shall be madein the form as determined by the Registrar within the prescribedperiod together with the payment of the prescribed fee.
(3) If the trademark applied for registration contains or consistsof a word which is not in Roman characters, or the national language
or English language, the applicant shall, within the prescribedperiod, furnish the Registrar with the following:(a) the transliteration of the trademark;(b) the translation of the trademark; or(c) any information as determined by the Registrar.
(4) If the requirements under subsection (2) or (3) are not compliedwith within the prescribed period, the application shall be deemed
withdrawn.
(5) A person who applies for the registration of trademark may
request to the Registrar for an expedited examination by filing anapplication in the form as determined by the Registrar within theprescribed period together with the payment of the prescribed fee.
18. Application in multiple classes(1) An application under subsection 17(2) may be made in a single
application listing goods or services belonging to several classesof classification to the Registrar.
(2) An application under subsection (1) shall result in one
registration.
19. Classification of goods or services(1) Goods or services shall be classified for the purposes of the19registration of trademarks in accordance with a system ofclassification as prescribed.
(2) If any question arises as to the class within which any goods orservices are comprised, that question shall be decided by theRegistrar.
20. Colour of trademark(1) The applicant may apply to limit, in whole or in part, to one ormore specified colours of the trademark.
(2) For the purposes of subsection (1) or in the case where theapplicant does not apply to limit, in whole or in part, to one ormore specified colours of the trademark, the Registrar may limit, inwhole or in part, to one or more specified colours of the trademark
in determining whether the trademark is distinctive.
(3) Where a trademark is registered without limitations as tocolour, it shall be deemed to be registered for all colours.
21. Series of trademarks(1) A person may make a single application under subsection 17(2)for the registration of a number of trademarks if the trademarks—(a) resemble each other in material particulars; and(b) differ only in respect of one or more of the following matters:(i) statements or representations as to the goods or services inrelation to which the trademarks are used or intended to be used;(ii) statements or representations as to number, price or quality;(iii) standard fonts which does not substantially affect theidentity of the trademarks; or(iv) the colour of any part of the trademark.
(2) If the application meets all the requirements under subsection(1), the Registrar shall register the trademarks as a series in one
registration.
(3) A trademark which has been registered as part of a series
trademark may be used independently.
22. Date of filing(1) The Registrar shall record the date of receipt of an application
20

for registration of trademark made in accordance with section 17 as
the date of filing.
(2) Where the requirement under section 17 is fulfilled on different
days, the Registrar shall record the date of filing on the last dayof those days.
(3) Any date of priority claimed under section 26, 27 or 28 shallhave no effect on the date of filing of application recorded undersubsection (1) or (2) except for the purposes of a search undersubsection 29(2).

21Chapter 3 Grounds for refusal of registration
23. Absolute grounds for refusal of registration(1) Subject to subsection (2), the Registrar shall refuse toregister a trademark based on the following absolute grounds forrefusal of registration:(a) signs which are not capable of being represented graphically andnot capable of distinguishing goods or services of one undertaking
from those of other undertakings;(b) trademarks which are devoid of any distinctive character;(c) trademarks which consist exclusively of signs or indications
which may serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin, other characteristics
of goods or services or the time of production of goods or of
rendering of services; or(d) trademarks which consist exclusively of signs or indications
which have become customary in the current language of the territory
or in the bona fide and established practices of the trade.
(2) Notwithstanding paragraphs (1)(b), (c) and (d), the Registrar
shall not refuse to register an application of a trademark if,
before the date of application for registration, the trademark has
in fact acquired a distinctive character as a result of its use.
(3) The Registrar shall refuse to register a sign as a trademark if
the sign consists exclusively of—(a) the shape which results from the nature of the goods themselves;(b) the shape of goods which is necessary to obtain a technicalresult; or(c) the shape which gives substantial value to the goods.
(4) Notwithstanding subsections (1) and (2), the Registrar shallrefuse to register the following as a trademark if:(a) the trademark consists exclusively of the name of a country; or(b) the trademark contains or consists of recognized geographicalindications.
(5) In addition to the grounds in subsections (1), (3) and (4), theRegistrar shall refuse to register a trademark based on any of thefollowing absolute grounds for refusal of registration:(a) if the use of the trademark is likely to deceive or cause
22confusion to the public or contrary to any written law;(b) if it is of such a nature as to deceive or mislead the public as
to the nature, quality or geographical origin of the goods orservices;(c) the trademarks are contrary to public interest or to morality;(d) the trademarks contain or consist of any scandalous or offensive
matter or would otherwise not be entitled to protection by any courtof law;(e) the trademarks contain a matter which is in the opinion of theRegistrar is or might be prejudicial to the interest or security of
the country;(f) the trademarks contain or consist of the name or representationof another person whether living or dead unless the applicant
furnishes the Registrar with the consent of that person, if living,or of the representative of that person if deceased;(g) the trademarks contain or consist of flag of a country, national
emblem, emblem, insignia or royal arms unless the applicant
furnishes the Registrar with the authorization of the competentauthorities or international intergovernmental organization as
specified in section 78 or 79, as the case may be;(h) the trademarks contain or consist of a word which is commonlyused as or is the accepted name of any single chemical element or
single chemical compound, as distinguished from a mixture, or which
is declared by the World Health Organization as an international
non-proprietary name or which is deceptively similar to such nameunless it is used—(i) to denote only a brand or to make the element or compound as
made by the proprietor of the trademark or the licensee as
distinguished from the element or compound as made by others; and(ii) in association with a suitable name or description open to
public use; or(i) the trademarks contain or consist of any of the following signs
or a sign similar to any of those signs as is likely to be taken forthat sign:(i) the word “Patent”, “Patented”, “By Royal Letters Patent”,“Registered”, “Registered Design”, and “Copyright” or words to thelike effect in any language whatsoever; or(ii) any sign as prescribed.
24. Relative grounds for refusal of registration(1) The Registrar shall refuse to register a trademark if it is23

identical with an earlier trademark and the goods or services forwhich the trademark is applied for are identical with the goods orservices of the earlier trademark.
(2) The Registrar shall refuse to register a trademark if there
exists a likelihood of confusion on the part of the public—(a) where the trademark is identical with an earlier trademark andis to be registered for goods or services similar to the earlier
trademark; or(b) where the trademark is similar to an earlier trademark and is tobe registered for goods or services identical with or similar to theearlier trademark.
(3) The Registrar shall refuse to register a trademark if—(a) it is identical with or similar to a well-known trademark which
is not registered in Malaysia and it is to be registered for theidentical goods or services of the proprietor of the well-known
trademark; or(b) it is identical with or similar to a well-known trademark whichis registered in Malaysia and it is to be registered for goods orservices which are not identical or not similar to those in respectof which the well-known trademark is registered and—(i) the use of the trademark in relation to those goods or services
would indicate a connection between those goods or services and the
proprietor of the well-known trademark;(ii) there exists a likelihood of confusion on the part of the
public because of such use; and(iii) the interests of the proprietor of the well-known trademark
are likely to be damaged by such use.
(4) Subject to subsection (6), the Registrar shall refuse toregister a trademark if, or to the extent that, its use in Malaysia
is prevented—(a) by virtue of any rule of law protecting an unregisteredtrademark or other sign used in the course of trade including under
the law of passing off; or(b) by virtue of an earlier right other than those referred to inparagraph (a) or in subsections (1) to (3) including under the lawof copyright or industrial designs.
(5) A person entitled to prevent the use of a trademark is referred24

to in this Act as the proprietor of an “earlier right” in relation
to the trademark in subsection (4).
(6) The Registrar may refuse to register a trademark on any grounds
under subsection (4) if that ground is raised in proceedings in
opposition to the registration under section 35 by the proprietor of
the earlier right.
(7) Notwithstanding the relative grounds for refusal of registration
under subsections (1), (2), (3) and (4), the Registrar may registera trademark if the proprietor of the earlier trademark or otherearlier right consents to the registration in the prescribed mannerand shall take into account the interest of the public and thelikelihood of confusion on the part of the public.
(8) For the purposes of this section, if the registration of an
earlier trademark expires, the Registrar, in determining theregistrability of a trademark shall continue to take into accountthe earlier trademark for a period of twelve months after its
expiry.
25. Honest concurrent use, etc.
(1) Nothing in section 24 shall prevent the registration of
trademark where the Registrar or the Court is satisfied—(a) that there has been an honest concurrent use of the trademark
and the earlier trademark or other earlier right; or(b) that by reason of other special circumstances it is proper
for the trademark to be registered.
(2) The registration of trademark under subsection (1) shall be
subject to such limitations and conditions as the Registrar or the
Court thinks fit to impose.
(3) Nothing in this section—(a) shall prevent the Registrar from refusing to register a
trademark on any of the grounds under section 23; or(b) shall affect the making of an application for a declarationof invalidity under subsection 47(3).

25Chapter 4 Priority
26. Claim to priority of Convention application(1) A person, or his successor in title, who has duly filed a
Convention application, has a right to priority, for the purposes offiling an application for registration of the same trademark forsome or all of the same goods or services, for a period of six
months from the date of filing of the first of such application.
(2) For the purposes of subsection (1)—(a) the date of filing of the first Convention application shall be
the relevant date in establishing which rights take precedence; and(b) the registrability of the application of the trademark shall not
be affected by any use of the trademark in Malaysia in the period
between the date of filing of the first Convention application andthe date of the application of the same trademark under this Act.
(3) Where a right of priority is claimed by reason of a Convention
application under subsection (1), the application for registrationof the same trademark shall specify—(a) the date of filing of the first Convention application;(b) the Convention country in which the Convention application was
first filed;(c) the application or registration number of the Convention
application accorded by the registering or other competent authorityof the relevant Convention country; and(d) the goods or services to which the claim relates.
(4) Any filing which in a Convention country is equivalent to aregular national filing, under its domestic legislation or aninternational agreement, shall be treated as giving rise to theright of priority.
(5) A subsequent application concerning the same subject as thefirst Convention application, filed in the same Convention country,
shall be considered the first Convention application (of which thefiling date is the starting date of the period of priority), if at
the time of the subsequent application—(a) the previous application has been withdrawn, abandoned or
refused, without having been laid open to public inspection andwithout leaving any rights outstanding; and26

(b) it has not yet served as a basis for claiming a right ofpriority.
(6) For the purposes of subsection (5), the previous application may
not serve as a basis for claiming a right of priority.
(7) A right to priority arising as a result of a Convention
application may be assigned or transmitted together with theapplication or independently and the reference in subsection (1) tothe applicant’s “successor in title” shall be construed accordingly.
(8) For the purposes of this section, a “regular national filing”
means a filing which is adequate to establish the date on which theapplication was filed in that country, whatever may be thesubsequent fate of the application.
27. Claim to priority from other relevant overseas application(1) The Minister may, by order published in the Gazette, declare acountry as having made arrangements with Malaysia for the reciprocal
protection of trademark.
(2) In relation to a declared foreign country, this section shallapply only for the duration of the period the order continues inforce in respect of that country.
(3) For the purposes of this section, all requirements andprocedures in section 26 shall be applicable.
28. Claim to priority from temporary protection of trademark whichis the subject matters of international exhibition given under
Article 11 of Paris Convention(1) Notwithstanding anything in this Act, an applicant forregistration of a trademark may apply for temporary protection whichshall be granted to a trademark which is the subject matter of an
exhibition at an official or officially recognized international
exhibition held in Malaysia or in any Convention country or declared
foreign country.
(2) The temporary protection granted under subsection (1) shall notextend any period of priority claimed by an applicant in section 26
and where a right of priority is claimed by an applicant subsequent27

to the temporary protection, the period of priority shall remain six
months and which shall commence from the date of the introduction of
the goods or services into the exhibition.
(3) An applicant for registration of trademark whose goods orservices are the subject matters of an exhibition at an official or
officially recognized international exhibition in Malaysia or in any
Convention country or declared foreign country and who applies forregistration of that trademark in Malaysia within six months fromthe date on which the goods or services first became the subject
matter of the exhibition shall, on his request, be treated as giving
rise to the right of priority for search purposes under subsection
29(2) when the goods or services first became the subject matters of
the exhibition.
(4) Evidence that the goods or services bearing the trademark are
the subject matters of an exhibition at an official or officiallyrecognized international exhibition shall be by a certificate issued
by the competent authorities of the exhibition and to be filed with
the Registrar upon filing the application for registration of
trademark in Malaysia.

28

Chapter 5 Examination
29. Examination of application(1) The Registrar shall examine whether an application forregistration of trademark fulfills the requirements for registration
under this Act.
(2) For the purpose of an examination under subsection (1), theRegistrar shall carry out a search, to such extent as he considers
necessary, of earlier trademarks.
(3) Upon examination, where the Registrar finds that the application
fulfills the requirements for registration of trademark, theRegistrar shall accept the application.
(4) Where the Registrar accepts the application for registration of
trademark, the Registrar shall record the date of filing of theapplication under section 22 as the date of filing.
(5) If the application for registration of trademark does not
fulfill any requirements for registration of trademark, theRegistrar shall inform the grounds of provisional refusal to theapplicant by a written notice and the applicant shall have an
opportunity to—(a) make representations;(b) amend the application so as to meet the conditions, amendments,
modifications or limitations, as the Registrar deems fit to impose;or(c) furnish additional or any other information or evidence,
within such period as the Registrar may specify in the written
notice.
(6) For the purposes of subsection (5)—(a) the application shall be deemed withdrawn if the applicant does
not respond within such period as specified by the Registrar in thewritten notice; and(b) the Registrar shall refuse the application if the applicant’s
response does not satisfy the Registrar that those requirements are
fulfilled and the Registrar shall, if required by the applicant,state in writing the grounds of the total provisional refusal.

29

(7) The Registrar, upon the request of the applicant, may defer any
action in relation to the application for registration of trademark
under prescribed circumstances and for a prescribed period.
(8) Where an appeal lies to the Court against the decision of theRegistrar relating to a total provisional refusal under paragraph(6)(b)—(a) the appeal shall be made in the prescribed manner;(b) the Court shall, where necessary, hear the applicant and theRegistrar; and(c) the appeal shall be heard on the material stated by theRegistrar to have been used by the Registrar in arriving at his
decision and no further grounds of provisional refusal to theacceptance of the application shall be allowed to be taken by theRegistrar other than those so stated except by leave of the Court.
(9) For the purposes of paragraph (8)(c), where any further grounds
of provisional refusal are taken, the applicant shall be entitled towithdraw his application without payment of costs on giving noticein the prescribed manner.
(10) In determining an appeal under subsection (8), the Court shallmake an order subject to any conditions, amendments, modifications
or limitations, if any, the application for registration of
trademark is to be accepted.
(11) Any application for registration of trademark filed andaccepted under this section shall, notwithstanding any conditions,amendments, modifications or limitations permitted by the Registrar
or the Court to be made in such application, be deemed to have been
made on the date of application.
(12) Without prejudice to subsection (11), where after theacceptance of an application for registration of trademark but
before the registration of the trademark, the Registrar issatisfied—(a) that the application has been accepted in error; or(b) that in the special circumstances of the case, the trademark
shall not be registered or shall be registered subject to additional
or different conditions or limitations,
the Registrar may revoke the acceptance and proceed as if the30

application had not been accepted or, in respect only of a trademark
which shall be registered subject to additional or different
conditions or limitations, reissue a new acceptance subject toadditional or different conditions or limitations.
30. Voluntary disclaimer, condition or limitation(1) An applicant for the registration of a trademark may apply inthe form as determined by the Registrar—(a) to disclaim any right to the exclusive use of any specified
element of the trademark; or(b) to agree that the rights arising out of the registration shallbe subject to certain conditions or limitations imposed by theRegistrar.
(2) The Registrar may refuse any application under paragraph (1)(a)if the application contains or consists of any matters which is notallowed under the absolute and relative grounds for refusal ofregistration under sections 23 and 24.
(3) A disclaimer made by the applicant, or condition or limitation
imposed by the Registrar, under subsection (1), shall not be revoked
if the application has been accepted by the Registrar.
31. Publication of acceptance(1) If the application for registration of trademark is accepted,
the Registrar shall publish the application in the Intellectual
Property Official Journal.
(2) The publication under subsection (1) shall contain all
disclaimers, conditions, amendments, modifications or limitations
subject to which the application has been accepted.

31

Chapter 6 Withdrawal, restriction or amendment of application forregistration of trademark
32. Withdrawal or restriction of application for registration of
trademark(1) An applicant may, before the registration of trademark to which
his application relates, withdraw his application or restrict the
goods or services covered by the application by filing a request in
the form as determined by the Registrar.
(2) Any person may withdraw the application or restrict the goods orservices if the right or interest relied on in the filing of theapplication, notice or request has become vested in him.
(3) The person referred to in subsection (2) shall notify theRegistrar in the prescribed manner that the right or interest has
become vested in him.
(4) If the acceptance of the application for registration of a
trademark has been published under section 31, a notice of thewithdrawal or restriction of the goods or services of thatapplication shall also be published.
(5) Any withdrawal or restriction made under this section shall not
be revoked if the application for withdrawal or restriction has been
given effect by the Registrar.
33. Amendment of application for registration of trademark(1) The Registrar may, at the request of the applicant, amend an
application for the registration of a trademark at any time before
registration.
(2) The request under subsection (1) shall be made in the form as
determined by the Registrar together with the payment of theprescribed fee.
(3) Any amendment to an application for the registration of
trademark shall only be made in relation to—(a) the name or address of the applicant;(b) errors of wording or copying; or(c) obvious mistakes,
32and only where the amendment does not substantially affect theidentity of the trademark or extend the goods or services covered by
the application.

33

Chapter 7 Opposition
34. Grounds of opposition(1) Subject to subsection 35(3), the registration of trademark may
be opposed by a registered proprietor if he or his predecessor inbusiness or a person who is under his control or authority has
continuously used the trademark—(a) from a date before the use of the applicant’s trademark or his
predecessor in business or by a person who is under his control or
authority; or(b) from a date before the date of filing of the application by theapplicant.
(2) Notwithstanding subsection (1), the registration of trademark
may be opposed by any person—(a) on any grounds under section 23 or 24;(b) on the ground that the applicant is not the proprietor of the
trademark; or(c) subject to subsection (3), on the ground that—(i) it is identical with a well-known trademark in Malaysia and it
is to be registered for goods or services which are not identical or
not similar to the well-known trademark in Malaysia; or(ii) it is similar to a well-known trademark in Malaysia and it is
to be registered for goods or services which are not identical or
not similar to the well-known trademark in Malaysia.
(3) The ground of opposition under paragraph (2)(c) may be raised
where the use of the opposed trademark in relation to the goods orservices for which the opposed trademark is sought to be registered—(a) would indicate a connection between those goods or services andthe proprietor of the earlier well-known trademark;(b) would create a likelihood of confusion on the part of the public
because of such use by the opposed trademark; and(c) would likely damage the interests of the proprietor of the wellknown trademark.
(4) The ground of opposition referred to in paragraph (2)(c) may
only be raised to oppose the registration of an application forregistration of trademark made on or after the commencement of this
Act.

34

35. Opposition proceedings(1) Any person may file a notice of opposition in the form as
determined by the Registrar together with the payment of theprescribed fee and send the notice of opposition to the applicant
within the prescribed period from the date of the publication of theacceptance of an application for the registration of the opposed
trademark.
(2) The notice of opposition shall include a statement of thegrounds of the opposition containing any grounds specified under
section 34.
(3) An opposition may proceed in the name of a person other than the
person who filed the notice if—(a) after the person has filed a notice of opposition, the right orinterest on which the person relied to file the notice of opposition
becomes vested to the other person; and(b) the other person in paragraph (a)—(i) notifies the Registrar in the prescribed mannerthat the right or interest is vested in him; and(ii) does not withdraw the opposition.
(4) The applicant shall file a counterstatement in the form as
determined by the Registrar together with the payment of theprescribed fee, within the prescribed period after the receipt of
the notice of opposition and if the applicant does not do so, theapplication shall be deemed withdrawn.
(5) The counterstatement in subsection (4) shall include the grounds
upon which the applicant relies on for the application.
(6) The opponent and applicant shall file evidence and exhibits inthe prescribed manner within the prescribed period in support of the
opposition or the counterstatement, as the case may be, and if the
opponent or applicant does not do so, the opposition or application,
as the case may be, shall be deemed withdrawn.
(7) If the applicant files evidence and exhibits under subsection(6), the opponent may file evidence in reply in the prescribedmanner.

35

(8) In considering the evidence and exhibits and after giving theapplicant and the opponent an opportunity of making written
submissions, the Registrar shall decide whether—(a) to refuse to register the trademark;(b) to register the trademark absolutely; or(c) to register the trademark subject to such conditions,amendments, modifications, disclaimers or limitations as he thinksfit.
(9) The Registrar, upon request by the opponent or applicant in theform as determined by the Registrar together with the payment of theprescribed fee, may defer any action in relation to the opposition
proceedings under prescribed circumstances and for a prescribedperiod.
(10) Where an appeal lies to the Court against the decision of theRegistrar refusing to register a trademark or refusing to register a
trademark absolutely, or registering the trademark subject toconditions, amendments, modifications, disclaimers or limitations
under this section—(a) the appeal shall be made in the prescribed manner;(b) the Court shall, where necessary, hear the parties and theRegistrar; and(c) any party may, either in the manner prescribed or by special
leave of the Court, bring forward further material for theconsideration of the Court but no further grounds of opposition to
the registration of trademark shall be allowed to be taken by the
opponent other than those stated by the opponent except by leave of
the Court.
(11) Where any further grounds of opposition are taken, theapplicant shall be entitled to withdraw his application without
payment of the costs of the opponent on giving notice as prescribed.
(12) In any appeal under this section, the Court may, after hearing
the Registrar, permit the trademark intended to be registered to bemodified in any manner not substantially affecting the identity ofthe trademark, but in any such case the trademark as modified shallbe published in the Intellectual Property Official Journal before
being registered.

36

(13) If a person giving notice of opposition, an applicant sending acounterstatement, or an appellant, neither resides nor carries on
business in Malaysia, the Registrar or the Court may require him to
give security for costs of the proceedings relating to the
opposition, application or appeal, as the case may be, and in
default of such security being duly given, the Registrar or the
Court may deem the opposition, application, or appeal, as the casemay be, as withdrawn.

37

Chapter 8 Registration
36. Registration(1) When an application for registration of trademark has been
accepted and either—(a) the application has not been opposed and the period for
opposition has expired; or(b) the application has been opposed and the opposition has
been decided in favour of the applicant,the Registrar shall, unless the application has been accepted inerror, register the trademark in the Register in the name of the
proprietor, and the trademark so registered shall be registered asat the date of filing of application for registration and that dateshall be deemed to be the date of registration.
(2) On the registration of trademark, the Registrar shall issue tothe proprietor a notification of the registration of trademark withthe seal of the Registrar.
(3) If the registered proprietor intends to obtain a certificate ofregistration, the Registrar shall issue the certificate ofregistration which shall be equivalent to the notification ofregistration issued under subsection (2).
(4) An application for a certificate of registration undersubsection (3) shall be made by the registered proprietor in theform as determined by the Registrar together with the payment of theprescribed fee.

38PART V DIVISION AND MERGER
37. Application for division(1) An application for the registration of trademark or theregistration of trademark may, upon the request of the applicant orregistered proprietor, be divided into two or more separate
applications for the registration or registration of trademark.
(2) The request under subsection (1) shall be made to the Registrar
before or after the trademark is registered in the form as
determined by the Registrar together with the payment of theprescribed fee.
38. Application for merger(1) Two or more separate applications for registration of trademarkor registration of trademark may, upon the request of the applicant
or registered proprietor, be merged into one application forregistration of trademark or one registration of trademark.
(2) The request under subsection (1) shall be made to the Registrar
before or after the trademark is registered in the form as
determined by the Registrar together with the payment of theprescribed fee.

39PART VI DURATION AND RENEWAL OF REGISTERED TRADEMARKS
39. Duration and renewal of registration(1) The registration of trademark shall be for a period of ten years
from the date of registration and may be renewed under subsection(2) for a further period of ten years.
(2) The registration of trademark may be renewed, for some or all of
the classes of goods or services, at the request of the registeredproprietor in the form as determined by the Registrar together withthe payment of the prescribed fee.
(3) If some of the classes of goods or services of the registration
are to be renewed, section 37 may be applicable.
(4) Where the request for renewal is made on or before the date of
expiry of the registration, the fee payable shall be the renewal fee
as prescribed.
(5) Where the request for renewal is made within the period of six
months after the date of expiry of the registration, the fees
payable shall be the renewal fee as prescribed and a surcharge shallbe imposed.
(6) A request for renewal shall be made not later than six months
after the date of expiry of the registration.
(7) Renewal shall take effect from the expiry of the previous
registration.
(8) If the registration is not renewed in accordance with thissection and regulations referred to in subsection (4) or (5), thetrademark shall be deemed removed.
(9) Where the trademark has been deemed removed, the registeredproprietor may request for restoration for his removed registration
within six months from the date of removal in the form as determinedby the Registrar together with the payment of the restoration fee asprescribed.
(10) If restoration is not applied for under subsection (9) within40

six months from the date the trademark is deemed removed, theregistration shall cease.
(11) The renewal or restoration of the registration of a trademark
shall be published in the Intellectual Property Official Journal.
40. Status of unrenewed trademark(1) In a case of unrenewed trademark where—(a) the registration of trademark is not renewed; or(b) the registration of trademark has been deemed removed and has
not been restored,a person other than the person who was registered as the proprietorof the unrenewed trademark may apply for the registration of
trademark.
(2) Where an application for the registration of an unrenewed
trademark is made by a person other than the person who was
registered as the proprietor of the unrenewed trademark, theunrenewed trademark is taken to be a registered trademark for the
purposes of an examination in subsection 29(2) of the application at
any time when the registration of the unrenewed trademark could havebeen renewed and restored under section 39.
41. Cessation of registration
The registration of a trademark ceases if—(a) the trademark has ceased under subsection 39(10), been revokedunder section 45 or 46 or been invalidated under section 47; or(b) the registration of trademark is cancelled under section 44.

41

PART VII ALTERATION, CORRECTION, CANCELLATION, REVOCATION AND
INVALIDITY
42. Alteration of registered trademark(1) Subject to subsection (2), a registered trademark shall not bealtered in the Register.
(2) The Registrar may, at the request of the registered proprietor
in the form as determined by the Registrar together with the paymentof the prescribed fee, allow the alteration of the registeredtrademark includes the proprietor’s name or address, the alteration
is limited to the alteration of that name or address.
(3) The alteration of a registered trademark under subsection (2)shall not substantially affect the identity of the trademark.
43. Correction of Register(1) The Registrar may, on the request of the registered proprietor
in the form as determined by the Registrar together with the paymentof the prescribed fee—(a) correct an error or enter any change in the name, address
or description of the registered proprietor;(b) correct the details of description of the goods or services inrespect of which the trademark is registered without extending in
any way the rights given by the existing registration of trademark;or(c) enter a disclaimer relating to the trademark without extendingin any way the rights given by the existing registration of
trademark.
(2) The Registrar may, at the request of a licensee of a trademark
in the form as determined by the Registrar together with the paymentof the prescribed fee, correct an error or enter any change in thename, address or description of that licensee.
(3) The Registrar may make any correction in the Registerconsequential to subsections (1) and (2) and may, at his discretion,correct any clerical error or omission in respect of any
registration of trademark in the Register.
(4) A notification of registration shall be issued by the Registrar
42

on the approval of the corrections as requested under subsections(1) and (2), and the making, if any, of corrections under subsection(3).
(5) Notwithstanding subsections (1) to (4), subject to prescribed
procedures relating to an application for correction, any person
having sufficient interest may apply to the Court for the correctionof any error or omission in the Register.
(6) Any application for correction under subsection (5) shall not bemade in respect of a matter affecting the validity of theregistration of a trademark.
(7) Except where the Court directs otherwise, where a correction ismade in the Register, the error or omission relating to thecorrection shall be deemed never to have been made.
44. Voluntary cancellation of registered trademark(1) The Registrar shall cancel the registration of trademark in
respect of some or all of the goods or services upon the request of
the registered proprietor in the form as determined by the Registrar
together with the payment of the prescribed fee.
(2) Before cancelling the registration of the trademark, theRegistrar shall notify—(a) any person recorded under Part IX as claiming a right in respectof, or an interest in, the trademark; and(b) the person to whom the trademark has been assigned ortransmitted in the case where the assignment or transmission of the
trademark has not yet been recorded by the Registrar after anapplication has been made to the Registrar to record such assignmentor transmission of the trademark.
45. Revocation of registration by Registrar(1) The Registrar shall revoke the registration of trademark—(a) where a notice of opposition to the registration was filed, in
accordance with subsection 35(1), the Registrar failed to take into
account the opposition in deciding to register the trademark; or(b) where before the registration, any person had applied for an
extension of time for filing a notice of opposition to theregistration, the Registrar failed to take into account the43

application for extension of time in deciding to register the
trademark.
(2) The revocation under subsection (1) shall be subject to theRegistrar becoming aware of his failure to take into account the
opposition or application for extension of time to file a notice of
opposition within two months after the notice was filed or theapplication was made.
(3) The Registrar shall revoke the registration of trademark within
one month from becoming aware of his failure to take into accountthe opposition or the application for extension of time.
(4) Notwithstanding subsections (1), (2) and (3), the Registrar may
revoke the registration of trademark, within twelve months from thedate of registration of trademark, if the Registrar is satisfied
that it is reasonable to revoke the registration, taking into
account—(a) any relevant obligations of Malaysia under an international
agreement or convention; or(b) any special circumstances making it appropriate—(i) not to register the trademark; or(ii) to register the trademark only if the registration were subject
to disclaimer, conditions, amendments, modifications or limitations
to which the registration was not made subject.
(5) Notwithstanding subsection (2), if the Registrar becomes awareof the failure later, he may be able to revoke the registration
under subsection (4).
(6) Before the revocation of the trademark, the Registrar shall givea notice of the proposed revocation in the manner as determined by
the Registrar to the following persons:(a) the registered proprietor of the trademark; and(b) any person recorded under Part IX as claiming a right in respectof, or an interest in, the trademark.
(7) The Registrar shall not revoke the registration of trademark
without giving an opportunity to be heard to the following persons:(a) the registered proprietor of the trademark; or(b) any person recorded under Part IX as claiming a right in respect
44

of, or an interest in, the trademark.
(8) Where the Registrar revokes a registration under this section—(a) the registration shall be deemed to have never occurred; and(b) the registration which has been revoked shall be subject tofurther examination or proceedings as determined by the Registrar.
(9) It shall not be the duty of the Registrar to consider whether or
not to revoke any registration notwithstanding any request for theRegistrar to do so.
46. Revocation of registration by Court as to non-use of trademark(1) The registration of a trademark may be revoked by the Court on
an application by an aggrieved person on any of the grounds asfollows:(a) where within a period of three years following the date ofissuance of the notification of registration, the trademark has notbeen put to use in good faith in Malaysia, by the registeredproprietor or with his consent, in relation to the goods or services
for which the trademark is registered, and there are no proper
reasons for non-use;(b) where the use of the goods or services under paragraph (a) has
been suspended for an uninterrupted period of three years, and there
are no proper reasons for non-use;(c) where in consequence of acts or inactivity of the registeredproprietor, it has become the common name in the trade for the
product or service for which it is registered; or(d) where in consequence of the use of the trademark by theregistered proprietor or with his consent in relation to the goods
or services for which the trademark is registered, it is liable tomislead the public, including in respect of the nature, quality or
geographical origin of those goods or services.
(2) Subject to subsection (3), the registration of trademark shallnot be revoked on the ground under paragraph (1)(a) or (b) if such
use as is referred to in that paragraph is begun or resumed after
the expiry of the three year period and before the application forrevocation is made.
(3) Any such use referred to in paragraph (1)(a) or (b) that has
begun or resumed after the expiry of the three year period but
45within the period of three months before the making of theapplication for revocation shall be disregarded unless preparationsof such use began before the proprietor became aware that theapplication for revocation might be made.
(4) Where grounds for revocation exist in respect of only some of
the goods or services for which the trademark is registered,revocation shall relate to those goods or services only.
(5) Where the registration of trademark is revoked to any extent,
the rights of the registered proprietor shall be deemed to haveceased to that extent as from—(a) the date of the application for revocation; or(b) if the Court is satisfied that the grounds for revocation exists
at an earlier date, that date.
47. Invalidation of registration by Court(1) The registration of trademark may be declared invalid by the
Court upon the application by an aggrieved person on the ground thatthe trademark was registered in breach of section 23.
(2) Notwithstanding subsection (1), where the trademark was
registered in breach of paragraph 23(1)(b), (c) or (d), it shall not
be declared invalid if, the registration of trademark has acquired a
distinctive character after its registration in consequence of its
use in relation to the goods or services for which it is registered.
(3) The registration of trademark may be declared invalid by the
Court upon the application by an aggrieved person on the groundthat—(a) there is an earlier trademark under subsection 24(1), (2)or (3); or(b) there is an earlier right under subsection 24(4).
(4) The registration of trademark may not be declared invalid undersubsection (3) if the proprietor of that earlier trademark or
earlier right has consented to the registration.
(5) Where a trademark has been registered on the ground that there
has been an honest concurrent use of the trademark and the earlier
trademark or other earlier right, as provided for by section 25, the46

registration of trademark may not be declared invalid undersubsection (3) unless the Registrar or the Court is satisfied thatin fact there had been no honest concurrent use of the trademark andthe earlier trademark or other earlier right.
(6) The registration of trademark may be declared invalid by the
Court upon the application by an aggrieved person or the Registrar
on the ground of fraud in the registration or that the registration
was obtained by misrepresentation.
(7) Where the ground of invalidity exists in respect of only some of
the goods or services for which the trademark is registered, thetrademark shall be declared invalid as regards those goods orservices only.
(8) Where the registration of trademark is declared invalid to any
extent, the registration shall to that extent be deemed never tohave been made, but this shall not affect transactions past andclosed.

47

PART VIII EFFECTS OF REGISTERED TRADEMARKS
Chapter 1 Rights of registered proprietor of trademark
48. Rights conferred by registered trademark(1) The registered proprietor of trademark has the exclusive rights—(a) to use the trademark; and(b) to authorize other persons to use the trademark,in relation to the goods or services for which the trademark is
registered.
(2) The registered proprietor has the right to obtain relief for
infringement of his trademark.
(3) The acts amounting to infringement of a trademark are set out insection 54 and references to the infringement of a registeredtrademark shall be construed accordingly.
(4) The rights shall accrue to the proprietor as from the date ofregistration of trademark except that—(a) no infringement proceedings may be begun before thedate on which the trademark is in fact registered; and(b) no offence under sections 99 to 102 is committed by anything
done before the date on which the trademark is in fact registered.
(5) If the trademark is registered subject to any disclaimers,
conditions, amendments, modifications or limitations, the rights ofthe proprietor are restricted by the disclaimers, conditions,amendments, modifications or limitations.
49. Limitation on rights if similar trademarks, etc., registered bydifferent persons
If trademarks that are identical or similar have been registered bymore than one person whether in respect of the same or different
goods or services under section 25, the registered proprietor of any
one of those trademarks does not have the right to prevent theregistered proprietor of any other of those trademarks from usingthat trademark except to the extent that the first-mentioned
proprietor is authorized to do so under the registration of his
trademark.

48

50. Trademark consisting of sign that becomes accepted as signdescribing article, etc.
(1) This section applies if a registered trademark contains or
consists of, a sign that, after the date of registration of
trademark, becomes generally accepted within the relevant trade as
the sign that describes or is the name of an article, substance orservice.
(2) For the purposes of subsection (1), if the trademark consists ofthe sign, the registered proprietor—(a) does not have any exclusive rights to use, or authorize otherpersons to use, the trademark in relation to—(i) the article or substance or other goods of the same description;or(ii) the service or other services of the same description, and(b) is taken to have ceased to have those exclusive rights from andincluding the day determined by the Court under subsection (4).
(3) For the purposes of subsection (1), if the trademark contains
the sign, the registered proprietor—(a) does not have any exclusive rights to use, or authorize otherpersons to use, the sign in relation to—(i) the article or substance or other goods of the same description;or(ii) the service or other services of the same description; and(b) is taken to have ceased to have those exclusive rights from the
day determined by the Court under subsection (4).
(4) For the purposes of subsections (2) and (3), the Court may
determine the day on which a sign first became generally acceptedwithin the relevant trade as the sign that describes or is the nameof the article, substance or service.
51. Trademark relating to article, etc., formerly manufactured underpatent(1) This section applies if—(a) a registered trademark contains or consists of, a sign that
describes or is the name of—(i) an article or substance that was formerly exploited under apatent; or(ii) a service that was formerly provided as a patented process;49

(b) it is at least two years since the patent has expired or ceased;and(c) the sign is the only commonly known way to describe or identify
the article, substance or service.
(2) If the trademark contains or consists of the sign in subsection(1), the registered proprietor—(a) does not have any exclusive right to use, or authorize otherpersons to use the trademark or the sign in relation to—(i) the article or substance or other goods of the same description;or(ii) the service or other services of the same description; and(b) is taken to have ceased to have those exclusive rights from theend of the period of two years after the patent expired or ceased.
52. Registration prima facie evidence
In all legal proceedings relating to a registered trademark—(a) the Register shall be prima facie evidence of anything containedin the Register;(b) the registration of the prescribed particulars of any
registrable transaction under section 65 shall be prima facie
evidence of the transaction; and(c) the registration of a person as the registered proprietor of the
trademark shall be prima facie evidence of—(i) the validity of the original registration of trademark; and(ii) any subsequent assignments and transmissions.
53. Registration conclusive
In all legal proceedings relating to a trademark in the Register,
the original registration of the trademark shall, after the
expiration of five years from the date of registration be taken to
be valid in all respects unless it is shown that—(a) the original registration was obtained by fraud;(b) the trademark offends paragraph 23(5)(a), (c), (d) or (e); or(c) the trademark was, at the commencement of the proceedings,
devoid of distinctiveness of the goods or services of the registeredproprietor.

50

Chapter 2 Infringement of trademarks
54. Acts amounting to infringement of registered trademark(1) A person infringes a registered trademark if he uses a sign
which is identical with the trademark in relation to goods orservices which are identical with those for which it is registered,in the course of trade, without the consent of the registeredproprietor.
(2) A person infringes a registered trademark if, without theconsent of the proprietor of the trademark, he uses in the course of
trade a sign—(a) that is identical with the trademark and is used in relation to
goods or services similar to those for which the trademark is
registered; or(b) that is similar to the trademark and is used in relation to
goods or services identical with or similar to those for which thetrademark is registered,resulting in the likelihood of confusion on the part of the public.
(3) For the purposes of this section, a person uses a sign if he—(a) applies it to goods or their packaging;(b) offers or exposes goods for sale under the sign;(c) puts goods on the market under the sign;(d) stocks goods under the sign for the purpose of offering or
exposing them for sale or of putting them on the market;(e) offers or supplies services under the sign;(f) imports or exports goods under the sign;(g) uses the sign on an invoice, catalogue, business letter,business paper, price list or other commercial document, including
any such document in any medium; or(h) uses the sign in advertising.
(4) A person who—(a) applies a registered trademark to any material used or intended
to be used for labelling or packaging goods; or(b) uses a sign in advertising or on any document described inparagraph (3)(g),shall be treated as a party who uses the material which infringes
the registered trademark if when he applied the trademark, he knew
or had reason to believe that the application of the trademark was51

not duly authorized by the registered proprietor of the trademark or
a licensee.
55. Acts not amounting to infringement(1) Notwithstanding section 54, a person does not infringe aregistered trademark when—(a) he uses in good faith—(i) his name or the name of his place of business; or(ii) the name of his predecessor in business or the name of his
predecessor’s place of business;(b) he uses in good faith a sign to indicate—(i) the kind, quality, quantity, intended purposes, value,geographical origin or other characteristics of goods or services;or(ii) the time of production of goods or the rendering of services;or(c) he uses the trademark to indicate the intended purpose of goods
which includes accessories or spare parts or service and such use isin accordance with honest practices in industrial or commercial
matters.
(2) Notwithstanding section 54, a person does not infringe aregistered trademark by using an unregistered trademark that is
identical with or similar to the registered trademark in relation to
goods or services identical with or similar to those for which thetrademark is registered if he has, or he and his predecessor inbusiness have, continuously used in the course of trade theunregistered trademark in relation to those goods or services from atime before—(a) the date of registration of the registered trademark; or(b) the date the registered proprietor, or a predecessor inbusiness, or a person who was a registered user under the repealed
Act, first used the trademark, whichever is the earlier.
(3) Notwithstanding anything contained in this Act, a person who
uses a registered trademark does not infringe the trademark if suchuse—(a) is for a non-commercial purpose;(b) is for the purpose of news reporting or news commentary;(c) has at any time expressly or impliedly been consented to by theregistered proprietor or licensee; or52

(d) of a trademark, which is one of two or more registeredtrademarks which are substantially identical, in the exercise of theright to the use of that trademark given by registration as provided
by this Act.
(4) Notwithstanding anything contained in this Act, a registeredtrademark is not infringed by the use of another registeredtrademark in relation to goods or services for which the latter isregistered.
56. Action for infringement(1) The registered proprietor shall have the right to instituteCourt proceedings against any person who has infringed or isinfringing the registered trademark.
(2) The registered proprietor shall have the same right of action insubsection (1) against any person who has performed acts which will
make it likely that an infringement will occur.
(3) In an action for an infringement, the Court may grant relief
including the following:(a) an injunction subject to such conditions as the Court thinks fit
which includes to prevent goods that involve the infringement fromentering into the channels of commerce;(b) damages;(c) an account of profits; or(d) in any case to which subsection (7) applies, the award of such
additional damages as it considers appropriate in the circumstancesby the Court.
(4) Notwithstanding paragraph (3)(a), upon the application of theplaintiff for an interim injunction, when the Court is satisfied
that the infringement involves the use of a counterfeit trademark in
relation to goods or services, the Court may order—(a) the seizure or taking into custody of suspected infringing
goods, materials or articles relevant to the infringement; and(b) the supply of documentary evidence relevant to the infringement.
(5) When the Court awards any damages under paragraph (3)(b), theCourt may also make an order under paragraph (3)(c) for an accountof profits attributable to the infringement that have not been taken
53

into account in computing the damages.
(6) Except as provided for in subsection (5), the relief referred toin paragraphs (3)(b) and (c) are mutually exclusive.
(7) In any action for infringement of a registered trademark where
the infringement involves the use of a counterfeit trademark in
relation to goods or services, the plaintiff shall be entitled, at
his election, to—(a) damages and an account of profits attributable to theinfringement that have not been taken into account in computing thedamages;(b) an account of profits; or(c) additional damages as it considers appropriate in thecircumstances.
(8) Pursuant to paragraph (7)(c), the Court shall have regard to—(a) the flagrancy of the infringement of the registered trademark;(b) any benefit shown to have accrued to the defendant by reason of
the infringement;(c) the need to punish the defendant for such act of infringement;and(d) all other relevant matters.
(9) Notwithstanding the claim for priority made under section 26, 27
or 28, nothing in this section shall entitle the registeredproprietor to recover any relief under subsection (3) for
infringements or any happening prior to the date on which theapplication for protection of the trademark is made and become
registered in Malaysia.
57. Circumstances in which action may not be instituted
An action for infringement may not be instituted in respect of anact that was done after the registration of trademark has expired or
has been deemed removed and before it was renewed or restored under
section 39.
58. Order for erasure, etc., of offending sign
(1) Subject to subsection (3), where a person is found to haveinfringed a registered trademark, the Court may make an order
requiring him—
54

(a) to cause the offending sign to be erased, removed or obliterated
from any infringing goods, material or articles in his possession,custody or control; or(b) if it is not reasonably practicable for the offending sign to beerased, removed or obliterated, to secure the destruction of theinfringing goods, material or articles in question.
(2) If an order under subsection (1) is not complied with or it
appears to the Court that it is likely that such an order would not
be complied with, the Court may order that the infringing goods,
material or articles be delivered up to such person as the Court may
direct for the erasure, removal or obliteration of the sign, orotherwise for the destruction of the goods, material or articles.
(3) Where a person who is found to have infringed a registeredtrademark has in his possession, custody or control any counterfeit
goods, the Court shall order that the counterfeit goods be delivered
up to such person as the Court may direct for destruction if—(a) the plaintiff applies to the Court for such an order; and(b) the Court is of the view that there are no exceptional
circumstances which would justify the refusal of such an order.
59. Order for delivery up of infringing goods, material or articles(1) The Court may, in addition to any relief granted under sections
56 and 58 in any action for an infringement of a registeredtrademark, order any infringing goods, material or articles in thepossession of the defendant or before the Court to be delivered up
to the plaintiff.
(2) Where the Court makes an order under subsection (1), it shallalso make an order under section 60 unless it determines that there
are grounds for not making such an order.
(3) A person to whom any infringing goods, material or articles aredelivered up pursuant to an order under subsection (1) shall, if anorder under section 60 is not made at the time of the making of theorder under subsection (1), retain them pending the decision of theapplication under section 60.
60. Order for disposal of infringing goods, material or articles(1) Where infringing goods, material or articles have been delivered55

up pursuant to an order under section 59, an application may be madeto the Court—(a) for an order that they be destroyed or forfeited to such person
as the Court may think fit; or(b) for a decision that no order under paragraph (a) shall be made.
(2) In considering what order, if any, should be made, the Court
shall have regard to—(a) whether other remedies available in an action for infringementof the registered trademark would be adequate to compensate theplaintiff and protect his interest; and(b) the need to ensure that no infringing goods, material or
articles are disposed of in a manner that would adversely affect theplaintiff.
(3) Notwithstanding subsection (2), where the infringing goods arecounterfeit goods, the Court shall order that the goods be destroyed
if—(a) the plaintiff applies to the Court for such an order; and(b) the Court is of the view that there are no exceptional
circumstances which would justify the refusal of such an order.
(4) The Court shall issue directions as to the service of notice on
persons having an interest in the infringing goods, material or
articles.
(5) Any person having an interest in the infringing goods, material
or articles shall be entitled—(a) to appear in proceedings of an application for an order under
this section, whether or not that person is served with notice; and(b) to appeal against any order made, whether or not that person
appears in the proceedings.
(6) An order made under this section shall not take effect until theend of the period within which a notice of appeal may be given or,
if before the end of that period notice of appeal is duly given,
until the final determination or discontinuance of the proceedingson the appeal.
(7) Subject to subsection (3), where there is more than one person
interested in the infringing goods, material or articles, the Court56

may direct that the infringing goods, material or articles be sold,or otherwise dealt with, and the proceeds divided, and shall makeany other order as it thinks fit.
(8) If the Court decides that no order should be made under thissection, the person in whose possession, custody or control of theinfringing goods, material or articles were before being delivered
up, is entitled to their return.
61. Remedy for groundless threats of infringement proceedings(1) Where a person threatens another with proceedings forinfringement of a registered trademark other than—(a) the application of the trademark to goods or to material used orintended to be used for labelling or packaging goods;(b) the importation of goods to which, or to the packaging of which,the trademark has been applied; or(c) the supply of services under the trademark,any aggrieved person may bring proceedings for relief under thissection.
(2) The relief which may be applied for shall be any of thefollowing:(a) a declaration that the threats are unjustifiable;(b) an injunction against the continuance of the threats; or(c) damages in respect of any loss he has sustained by the threats.
(3) The plaintiff shall be entitled to the relief in subsection (2)unless the defendant shows that the acts in respect of which
proceedings were threatened constitute or if done would constitutean infringement of the registered trademark concerned.
(4) If the defendant shows that the acts in respect of which
proceedings were threatened constitute or if done would constitutean infringement of the registered trademark concerned, the plaintiff
shall nevertheless be entitled to relief if he shows that theregistration of trademark is invalid or liable to be revoked in a
relevant respect.
(5) The mere notification that a trademark is registered, or that an
application for registration has been made, shall not constitute a
threat of proceedings for the purposes of this section.
57

(6) Nothing in this section shall render an advocate and solicitor
liable to an action under this section in respect of an act done by
him in his professional capacity on behalf of a client.

58

PART IX TRADEMARKS AS OBJECT OF PROPERTY
62. Nature of registered trademark as property
A registered trademark shall be a personal or moveable property andmay be the subject of a security interest in the same way as otherpersonal or moveable property.
63. Co-proprietorship of registered trademark(1) Where a registered trademark is granted to two or more persons
jointly, each of them shall be entitled, subject to any agreement tothe contrary, to an equal undivided share in the registeredtrademark.
(2) This section applies where two or more persons are coproprietors of a registered trademark under subsection (1).
(3) Subject to subsection (4) or any agreement to the contrary, eachco-proprietor shall be entitled, by himself or his agents, to do for
his own benefit and without the consent of or the need to account to
the other, any act which would otherwise amount to an infringementof the registered trademark.
(4) One co-proprietor shall not without the consent of the other—(a) grant a licence to use the registered trademark; or(b) assign or charge his share in the registered trademark.
(5) Infringement proceedings may be brought by any co-proprietor,
but he may not, without leave of the Court, proceed with the action
unless the other, or each of the others, is either joined as aplaintiff or added as a defendant.
(6) A co-proprietor who is thus added as a defendant shall not bemade liable for any costs in the action unless he takes part in theproceedings.
(7) Nothing in this subsection affects the granting of interlocutory
relief on the application of a single co-proprietor.
(8) Nothing in this section affects the mutual rights andobligations of trustees or personal representatives, or their rights
and obligations as such.
5964. Assignment, etc., of registered trademark(1) A registered trademark shall be transmissible by assignment ortransmission in the same way as other personal or moveable property,
and shall be so transmissible either in connection with the goodwillof a business or independently.
(2) An assignment or other transmission of a registered trademark
may be partial which is limited so as to apply in relation to some
but not all of the goods or services for which the trademark is
registered.
(3) An assignment of a registered trademark, or an assent relating
to a registered trademark, shall not be effective unless it is in
writing and is signed by or on behalf of the assignor and assignee,or a personal representative, as the case may be.
(4) Subsections (1), (2) and (3) shall apply to an assignment by wayof security as in relation to any other assignment.
(5) A registered trademark may be the subject of a charge in thesame manner as other personal or moveable property.
(6) Nothing in this Act shall be construed as affecting theassignment or other transmission of an unregistered trademark as
part of the goodwill of a business.
65. Registration of transaction affecting registered trademark(1) The particulars of a registrable transaction as determined by
the Registrar shall be entered in the Register upon the approval by
the Registrar on application being made in the form as determined by
the Registrar together with the payment of the prescribed fee by—(a) a person claiming to be entitled to an interest in or under aregistered trademark by virtue of the registrable transaction; or(b) any other person claiming to be affected by such a transaction.
(2) Until an application has been made under subsection (1) andapproved by the Registrar, the transaction shall be ineffective
against a person acquiring a conflicting interest in or under theregistered trademark in ignorance of the transaction.

60

(3) A person who becomes a registered proprietor by virtue of any
registrable transaction shall not be entitled to damages or an
account of profits in respect of any infringement of the registeredtrademark occurring after the date of the transaction and before thedate of the application for the registration made under subsection(1).
(4) Subsections (2) and (3) shall not apply to any registrable
transaction relating to a licence under a registered trademark or
any right in or under the licence.
(5) The Registrar may amend or remove any particulars relating to asecurity interest on the application of the registered proprietor
and with the consent of the person entitled to the benefit of thatinterest in the form as determined by the Registrar together withthe payment of the prescribed fee.
66. Trust and equities(1) Notice of any implied or constructive trust shall not be enteredin the Register.
(2) Notwithstanding that a notice of an express trust or of thebeneficiary of an express trust may be entered in the Register—(a) the Registrar shall not be affected by such notice in theRegister; and(b) for the avoidance of doubt, a failure to enter such notice in
the Register shall not affect any rights or duties under the trust.
(3) Subject to the provisions of this Act, equities in respect of aregistered trademark may be enforced in like manner as in respect ofother personal or movable property.
67. Application for registration of trademark as an object ofproperty(1) Sections 62 to 66 shall apply in relation to an application forregistration of trademark as they apply in relation to a registeredtrademark.
(2) For the purposes of subsection (1), the reference in subsection
63(1) to the granting of a registration shall be construed as areference to the making of an application for the registration of61

trademark.
(3) In section 65 as it applies in relation to a transaction
affecting an application for the registration of trademark, thereferences to the entry of particulars in the Register, and to themaking of an application to register particulars, shall be construed
as references to the giving of notice to the Registrar of thoseparticulars.

62

PART X LICENSING
68. Interpretation
In this Part—(a) “exclusive licence” means a licence, whether general or limited,authorizing the licensee to the exclusion of all other persons
including the person granting the licence, to use a registeredtrademark in the manner authorized by the licence, and theexpression “exclusive licensee” shall be construed accordingly; and(b) “licence” includes a sub-licence and “licensee” shall be
construed accordingly and references to a licence or licensee
include references to a sub-licence or sub-licensee.
69. Licensing of registered trademark(1) A licence to use a registered trademark may be general or
limited.
(2) A limited licence may apply—(a) in relation to some but not all of the goods or services forwhich the trademark is registered; or(b) in relation to use of the trademark in a particular manner or aparticular locality.
(3) A licence shall not be effective unless it is in writing and issigned by or on behalf of the grantor.
(4) A licence to use a registered trademark shall be binding on
every successor in title to the grantor’s interest—(a) except any person who, in good faith and without any notice,actual or constructive, of the licence, has given valuable
consideration for the interest in the registered trademark; or(b) unless the licence provides otherwise,
and any reference to doing anything with, or without, the consent ofa registered proprietor of trademark shall be construed accordingly.
(5) Every person shall be deemed to have notice of a licence if theparticulars as determined by the Registrar of the grant of thelicence are entered in the Register under subsection 65(1).
(6) Where the licence so provides, a sub-licence may be granted by
the licensee.
63(7) This section shall apply, with the necessary modifications, toan exclusive licence.
70. Rights of licensees in case of infringement(1) This section has effect with respect to the rights of a licensee
in relation to infringement of a registered trademark except for an
exclusive licensee under subsections 71(1) and (2), the licensee has
the right to bring infringement proceeding in his own name.
(2) A licensee shall be entitled, unless his licence or any license
through which his interest is derived, provides otherwise, to callon the registered proprietor of the trademark to take infringement
proceedings in respect of any matter which affects his interests.
(3) For the purposes of subsection (2), if the registered proprietor
refuses or does not take infringement proceedings within two months
after being called upon, the licensee may bring the proceedings in
his own name as if he were the registered proprietor.
(4) Where infringement proceedings are brought by a licensee by
virtue of this section, the licensee may not, without leave of the
Court, proceed with the action unless the registered proprietor iseither joined as a plaintiff or added as a defendant.
(5) Subsection (4) does not affect the granting of interlocutory
relief on an application by a licensee alone.
(6) A registered proprietor who is added as a defendant undersubsection (4) shall not be liable for any costs in the action
unless he takes part in the proceedings.
(7) In infringement proceedings brought by the registeredproprietor, any loss suffered or likely to be suffered by a licensee
shall be taken into account and the Court may give such directions
as it thinks fit as to the extent to which the plaintiff is to holdthe proceeds of any pecuniary remedy on behalf of a licensee.
(8) The provisions of this section apply in relation to an exclusive
licensee if or to the extent that he has, under subsections 71(1)and (2), the rights and remedies of an assignee as if he were the64registered proprietor of the trademark.
71. Exclusive licensee having rights and remedies of assignee(1) An exclusive licence may provide that the licensee shall have,to such extent as may be provided by the licence, the same rights
and remedies in respect of matters occurring after the grant of thelicence as if the licence had been an assignment.
(2) Where or to the extent of the provision referred to in
subsection (1), the licensee shall be entitled, subject to theprovisions of the licence and this section, to bring infringement
proceedings, against any person other than the registeredproprietor, in his own name.
(3) Any such rights and remedies of an exclusive licensee areconcurrent with those of the registered proprietor and references tothe registered proprietor relating to infringement shall be
construed accordingly.
(4) In an action brought by an exclusive licensee under thissection, a defendant may avail himself of any defence which would
have been available to him as if the action had been brought by theregistered proprietor of the trademark.
(5) Where proceedings for infringement of a registered trademark
brought by the registered proprietor or an exclusive licensee relate
wholly or partly to an infringement in respect of which they haveconcurrent rights of action, the registered proprietor or the
exclusive licensee may not, without leave of the Court, proceed withthe action unless the other is either joined as a plaintiff or added
as a defendant.
(6) Subsection (5) does not affect the granting of interlocutory
relief on an application by a registered proprietor of the trademark
or exclusive licensee alone.
(7) A person who is added as a defendant under subsection (4) shallnot be liable for any costs in the action unless he takes part in
the proceedings.
(8) Where an action for infringement of a registered trademark
65brought relates wholly or partly to an infringement in respect ofwhich the registered proprietor and an exclusive licensee have or
had concurrent rights of action—(a) the Court shall in assessing damages take into account—(i) the terms of the licence; and(ii) any pecuniary remedy already awarded or available to either ofthem in respect of the infringement;(b) no account of profits shall be directed if an award of damages
has been made, or an account of profits has been directed, in favourof the other of them in respect of the infringement; and(c) the Court shall, if an account of profits is directed, apportion
the profits between them as the Court considers just, subject to any
agreement between them.
(9) Subsection (8) shall apply whether or not the registeredproprietor and the exclusive licensee are both parties to theaction, and if they are not both parties, the Court may give suchdirections as it thinks fit as to the extent to which the party tothe proceedings is to hold the proceeds of any pecuniary remedy onbehalf of the other.
(10) Subsections (5) to (8) have effect subject to any agreement tothe contrary between the exclusive licensee and the registeredproprietor of the trademark.

66

PART XI COLLECTIVE MARKS AND CERTIFICATION MARKS
72. Collective marks(1) A collective mark shall be a sign distinguishing the goods orservices of members of the association which is the proprietor of
the collective mark from those of other undertakings.
(2) The provisions of this Act apply to collective marks subject tothe provisions of the First Schedule.
73. Certification marks(1) A certification mark shall be a sign indicating that the goods
or services in connection with which it shall be used are certified
by the proprietor of the mark in respect of origin, material, modeof manufacture of goods or performance of services, quality,
accuracy or other characteristics.
(2) The provisions of this Act apply to certification marks subject
to the provisions of the Second Schedule.

67PART XII INTERNATIONAL MATTERS
Chapter 1 Madrid Protocol
74. Interpretation
For the purposes of this Part, “Madrid Protocol” means the Protocol
relating to the Madrid Agreement concerning the International
Registration of Marks, adopted at Madrid on 27th June 1989.
75. Regulations relating to Madrid Protocol(1) The Minister may make regulations to give effect to theprovisions of the Madrid Protocol in Malaysia.
(2) Without prejudice to the generality of subsection (1),regulations may provide for all or any of the following purposes:(a) all matters relating to applications for international
registration of trademarks including where the basic Malaysia
application or registration fails or ceases to be in force and its
renewal;(b) all matters relating to requests to extend to Malaysia theprotection resulting from international registration of trademark
and including the effects of such requests;(c) all matters relating to the protection to protectedinternational registration designating Malaysia including the
cessation of such protection;(d) all matters relating to the transformation of an application for
an international registration, or an international registration,
into a national application for registration including the effectsof such transformation;(e) all matters relating to the cancellation of an international
registration including the effects of such cancellation;(f) all matters relating to a protected international registration
designating Malaysia including the application of section 61 andParts XIII and XV;(g) the payment of fees and amounts prescribed in respect ofapplications for international registrations, extensions ofprotection and renewals; and(h) all other matters as are necessary or expedient to be prescribedfor giving effect to this Act.

68

Chapter 2 Conventions and international arrangements
76. Protection of well-known trademarks(1) A well-known trademark shall be entitled to protection under
this section—(a) whether or not the trademark has been registered in Malaysia, oran application for the registration of trademark has been made to
the Registrar; and(b) whether or not the proprietor of the trademark carries on
business, or has any goodwill, in Malaysia.
(2) Subject to subsections (5) and (6), the proprietor of a wellknown trademark shall be entitled to restrain by injunction the use
in Malaysia, in the course of trade and without the proprietor’sconsent, of any trademark which, or an essential part of which, isidentical with or similar to the proprietor’s trademark—(a) in relation to identical or similar goods or services, where theuse is likely to cause confusion; or(b) in relation to any goods or services, where the use of the
trademark would indicate a connection between those goods orservices and the proprietor, and is likely to damage the interestsof the proprietor.
(3) A proprietor of a well-known trademark may apply to the Court
for a declaration of invalidation of a registered trademark on the
grounds that the registered trademark is identical with or similar
to a well-known trademark in Malaysia and the registered trademark
is registered for any goods or services which are not identical or
not similar to those in respect of the well-known trademark—(a) if the use of the registered trademark in relation to those
goods or services would indicate a connection between those goods orservices and the proprietor of the well- known trademark;(b) there exists a likelihood of confusion on the part of the public
because of such use; and(c) the interests of the proprietor of the well-known trademark arelikely to be damaged by such use.
(4) A proprietor of a well-known trademark may apply to the Court
for a declaration of invalidation of a registered trademark on the
grounds of fraud in the registration or that the registration was
obtained by misrepresentation.
69

(5) The proprietor of a well-known trademark shall not be entitledto the right referred to in subsection (2) if the use of the
trademark began before the proprietor’s trademark became well-known
in Malaysia unless the trademark has been used in bad faith.
(6) The proprietor of a well-known trademark shall cease to beentitled to the right referred to in subsection (2) if the
proprietor of the well-known trademark has acquiesced for acontinuous period of five years in the use of the trademark in
Malaysia, being aware of that use, unless the trademark has beenused in bad faith.
(7) In deciding whether the trademark, has been used in bad faith,
it shall be relevant to the Court to consider whether the person who
used the trademark had, at the time he began to use the trademark,knowledge of, or reason to know of, the proprietor’s well-known
trademark.
(8) Nothing in subsection (2) shall affect the continuation of any
use referred to that subsection in good faith of a trademark thatwas begun before 1 December 1997 (when the relevant provisions of
the TRIPS Agreement entered into force in relation to the Malaysia).
(9) Nothing in subsection (3) shall affect the continuation of any
bona fide use of a trademark begun before the commencement of thisAct.
(10) For the purposes of this section, “use”, in relation to a
trademark, means use within the meaning of subsection 54(3).
77. Permitted use of well-known trademarks(1) Notwithstanding section 76, the proprietor of a well-known
trademark shall not be entitled to restrain by injunction the use in
Malaysia, in accordance with honest practices in industrial orcommercial matters, by any person of—(a) the name of—(i) the person himself;(ii) the person’s place of business;(iii) the person’s predecessor in business; or(iv) the place of business of the person’s predecessor in business;70

(b) any sign to indicate—(i) the kind, quality, quantity, intended purpose, value,geographical origin or other characteristic of goods or services; or(ii) the time of production of goods or of the rendering ofservices; or(c) the trademark to indicate the intended purpose of goods which
includes accessories or spare parts or services.
(2) Notwithstanding section 76, the proprietor of a well-known
trademark shall not be entitled to restrain by injunction the use in
Malaysia of—(a) any registered trademark in relation to goods or services forwhich the latter is registered; or(b) the trademark if such use—(i) is for a non-commercial purpose;(ii) is for the purpose of news reporting or news commentary; or(iii) has at any time expressly or impliedly been consented to by
the proprietor of the well-known trademark.
78. National emblems, etc., of Convention countries under Article
6ter of Paris Convention(1) A trademark which consists of or contains the flag of aConvention country shall not be registered without the authorizationof the competent authorities of that country, unless it appears to
the Registrar that the use of the flag in the manner proposed ispermitted without such authorization.
(2) A trademark which consists of or contains the armorial bearings
or any other state emblem of a Convention country which is protectedunder the Paris Convention or the TRIPS Agreement shall not beregistered without the authorization of the competent authorities ofthat country.
(3) A trademark which consists of or contains an official sign orhallmark adopted by a Convention country and indicating control andwarranty shall not, where the sign or hallmark is protected under
the Paris Convention or the TRIPS Agreement, be registered of thesame, or a similar kind, as those in relation to which it indicatescontrol and warranty, without the authorization of the competentauthorities of the country concerned.

71

(4) References to national flags and other state emblems, andofficial signs or hallmarks under this section, apply equally toanything which from a heraldic point of view imitates any such flagor other emblem, or sign or hallmark.
(5) Nothing in this section prevents the registration of trademark
on the application of a national of a country who is authorized tomake use of a state emblem, or official sign or hallmark, of thatcountry, notwithstanding that it is similar to that of anothercountry.
(6) Where by virtue of this section, the authorization of thecompetent authorities of a Convention country is or would be
required for the registration of trademark, those authorities areentitled to restrain by injunction any use of the trademark in
Malaysia without their authorization.
79. Emblems, etc., of certain international intergovernmentalorganization under Article 6ter of Paris Convention(1) A trademark which consists of or contains any armorial bearing,
flag, emblem, abbreviation or name of international
intergovernmental organizations of which one or more Convention
countries are members and which is protected under the Paris
Convention or the TRIPS Agreement shall not be registered without
the authorization of the international intergovernmentalorganization concerned, unless it appears to the Registrar that theuse of the armorial bearing, flag, emblem, abbreviation or name in
the manner proposed—(a) would indicate to the public that a connection exists between
the organization and the trademark; or(b) is not likely to mislead the public as to the existence ofa connection between the user and the organization.
(2) References to armorial bearing, flag, emblems, abbreviation orname of an international intergovernmental organization under thissection, apply equally to anything which from a heraldic point ofview imitates any such emblem.
(3) Where under this section, the authorization of an international
intergovernmental organization shall or would be required for theregistration of trademark, that organization shall be entitled to72

restrain by injunction any use of the trademark in Malaysia without
its authorization.
(4) Nothing in this section affects the rights of a person whose use
in good faith of the trademark in question began before 1 January
1989 (when the relevant provisions of the Paris Convention enteredinto force in relation to the Malaysia).
80. Notification under Article 6ter of the Paris Convention(1) For the purposes of section 78, state emblems of a Convention
country, other than the national flag, and official signs orhallmarks, shall be regarded as protected under the Paris Convention
or the TRIPS Agreement only if, or to the extent that—(a) the country in question has notified Malaysia in accordance with
Article 6ter(3) of the Paris Convention, or under that Article asapplied by the TRIPS Agreement, that it desires to protect thatemblem, sign or hallmark;(b) the notification remains in force; and(c) Malaysia has not objected to it in accordance with Article
6ter(4) of the Paris Convention or under that Article as applied by
the TRIPS Agreement, or any such objection has been withdrawn.
(2) For the purposes of section 79, the armorial bearing, flag,
emblems, abbreviations and names of an international
intergovernmental organization shall be regarded as protected under
the Paris Convention or under that Article as applied by the TRIPS
Agreement only if, or to the extent that—(a) the organization in question has notified Malaysia in accordancewith Article 6ter(3) of the Paris Convention or under that Article
as applied by the TRIPS Agreement, that it desires to protect that
armorial bearing, flag, emblem, abbreviation or name;73PART XIII BORDER MEASURES
81. Interpretation
In this part(a) "authorized officer" means (i) a proper officer of customs as defined under the Customs Act
1967 [Act 235]; or(ii) any public officer, or any person in the employment of the
Corporation, appointed by the Minister to exercise the powers andperform the duties conferred and imposed on an authorized officer by
this Part;(b) "goods in transit” means goods imported, whether or not landedor transshipped within Malaysia, which are to be carried to anothercountry either by the same or another conveyance;(c) "import” means to bring or cause to be brought into Malaysia bywhatever means;(d) “retention period”, in relation to seized goods, means (i) the period specified in a notice given under section 85 inrespect of the goods; or(ii) if the period has been extended under section 85, that period
so extended;(e) "security” means any sum of money in cash or other monetary
instrument as determined by the Registrar; and(f) "seized goods” means goods seized under section 82.
82. Restriction on importation of infringing goods(1) Any person may file an application to the Registrar stating(a) that he is the registered proprietor, or the licensee having thepower to file such application;(b) that, at a time and place specified in the application, goods
which, in relation to the registered trademark, are infringing goods
are expected to be imported for the purpose of trade; and(c) that he objects to such importation.
(2) An application under subsection (1) shall be supported by the
documents and information as determined by the Registrar relating to
the goods as to enable them to be identified by the authorized
officer, and together with the payment of the prescribed fee.
(3) Upon receipt of the application under subsection (1), theRegistrar shall determine the application, and the Registrar shall74within a reasonable period inform the applicant whether theapplication has been approved.
(4) In determining the reasonable period under subsection (3), theRegistrar shall take into consideration all relevant circumstancesof the case.
(5) An approval under subsection (3) shall remain in force until theend of the period of sixty days commencing on the day on which theapproval was given, unless it is withdrawn before the end of that
period by the applicant by giving a notice in writing to theRegistrar.
(6) Where an approval has been given under this section and has notlapsed or been withdrawn, the importation of any infringing goods
into Malaysia for the duration of the period specified in theapproval shall be prohibited.
(7) Upon giving his approval under subsection (3) the Registrar
shall immediately take the necessary measures to notify theauthorized officer.
(8) Where an authorized officer has been notified by the Registrar
under subsection (7), the authorized officer shall take thenecessary action to prohibit any person from importing theinfringing goods identified in the notice, not being goods intransit, and shall seize and detain the identified goods.
83. Security
The Registrar shall, upon giving his approval under section 82,
require the applicant to deposit with the Registrar a security whichin the opinion of the Registrar is sufficient to(a) reimburse the Registrar for any liability or expense it islikely to incur as a result of the seizure of the infringing goods;(b) prevent abuse and to protect the importer; or(c) pay such compensation as may be ordered by the Court under thispart.
84. Secure storage of seized goods(1) Seized goods shall be taken to such secure place as theRegistrar may direct or as the authorized officer deems fit.
75

(2) If it is stored on the direction of the authorized officer, theauthorized officer shall inform the Registrar of the whereabouts ofthe seized goods.
85. Notice(1) As soon as is reasonably practicable after the infringing goods
are seized under section 82, the authorized officer shall give to
the Registrar, importer and the applicant, either personally or byregistered post, a written notice identifying the infringing goods,
stating that they have been seized and the whereabout of the goods.
(2) A notice under subsection (1) shall also state that the
infringing goods will be released to the importer unless an action
for infringement in respect of the goods is instituted by theapplicant within a specified period from the date of the notice.
(3) If at the time of the receipt of the notice an action for
infringement has been instituted by the applicant, the applicant
shall notify the Registrar of that fact in the form as determined by
the Registrar.
(4) The applicant may, by written notice given to the Registrar
before the end of the period specified in the notice (the initialperiod), request that the period be extended.
(5) Subject to subsection (6), the Registrar may extend the initialperiod upon a request made in accordance with subsection (4) where
the Registrar is satisfied that it is reasonable that the request be
granted.
(6) A decision on a request made in accordance with subsection (4)shall be made within two working days after the request is made, butsuch decision cannot be made after the end of the initial period towhich the request relates.
86. Inspection, release, etc., of seized goods(1) The Registrar may permit the applicant or importer to inspect
the seized goods if the applicant or importer agrees to give therequisite undertakings.

76

(2) The requisite undertakings under subsection (1) are undertakingsin writing that the person giving the undertakings shall(a) return the sample of the seized goods to the Registrar at a
specified time that is satisfactory to the Registrar; and(b) take reasonable care to prevent damage to the sample.
(3) If the applicant gives the requisite undertakings, the Registrar
may permit the applicant to remove a sample of the seized goods fromthe custody of the Registrar for inspection by the applicant.
(4) If the importer gives the requisite undertakings, the Registrar
may permit the importer to remove a sample of the seized goods fromthe custody of the Registrar for inspection by the importer.
(5) If the Registrar permits inspection of the seized goods, or theremoval of a sample of the seized goods, by the applicant inaccordance with this section, the Registrar shall not be liable tothe importer for any loss or damage suffered by the importer arisingout of (a) damage to any of the seized goods incurred during that
inspection; or(b) anything done by the applicant or any other person to, or in
relation to, a sample removed from the custody of the Registrar or
any use made by the applicant or any other person of such a sample.
87. Forfeiture of seized goods by consent(1) Subject to subsection (2), the importer may, by written noticeto the Registrar, consent to the seized goods being forfeited.
(2) The notice shall be given before any action for infringement inrelation to the seized goods is instituted.
(3) If the importer gives such a notice, the seized goods areforfeited and shall be disposed of in any manner as determined by
the Registrar.
88. Compulsory release of seized goods to importer(1) The Registrar shall release the seized goods to the importer on
the expiration of the retention period for the goods if theapplicant(a) has not instituted an action for infringement in relation to the77goods; and(b) has not given written notice to the Registrar stating that theaction for infringement has been instituted.
(2) If(a) an action for infringement has been instituted in relation to
the seized goods; and(b) at the end of a period of thirty days commencing on the day on
which the action for infringement was instituted, there shall not be
in force an order of the Court in which the action was instituted
preventing the release of the goods,
the Registrar shall release the goods to the importer.
(3) If the applicant gives a written notice to the Registrar statingthat he consents to the release of the seized goods, the Registrar
shall release the goods to the importer.
89. Compensation for failure to take action(1) Where goods have been seized pursuant to a notice given under
section 82 and the applicant does not take action for infringement
within the retention period, a person aggrieved by such seizure may
apply to the Court for an order of compensation against theapplicant.
(2) Where the Court is satisfied that the person aggrieved had
suffered loss or damage as a result of the seizure of the goods, theCourt may order the applicant to pay compensation in such amount as
the Court thinks fit to the aggrieved person.
90. Actions for infringement of registered trademark(1) If an action for infringement has been instituted by theapplicant, the Court may in addition to any relief that may be
granted(a) order that the seized goods be released to the importer subject
to such conditions, if any, as the Court thinks fit;(b) order that the seized goods be not released to the importer
before the end of a specified period; or(c) order that the seized goods be forfeited,
depending on the circumstances of the case.
(2) The Registrar or the authorized officer shall be entitled to be78

heard on the hearing of an action for infringement.
(3) The Court may not make an order under paragraph (1)(a) if it issatisfied that the Registrar or any authority is required or
permitted under any other law to retain control of the seized goods.
(4) The Registrar shall comply with an order made under subsection(1).
(5) The Court may order the applicant to pay compensation in suchamount as the Court thinks fit to the defendant if(a) the action is dismissed or discontinued, or if the Court decides
that the relevant registered trademark was not infringed by theimportation of the seized goods; and(b) the defendant to the action for infringement satisfies the Court
that he has suffered loss or damage as a result of the seizure of
the goods.
91. Disposal of seized goods ordered to be forfeited
If the Court orders that seized goods are to be forfeited, the goods
shall be disposed of in the manner as directed by the Court.
92. Insufficient security(1) If the reasonable expenses incurred by the Registrar in relation
to any action taken by the Registrar under this part, or taken inaccordance with an order of the Court under this part, exceed theamount of security deposited under section 83, the amount of theexcess shall be a debt due to the Registrar.
(2) The debt under subsection (1) shall be due by the applicant, or,if there are two or more applicants, by the applicants jointly andseverally.
93. Ex-officio action(1) Based on prima facie evidence, any authorized officer may detainor suspend the release of goods bearing, without authorization, a
trademark which is identical with the registered trademark and thegoods are identical with the goods of a registered trademark, which
are to be imported or destined for export.
(2) Where such goods have been detained, the authorized officer
79

(a) shall inform the Registrar, the importer and the registeredproprietor; and(b) may at any time seek from the registered proprietor any
information that may assist him to exercise his powers.
(3) Subject to section 88, an importer may lodge an appeal to the
Director General under the Customs Act 1967 against the detention of
goods or suspension of the release of goods under subsection (1).
(4) The authorized officer shall only be exempted from liability if
his actions under subsection (1) are done in good faith.
(5) Destined for export referred to in subsection (1) means goods
which are to be exported from Malaysia to another country throughany mode of transportation.
94. De Minimis Imports(1) The provisions in this part shall not apply to small quantitiesof goods of a non-commercial nature contained in travelers' personal
luggage or sent in small consignments.
(2) Small quantities referred to in subsection (1) means not morethan two goods.

80

PART XIV TRADEMARK AGENTS
95. Recognition of registered trademark agents and circumstances inwhich a registered trademark agent shall be required(1) Any act which is required or authorized by this Act to be doneby or to a person in connection with the preliminary procedure, orapplication for registration of trademark, or any procedure relating
to a registered trademark, may be done by or to a registeredtrademark agent duly authorized by that person in the manner as
determined by the Registrar.
(2) Where a person appearing before the Registrar in a preliminary
procedure or applying for registration of trademark or any procedure
relating to a registered trademark, does not reside or carry on
business principally in Malaysia, he shall appoint and authorize aregistered trademark agent to act for him.
(3) Upon being appointed and authorized by the person to act for him
under subsection (2), the registered trademark agent shall(a) continue to be the agent of the person; and(b) be answerable for all acts, matters and things that are required
to be done by the person under this Act,
unless he is terminated by the person or ceases to act for him in
accordance with the prescribed manner.
(4) Where a registered trademark agent acting for a person intends
to cease to act on behalf of the said person(a) the registered trademark agent shall file the notice of theintention to cease to act on the said person's behalf with theRegistrar in the manner as determined by the Registrar;(b) the registered trademark agent shall notify the person; and(c) upon complying with subparagraphs (a) and (b), the agent shallcease to be the agent for the said person.
96. Register of Trademark Agents(1) The Registrar shall keep and maintain a register called theRegister of Trademark Agents.
(2) The Register of Trademark Agents shall contain the names,
addresses and other prescribed matters of registered trademark
agents who shall act on behalf of any person for the purposes of81section 95.
97. Registration of trademark agent(1) The Registrar shall register a person as a registered trademark
agent if he satisfies the prescribed requirements and enters his
name in the Register of Trademark Agents.
(2) For the purposes of this part, the Registrar may(a) cancel the registration of trademark agent on the grounds as may
be prescribed;(b) allow voluntary cancellation of the registration of a trademark
agent upon the application made by the registered trademark agent;(c) allow a change of name or address of service of the registeredtrademark agent upon the application made by the registeredtrademark agent;(d) remove the registration of a trademark agent upon the death of
the registered trademark agent; and(e) refuse to recognize any person as a registered trademark agent
subject to any circumstances as prescribed.
(3) Any cancellation of the registration of a trademark agent shallresult in the removal of the name of the registered trademark agent
from the Register of Trademark Agents.
(4) The removal of the registered trademark agent from the Registerof Trademark Agents and all the applications for registration orregistrations of trademarks handled by the registered trademark
agent shall be published by the Registrar in the manner as
determined by the Registrar in the Intellectual Property Official
Journal.
(5) The Registrar shall register partnerships and bodies corporate
as trademark agents if they satisfy the prescribed requirements andupon registration, they shall be bound by the requirements specified
in subsections (2), (3) and (4).
98. Privileged communications with registered trademark agent(1) A communication made between a registered trademark agent andthe person appointing and authorizing the agent in matters relating
to trademarks, and any record or document made for the purposes ofsuch a communication, are privileged to the same extent as a82

communication between a solicitor and his client.
(2) A registered trademark agent has, in relation to documents andproperty of the person appointing and authorizing the agent in amatter relating to trademarks, the same right of lien that asolicitor has in relation to the documents and property of a client.

83

PART XV OFFENCE
99. Counterfeiting a trademark(1) Any person who counterfeits a registered trademark by(a) making a sign identical with or similar to a registeredtrademark with the intent to deceive; or(b) falsifying a genuine registered trademark, whether byalteration, addition, effacement, partial removal or otherwise,
without the consent of the registered proprietor of the trademark
commits an offence and shall, on conviction, be liable to a fine notexceeding one million ringgit or to imprisonment for a term notexceeding five years or to both.
(2) In a prosecution under this section, the burden of proving theconsent of the registered proprietor of the trademark shall be upon
the accused person.
100. Falsely applying a registered trademark to goods or services(1) For the purposes of this section and section 102, a person
falsely applies a registered trademark to goods or services when (a) he applies the trademark or a sign likely to be mistaken forthat trademark to the goods or services without the consent of theregistered proprietor; and(b) in the case of an application to goods, the goods are not thegenuine goods of the registered proprietor or licensee of the
trademark.
(2) For the purposes of subsection (1), a trademark shall be deemed
to be applied to goods or services if it is used in(a) any sign or advertisement; or(b) any invoice, catalogue, business letter, business paper, pricelist or other commercial document, including any such document inany medium,and the goods are delivered, or services provided to a person
pursuant to a request or order made by reference to the trademark as
so used.
(3) For the purposes of subsection (1)(a) a sign shall be deemed to be applied to goods if(i) it is applied to the goods themselves; or(ii) it is applied to any covering, label, reel or thing in or with84

which the goods are sold, offered or exposed for sale or had inpossession for a purpose of trade or manufacture; and(b) a sign shall be deemed to be applied to goods or services if it
is used in a manner that is likely to lead persons to believe thatit refers to, describes or designates the goods or services.
(4) Any person who falsely(a) applies a registered trademark to goods under subsection (1)commits an offence and shall, on conviction, be liable(i) if the person is a body corporate, to a fine not exceeding
fifteen thousand ringgit for each of the goods bearing the falsely
applied registered trademark, and for a second or subsequent
offence, to a fine not exceeding thirty thousand ringgit for each of
the goods bearing the falsely applied registered trademark; or(ii) if the person is not a body corporate, to a finenot exceeding ten thousand ringgit for each of the goods bearing thefalsely applied registered trademark or to imprisonment for a term
not exceeding three years or to both, and for a second or subsequent
offence, to a fine not exceeding twenty thousand ringgit for each of
the goods bearing the falsely applied registered trademark, or to
imprisonment for a term not exceeding five years or to both; or(b) applies a registered trademark to services under subsection (1)commits an offence and shall, on conviction, be liable(i) if the person is a body corporate, to a fine not exceeding one
hundred thousand ringgit; or(ii) if the person is not a body corporate, to a fine not exceeding
seventy thousand ringgit or to imprisonment for a term not exceeding
three years or to both.
(5) In subsection (3) (a) “covering” includes any stopper, glass, bottle, vessel, box,
capsule, case, frame or wrapper; and(b) “label” includes any band or ticket.
(6) In a prosecution under this section, the burden of proving theconsent of the registered proprietor of the trademark shall be uponon the accused person.
101．Making or possessing of article for committing offence
Any person who(a) makes an article specifically designed or adapted for making85

copies of a registered trademark or a sign likely to be mistaken forthat trademark; or(b) has in his possession, custody or control an article as inparagraph (a),knowing or having reason to believe that it has been, or is to be,used for, or in the course of, committing an offence against
sections 99 and 100, commits an offence and shall, on conviction, be
liable to a fine not exceeding one million ringgit or to
imprisonment for a term not exceeding five years or to both.
102. Importing or selling, etc., goods with falsely applied
trademark(1) Any person who,(a) imports into Malaysia for the purpose of trade or manufacture;(b) sells or offers or exposes for sale; or(c) has in his possession, custody or control for the purpose of
trade or manufacture,
any goods to which a registered trademark is falsely applied under
section 100, unless he proves that having taken all reasonableprecautions against committing an offence under this section, hehad, at the time of the commission of the alleged offence, no reason
to suspect the genuineness of the trademark and on demand made by
the Assistant Controller as defined in section 109, he gave all theinformation in his knowledge with respect to the persons from whom
he obtained the goods, commits an offence and shall, on conviction,
be liable(i) if the person is a body corporate, to a fine not exceeding
fifteen thousand ringgit for each of the goods with the falsely
applied registered trademark, and for a second or subsequent
offence, to a fine not exceeding thirty thousand ringgit for each of
the goods with the falsely applied registered trademark; or(ii) if the person is not a body corporate, to a fine not exceeding
ten thousand ringgit for each of the goods with the falsely applied
registered trademark or to imprisonment for a term not exceeding
three years or to both, and for a second or subsequent offence, to afine not exceeding twenty thousand ringgit for each of the goods
with the falsely applied registered trademark, or to imprisonment
for a term not exceeding five years or to both.
(2) For the purposes of paragraph (1)(c), a person having in his
possession three or more of the goods to which a registered86

trademark is falsely applied is deemed to have in possession the
goods for the purpose of trade or manufacture.
103. False entries to Trademarks Office or in Register
Any person who(a) makes or causes to be made a false entry to the Trademarks
Office or in the Register;(b) makes or causes to be made a false entry in any certified copy
deposited in the Trademarks Office;(c) makes or causes to be made any thing false purporting to be a
copy of an entry in the Register or to be filed with the Trademarks
Office; or(d) produces or tenders or causes to be produced or tendered inevidence anything referred to in paragraph (c),knowing or having reasons to believe that the entry or thing isfalse, commits an offence and shall, on conviction, be liable to afine not exceeding fifty thousand ringgit or to a term of
imprisonment not exceeding five years or to both.
104. Falsely representing trademark as registered(1) Any person who(a) falsely represents that a trademark is a registered trademark;or(b) makes a false representation as to the goods or services forwhich a trademark is registered,knowing or having reason to believe that the representation is false
commits an offence and shall, on conviction, be liable to a fine notexceeding ten thousand ringgit.
(2) For the purposes of this section, the use in the course of tradein Malaysia in relation to a trademark of the word "registered" or
any other word or symbol importing a reference expressly or
impliedly to registration, shall be deemed to be a representation as
to registration under this Act unless it is shown that the reference
is to registration elsewhere than in Malaysia and that the trademark
is in fact so registered for the goods or services in question.
105. Offence relating to disobedience to summons or refusal to give
evidence(1) The Registrar may, for the purposes of this Act,(a) summon witnesses;
87

(b) receive evidence on oath; and(c) require the production of a document or article.
(2) Any person who disobeys the summons or request under subsection(1) without any lawful excuse commits an offence and shall, on
conviction, be liable to a fine not exceeding two thousand ringgit
or to imprisonment for a term not exceeding three months or to both.
106. Falsely representing trademark as a protected international
registration designating Malaysia(1) A person who(a) falsely represents a trademark as a protected international
registration designating Malaysia; or(b) makes a false representation as to the goods or services forwhich a protected international registration designating Malaysia
confers protection in Malaysia,
knowing or having reason to believe that the representation is false
commits an offence and shall, on conviction, be liable to a fine notexceeding ten thousand ringgit.
107. Misuse of title “Trademarks Office”
Any person who uses on his place of business or any document issued
by him or otherwise, the words “Trademarks Office” or any otherwords suggesting that his place of business is, or is officiallyconnected with, the Trademarks Office commits an offence and shall,on conviction, be liable to a fine not exceeding fifty thousand
ringgit or to imprisonment for a term not exceeding two years or toboth.
108. Unregistered persons practising, etc., as a registeredtrademark agent
Any person who carries on business, practices, acts, describes
himself, holds himself out, or permits himself to be described orheld out, as a trademark agent without being registered under thisAct commits an offence and shall, on conviction, be liable to a finenot exceeding fifty thousand ringgit or two years imprisonment or
both.

88

PART XVI INVESTIGATION AND ENFORCEMENT
Chapter 1 Investigation and complaints
109. Interpretation
For the purposes of this part(a) “Controller”, “Deputy Controller” or “Assistant Controller" mean
the Controller, Deputy Controller or Assistant Controller, of theTrade Descriptions appointed under section 3 of the Trade
Descriptions Act 2011 [Act 730]; and(b) "premises" means any place, stationary or otherwise establishedor set up by any person, whether such place is with or without
enclosure, and includes vehicles, aircrafts, ships and any othervessel.
110. Power of Controller, Deputy Controllers or AssistantControllers(1) The Controller shall perform the duties imposed and exercise thepowers conferred on him under this part subject to the general
direction and control of the Minister.
(2) The Deputy Controllers and Assistant Controllers shall be under
the direction and control of the Controller.
(3) The Deputy Controllers may perform all the duties imposed andexercise all the powers conferred on the Controller.
(4) The Controller and Deputy Controllers may perform all the duties
imposed and exercise all the powers conferred on the AssistantControllers.
(5) The Controller or the Deputy Controller may in writing delegate
all or any of his powers, duties or functions under this Part to any
Assistant Controller.
111. Power of investigation(1) Where the Assistant Controller has reasonable grounds to suspectthat any offence is or will be committed under this Act, theAssistant Controller may conduct such investigation as the AssistantController thinks expedient for the due administration of this Act.

89

(2) Any Assistant Controller investigating any commission of an
offence under this Act may exercise all or any of the powers in
relation to police investigation in seizable cases given by the
Criminal Procedure Code [Act 593].
112. Complaints to the Assistant Controller(1) The Assistant Controller may, upon a complaint by a person,
conduct an investigation on any person who has committed or iscommitting any offence under this Act.
(2) The complaint made under subsection (1) shall specify the person
against whom the complaint is made or the premises where the alleged
offence is committed and details of the alleged offence under thisAct.
(3) If the complaint made under subsection (1) is in relation to a
trademark which is not identical with the registered trademark, any
registered proprietor or licensee shall obtain the Registrar's
verification in the form as determined by the Registrar together
with the payment of the prescribed fee to be submitted to theAssistant Controller.
(4) The Registrar's verification under subsection (3), shall be
prima facie evidence in any proceedings before any court of law.

90

Chapter 2 Information gathering powers
113. Power of the Assistant Controller to require provision of
information(1) This section applies if the Assistant Controller in carrying out
an investigation under this part has reason to believe that any
person(a) has any information or any document that is relevant to theperformance of the Assistant Controller's powers and functions under
this Act; or(b) is capable of giving any evidence which the Assistant Controller
has reason to believe is relevant to the performance of theAssistant Controller's powers and functions under this Act.
(2) Notwithstanding any provision of any other written law, theAssistant Controller, by written notice, may direct any person(a) to provide the Assistant Controller, within the period and in
the manner and form specified in the notice, any information or
document referred to in subsection (1);(b) to produce to the Assistant Controller, within the period and in
the manner specified in the notice, any information or document
referred to in subsection (1), whether in physical or electronicform;(c) to make copies of, or extracts from, any document referred to in
subsection (1) and to produce copies or extracts of such documents
to the Assistant Controller within the period and in the manner
specified in the notice;(d) if the person is an individual, to appear before the AssistantController at a time and place specified in the notice to give any
information, either orally or in writing, and produce any document
referred to in subsection (1), whether in physical or electronicform,(e) if the person is a body corporate or a public body, to cause a
relevant and competent officer of the body to appear before theAssistant Controller at a time and place specified in the notice togive any information, either orally or in writing, and produce any
document referred to in subsection (1), whether in physical orelectronic form;(f) if the person is a partnership, to cause an individual who is apartner in the partnership or an employee of the partnership toappear before the Assistant Controller at a time and place specified91

in the notice to give any information, either orally or in writing,and produce any document referred to in subsection (1), whether inphysical or electronic form; or(g) to make a statement to the Assistant Controller providing an
explanation on any information or document referred to in subsection(1) within the period and in the manner and form specified in thenotice.
(3) Where the Assistant Controller directs any person to produce any
document under subsection (2) and the document is not in the custodyof that person, that person shall(a) state, to the best of his knowledge and belief, where thedocument may be found; and(b) identify, to the best of his knowledge and belief, the lastperson who had custody of the document and to state, to the best of
his knowledge and belief, where that last mentioned person may befound.
(4) Any person directed to provide information under subsection (2)or (3) shall ensure that the information provided is true, accurate
and complete and such person shall provide an express representation
to that effect, including a declaration that he is not aware of any
other information which would make the information provided untrue
or misleading.
(5) Any person who refuses or does not comply with the direction
made by the Assistant Controller under this section commits anoffence and shall, on conviction, be liable to a fine not exceeding
fifty thousand ringgit.
114. Assistant Controller may retain documents(1) The Assistant Controller may take and retain for such duration
as he deems necessary, any document obtained under this Part.
(2) The person who provided the document is entitled to be supplied,
as soon as practicable, with a copy certified by the AssistantController to be a true copy of the document.
(3) Notwithstanding the provisions of any other written law, thecertified copy of the document shall be admissible as evidence as if
it were the original document.
92

(4) If the Assistant Controller is satisfied that it is no longer
necessary to retain the document, the Assistant Controller may
return the document to the person who provided the document, as soon
as practicable.
115. Confidentiality(1) Any person who discloses or makes use of any confidential
information or document with respect to a particular enterprise or
the affairs of an individual obtained by virtue of any provision ofthis Act commits an offence and shall, on conviction, be liable to afine not exceeding five hundred thousand ringgit.
(2) Nothing in subsection (1) shall operate to prevent thedisclosure of information where (a) the disclosure is made with the consent of the person from whom
the information or document was obtained;(b) the disclosure is made in circumstances where the information
provided is framed in such a manner that the source of theinformation could not be ascertained;(c) the information is already in the public domain;(d) the disclosure is made to facilitate the performance of thefunctions or powers of the Controller, Deputy Controller orAssistant Controller;(e) the disclosure is reasonably made during any proceedings under
this Act provided that such disclosure is not made against any
direction by the Controller, Deputy Controller or AssistantController before whom those proceedings are taking place; or(f) the disclosure is made in connection with the investigation of
an offence under this Act.
(3) For the purposes of this section, "confidential information"means trade, business or industrial information that belongs to any
person, that has economic value and is not generally available to or
known by others or any information which is regarded as confidential
under this Act.
116. Privileged communication(1) No person shall be required, under any provision of this Part,
to produce or disclose any communication between a professional
legal adviser and his client which would be protected from93

disclosure in accordance with section 126 of the Evidence Act 1950.
(2) The Controller may require an advocate and solicitor to provide
any document under section 114.
(3) Where the document required under subsection (2) contains
privileged communication, made by or on behalf of or to the advocateand solicitor in his capacity as an advocate and solicitor(a) the advocate and solicitor shall be entitled to refuse to comply
with the requirement; or(b) the person to whom or by or on behalf of whom the privileged
communication was made or, if the person is a body corporate that isunder receivership or is in the course of being wound up, thereceiver or the liquidator, as the case may be, may agree that the
advocate and solicitor shall comply with the requirement.
(4) Notwithstanding paragraph (3)(b) where the advocate andsolicitor refuses to comply with the requirement, the advocate andsolicitor shall forthwith furnish in writing to the Controller thename and address of the person to whom or by or on behalf of whom
the privileged communication was made.
117. Giving false or misleading information, evidence or document
A person who does not disclose or omits to give any relevant
information, evidence or document, or provides any information,evidence or document that he knows or has reason to believe is false
or misleading, in the course of investigation by the AssistantController, commits an offence and shall, on conviction, be liable
to a fine not exceeding one hundred thousand ringgit.
118. Destruction, concealment, mutilation and alteration of records
A person who(a) destroys, conceals, mutilates or alters; or(b) sends or attempts to send or conspires with any other person toremove from his premises or send out of Malaysia,
any goods, documents, material, articles or things kept ormaintained with intent to defraud the Assistant Controller or toprevent, delay or obstruct the carrying out of an investigation or
the exercise of any power by the Assistant Controller under this Act
commits an offence and shall, on conviction, be liable to a fine notexceeding one hundred thousand ringgit.
94

Chapter 3 Powers of arrest, search, seizure etc.
119. Power of arrest(1) Any Assistant Controller may arrest without warrant any person
whom he reasonably believes has committed or is attempting to commit
an offence under sections 99 to 102 of this Act.
(2) Any Assistant Controller making an arrest under subsection (1)shall, without unnecessary delay, bring the person arrested to thenearest police station, and thereafter the person shall be dealt
with in accordance with the law relating to criminal procedure forthe time being in force.
120. Power to enter premises, inspect and seize goods, etc.
(1) Any Assistant Controller may, at all reasonable hours, exercise
the following powers:(a) he may, for the purpose of ascertaining whether any offence
under this Act has been committed, inspect any goods, documents,
material, articles or things and enter any premises other thanpremises used only for dwelling;(b) if he has reasonable cause to believe that an offence under thisAct has been committed, he may seize and detain any goods,
documents, material, articles or things for the purpose ofascertaining, by testing or otherwise, whether the offence has beencommitted;(c) he may seize and detain any goods, documents, material, articles
or things which he has reason to believe may be required as evidence
in any proceedings for an offence under this Act; and(d) he may, for the purpose of exercising his powers under thissubsection, seize goods, documents, material, articles or things,
but only if and to the extent that it is reasonably necessary inorder to secure that the provisions of this Act and of any ordermade under this Act are duly observed, require any person having
authority to do so to break open any container or open any vending
machine and, if that person does not comply with the requirement, hemay do so himself.
(2) An Assistant Controller seizing any goods, documents, material,
articles or things in the exercise of his powers under this section
shall inform the person from whom they are seized and, in the case95

of goods seized from a vending machine, the person whose name andaddress are stated on the machine as being the proprietor or, if noname and address are so stated, the occupier of the premises on
which the machine stands or to which it is affixed.
(3) Where the goods, documents, material, articles or things seizedby the Assistant Controller in the exercise of his powers under thissection are by reason of their nature, size or amount not practicalto be removed from where they are found, he may by any means sealsuch goods, documents, material, articles or things in the premises
or container in which they are found and it shall be an offence forany person without lawful authority to break, tamper with or damage
such seal or to remove such goods, documents, material, articles orthings or to attempt to do so.
121. Magistrate may issue search warrant(1) Whenever it appears to a Magistrate, upon written information onoath and after such inquiry as he considers necessary, that there
are reasonable grounds to believe that any person has committed oris committing an offence under this Act, so that any evidence orthing which is necessary to the conduct of an investigation into any
offence may be found in any premises, the Magistrate may issue awarrant authorizing any Assistant Controller named in the warrant toenter the premises at any time, with or without assistance, and if
need be by force to search for and seize any such evidence or thing.
(2) An Assistant Controller entering any premises under this section
may take with him such other persons and such equipment as may
appear to him necessary and on leaving any premises which he hasentered by virtue of a warrant under the preceding subsection heshall, if the premises are unoccupied or the occupier is temporarily
absent, leave them as effectively secured against trespassers as hefound them.
(3) Without affecting the generality of subsection (1), the warrant
issued by the Magistrate may authorize the search and seizure of any
goods, documents, material, articles or things which contains or isreasonably suspected to contain information as to any offence
suspected to have been committed or is otherwise necessary to
conduct an investigation into any offence.

96(4) The Assistant Controller conducting a search under subsection(1) may, for the purpose of investigating into the offence, search
any person who is in or on the premises.
(5) The Assistant Controller making a search of a person undersubsection (4) may seize, or take possession of, and place in safe
custody all things other than the necessary clothing found upon the
person, and any other things, in respect of which there is reason tobelieve are the instruments or evidence of the offence, and suchthings may be detained until the order by the court for its
disposal.
(6) If, by reason of its nature, size or amount, it is notpracticable to remove any goods, documents, material, articles orthings seized under this section, the Assistant Controller who
effected the seizure shall by any means seal the premises orcontainer in which such goods, documents, material, articles orthings is found.
(7) A person who, without lawful authority, breaks, tampers with ordamages the seal referred to in subsection (6) or removes any goods,
documents, material, articles or things under seal or attempts to doso commits an offence and shall, on conviction, be liable to a finenot exceeding one hundred thousand ringgit.
122. Search may be made without warrant
If the Assistant Controller is satisfied upon information received
that he has reasonable cause to believe that by reason of delay inobtaining a search warrant under section 121 the investigation would
be adversely affected or evidence of the commission of an
infringement or offence is likely to be tampered with, removed,
damaged or destroyed, the Assistant Controller may enter thepremises and exercise in, upon and in respect of the premises all
the powers referred to in section 121 in as full and ample a manner
as if he were authorized to do so by a warrant issued under that
section.
123. Access to recorded information or computerized data, etc.
(1) Any Assistant Controller exercising his powers under sections
120, 121 and 122 shall be given access to any recorded informationor computerized or digitalized data, whether stored in a computer or97otherwise.
(2) In addition, the Assistant Controller exercising his powers
under sections 120, 121 and 122(a) may inspect the operation of any computer and any associatedapparatus or material which he has reasonable cause to suspect is or
has been used in connection with that information or data; and(b) may require(i) the person, by whom or on whose behalf, the Assistant Controller
has reasonable cause to suspect the computer is or has been so usedin connection with the information or data; or(ii) the person having charge of, or is otherwise concerned with,the operation of the computer, apparatus or material in connection
with the information or data,
to provide him with such reasonable assistance as he may require forthe purposes of this section.
(3) The Assistant Controller may make copies or take extracts of therecorded information or computerized or digitalized data if he deems
necessary.
(4) For the purposes of this section, "access" includes being
provided with the necessary password, encryption code, decryption
code, software or hardware and any other means required to enable
comprehension of recorded information and computerized ordigitalized data.
124. Tipping-off(1) Any person who(a) knows or has reason to suspect that an Assistant Controller isacting, or is proposing to act, in connection with an investigation
which is being, or is about to be, conducted under or for the
purposes of this Act and discloses to any other person informationor any other matter which is likely to prejudice that investigationor proposed investigation; or(b) knows or has reason to suspect that a disclosure has been madeto an Assistant Controller and discloses to any other person
information or any other matter which is likely to prejudice any
investigation which might be conducted following the disclosure,commits an offence and shall, on conviction, be liable to a fine notexceeding one hundred thousand ringgit.
98

(2) Nothing in subsection (1) makes it an offence for an advocateand solicitor or his employee to disclose any information or othermatter(a) to his client or the client's representative in connection withthe giving of advice to the client in the course and for the purposeof the professional employment of the advocate and solicitor; or(b) to any person in contemplation of, or in connection with and forthe purpose of, any legal proceedings.
(3) Subsection (2) does not apply in relation to any information orother matter which is disclosed with a view to furthering any
illegal purpose.
(4) In any proceedings against a person for an offence under thissection, it shall be a defence to prove that (a) he did not know or suspect that the disclosure made underparagraph (1)(b) was likely to prejudice the investigation; or(b) he had lawful authority or reasonable excuse for making thedisclosure.
(5) An Assistant Controller or any other person does not commit anoffence under this section in respect of anything done by him in thecourse of acting in connection with the enforcement, or intended
enforcement, of this Act.
125. Warrant admissible notwithstanding defects
A search warrant issued under this Act shall be valid andenforceable notwithstanding any defect, mistake or omission in thewarrant or in the application for such warrant and any goods,
documents, material, articles or things seized under such warrant
shall be admissible in evidence in any proceedings under this Act.
126. List of seized goods, etc.
(1) Except as provided in subsection (2), where any goods,
documents, material, articles or things is seized under this part,the Assistant Controller who effected the seizure shall as soon aspracticable prepare a list of the things seized and immediately
deliver a copy of the list signed by him to the occupier of thepremises which has been searched, or to his agent or servant, at thepremises.
99

(2) Where the premises are unoccupied, the Assistant Controller who
effected the seizure shall wherever possible post a list of thethings seized conspicuously on the premises.
127. Forfeiture of seized goods, etc.
(1) All goods, documents, material, articles or things seized in
exercise of any power conferred under this Act shall be liable toforfeiture.
(2) An order for the forfeiture or for the release of any goods,
documents, material, articles or things seized in exercise of any
power conferred under this Act shall be made by the court before
which the prosecution with regard thereto has been held and an orderfor the forfeiture of the goods, documents, material, articles orthings shall be made if it is proved to the satisfaction of thecourt that an offence under this Act has been committed and that the
goods, documents, material, articles or things were the subject
matter of or were used in the commission of the offence
notwithstanding that no person may have been convicted of suchoffence.
(3) If there is no prosecution with regard to any goods, documents,
material, articles or things seized in exercise of any power
conferred under this Act, such goods, documents, material, articles
or things shall be taken and deemed forfeited at the expiration of
one calendar month from the date of seizure unless a claim to such
goods, documents, material, articles or things is made before thedate in the manner hereinafter set forth.
(4) Any person asserting that he is the owner of such goods,
documents, material, articles or things and that they are not liable
to forfeiture may personally or by his agent authorized in writing
give written notice to an Assistant Controller that he claims thesame.
(5) On receipt of such notice the Assistant Controller shall refer
the claim to the Controller who may direct that such goods,
documents, material, articles or things be released or forfeited or
may direct the Assistant Controller to refer the matter to a courtfor decision.
100(6) The court to which the matter is referred shall issue a summons
requiring the person asserting that he is the owner of the goods,
documents, material, articles or things and the person from whomthey were seized to appear before it and upon his appearance ordefault to appear, due service of the summons being proved, thecourt shall proceed to the examination of the matter and on proof
that an offence under this Act has been committed and that such
goods, documents, material, articles or things were the subject
matter or were used in the commission of such offence shall orderthe same to be forfeited or may in the absence of such proof ordertheir release.
(7) All goods, documents, material, articles or things forfeited ordeemed forfeited shall be delivered to the Assistant Controller andshall be disposed of in accordance with the directions of theController.
128. Release of seized goods, etc.
(1) If any goods, documents, material, articles or things has been
seized under this Act, the Assistant Controller who effected theseizure may release the goods, documents, material, articles orthings to the person as he determines to be lawfully entitled to it,
if he is satisfied that the goods, documents, material, articles orthings is not otherwise required for the purpose of any proceedings
under this Act, or for the purpose of any prosecution under any
other written law, and in such event neither the AssistantController effecting the seizure, nor the Federal Government, theController or any person acting on behalf of the Federal Governmentor the Controller shall not be liable to any proceedings by any
person if the seizure and the release of the goods, documents,
material, articles or things had been effected in good faith.
(2) A record in writing shall be made by the Assistant Controller
effecting the release of anything under subsection (1) specifying indetail the circumstances of, and the reason for, the release, and heshall send a copy of such record to the Public Prosecutor withinseven days of the release.
129. Seizure of perishable goods
Where any goods seized in exercise of the powers conferred by this101

Act are of a perishable nature or where the custody of such goods
involves unreasonable expense and inconvenience, such goods may besold by the Assistant Controller at any time and the proceeds of thesale held to abide by the result of any prosecution or claim under
this section.
130. No cost or damages arising from seizure to be recoverable
No person shall, in any proceedings before any court in respect ofany goods, documents, material, articles or things seized in theexercise or the purported exercise of any power conferred under thisAct, be entitled to the costs of such proceedings or to any damages
or other relief unless such seizure was made without reasonablecause.
131. Obstruction
Any person who(a) refuses to give any Assistant Controller access to any premises
which the Assistant Controller is entitled to have under this Act orin the execution of any duty imposed or power conferred by this Act;or(b) assaults, obstructs, hinders or delays any Assistant Controller
in effecting any entry which the Assistant Controller is entitled toeffect under this Act or in the execution of any duty imposed or
power conferred by this Act,
commits an offence and shall, on conviction, be liable to a fine notexceeding one hundred thousand ringgit.
132. Evidence of agent provocateur is admissible(1) Notwithstanding any rule of law or the provisions of this Act or
any other written law to the contrary, no agent provocateur shall be
presumed to be unworthy of credit by reason only of his having
attempted to abet or abetted the commission of an offence by any
person under this Act if the attempt to abet or abetment was for thesole purpose of securing evidence against such person.
(2) Notwithstanding any rule of law or the provisions of this Act or
any other written law to the contrary, any statement, whether oral
or in writing made to the agent provocateur by any person who
subsequently is charged with an offence under this Act shall be
admissible as evidence at his trial.

102133. Taking of samples(1) Where any goods, documents, material, articles or things which
are the subject matter of an offence under this Act are found in two
or more packages or receptacles of the same description, it shall be
presumed until the contrary is proved that all the packages or
receptacles contain goods, documents, material, articles or thingsof the same nature, quantity and quality.
(2) Where packages or receptacles containing goods, documents,
material, articles or things which contravene the provisions of thisAct or are otherwise liable to seizure have been seized, it shall be
sufficient only to open and examine one per centum or not less than
five samples, whichever is the lesser, of the contents of eachpackage or receptacle seized(3) The court shall presume that the remaining samples contained in
the package or receptacle is of the same nature as those samples
examined.
134. Jurisdiction to try offences
Notwithstanding anything to the contrary in any written law, aSessions Court shall have jurisdiction to try any offence under thisAct and to impose the full punishment for any such offence.
135. Institution of prosecution
No prosecution for an offence under this Act shall be instituted
except by or with the written consent of the Public Prosecutor.
136. Compounding of offences(1) The Minister may, with the approval of the Public Prosecutor,
make regulations prescribing(a) any offence under this Act and any regulations made under thisAct that may be compounded;(b) the criteria for compounding such offence; and(c) the method and procedure for compounding such offence.
(2) The Controller may, with the consent in writing of the Public
Prosecutor, at any time before a charge is being instituted,
compound any offence prescribed as an offence which may becompounded by making a written offer to the person reasonably
suspected of having committed the offence to compound the offence
103upon payment to the Controller of a sum of money not exceeding fifty
per centum of the amount of the maximum fine to which the person
would have been liable to if he had been convicted of the offence,
within such time as may be specified in the written offer.
(3) An offer under subsection (2) may be made at any time after theoffence has been committed but before any prosecution for it has
been instituted, and where the amount specified in the offer is not
paid within the time specified in the offer, or such extended timeas the Controller may grant, prosecution for the offence may beinstituted at any time after that against the person to whom theoffer was made.
(4) Where an offence has been compounded under subsection (2), no
prosecution shall be instituted in respect of the offence against
the person to whom the offer to compound was made, and theController may forfeit or return any goods, documents, material,
articles or things seized in connection with the offence, subject tosuch terms as the Controller thinks fit.
(5) All sums of money received by the Controller under this section
shall be paid into and form part of the Federal Consolidated Fund.
137. Principal liable for acts of servant or agent
Where the servant or agent of a person commits an offence or does
anything or omits to do anything which if done or omitted to be doneby that person would constitute an offence under this Act, that
person shall, notwithstanding that he has no knowledge of theoffence, be deemed to be guilty of the offence and shall be liable
to punishment for the offence unless he proves that,(a) the act or omission complained of was not within the ordinary
scope of the employment of the servant or of the agency of theagent; or(b) the act or omission complained of was done or omitted to be done
without his consent or connivance and that he exercised all suchdiligence to prevent the commission or omission as he ought to haveexercised having regard to all the circumstances of the case.
138. Offences committed by body corporate(1) If a body corporate commits an offence under this Act, any
person who at the time of the commission of the offence was a104

director, chief executive officer, chief operating officer, manager,secretary or other similar officer of the body corporate or was
purporting to act in any such capacity or was in any manner or toany extent responsible for the management of any of the affairs of
the body corporate or was assisting in such management(a) may be charged severally or jointly in the same proceedings withthe body corporate; and(b) if the body corporate is found guilty of the offence, shall bedeemed to be guilty of that offence unless, having regard to thenature of his functions in that capacity and to all circumstances,
he proves (i) that the offence was committed without his knowledge, consent or
connivance; and(ii) that he had taken all reasonable precautions and exercised due
diligence to prevent the commission of the offence.
(2) If any person would be liable under this Act to any punishment
or penalty for his act, omission, neglect or default, he shall be
liable to the same punishment or penalty for every such act,omission, neglect or default of any employee or agent of his, or of
the employee of the agent, if the act, omission, neglect or default
was committed(a) by that person's employee in the course of his employment;(b) by the agent when acting on behalf of that person; or(c) by the employee of the agent in the course of his employment by
the agent or otherwise on behalf of the agent acting on behalf ofthat person.
139. Protection of Controller, Deputy Controller, AssistantController or other persons
No action, suit, prosecution or other proceedings shall be brought,
instituted or maintained in any court against(a) the Controller, Deputy Controller, Assistant Controller or any
other person in respect of any act ordered or done for the purposeof carrying into effect this Act; and(b) any other person in respect of any act done or purported to bedone by him under the order, direction or instruction of theController if the act was done in good faith and in a reasonable
belief that it was necessary for the purpose intended to be servedby it.

105

PART XVII LEGAL PROCEEDINGS IN COURT, COST AND EVIDENCE
140. Service of applications to Court on the Registrar(1) A copy of every application to the Court, including appeals to
the Court of Appeal or Federal Court, relating to the application
for registration or registered trademark shall be filedwith the Registrar by the parties to the application to the Court in
the manner as determined by the Registrar within the prescribedperiod, without having to name the Registrar as a party.
(2) Upon receipt of the application under subsection (1), theRegistrar may change the status of the application or registrationof trademark as the Registrar deems fit, subject to further
condition, direction, instruction, order or judgment of the Court.
(3) Any order or judgment made by the Court upon the completion of
the application filed under subsection (1) shall be filed with theRegistrar in the manner as determined by the Registrar.
(4) The Registrar, under subsection (3), shall comply and giveeffect to the Court's order or judgment.
(5) If the Registrar considers that publicity should be given upongiving effect to the Court's order, he may publish it in theIntellectual Property Official Journal.
141. Registrar's appearance in proceedings involving the Register(1) In any legal proceedings before the Court which includes anapplication for(a) the revocation of the registration of trademark;(b) the declaration of the invalidity of the registration of a
trademark; or(c) the correction in the Register,
the Registrar shall have the right to appear and be heard, and shallappear if so directed by the Court.
(2) Unless otherwise directed by the Court, the Registrar, in lieu
of appearing and being heard, may submit to the Court a statement inwriting and signed by him, giving particulars of the proceedings
before him in relation to the matter in issue or of the grounds ofany decision given by him affecting the same or of the practice of106the office in like cases, or of such other matters relevant to theissues, and within his knowledge as Registrar, as he thinks fit, andsuch statement shall be deemed to form part of the evidence in theproceedings.
142. Costs of proceedings before the Court
In all proceedings before the Court, the Court may, in its
discretion, award any party including the Registrar such costs as it
may consider reasonable but the Registrar shall not be ordered to
pay the costs of any of the other parties.
143. Certificate of validity
In any legal proceedings in which the validity of a registeredtrademark comes into question and is decided in favour of theregistered proprietor, the Court may certify to that effect, and if
it so certifies then in any subsequent legal proceedings in which
the validity of the registration comes into question the registeredproprietor on obtaining a final order or judgment in his favour
shall have his full costs, charges and expenses as between solicitor
and client, unless in the subsequent proceedings the Court certifies
that he ought not to have them.
144. Evidentiary value of copies certified by Registrar
A copy or extract from any form or document filed at the Trademark
Office of which the Registrar certified to be a true copy or extract
signed and sealed by the Registrar shall be admissible in evidence
in any proceedings as of equal validity with the original document.
145. Sealed copies of document to be evidence(1) Printed or written copies or extracts of or from the Register
purporting to be certified by the Registrar and sealed with his seal
shall be admissible as evidence in any proceedings before any court
without further proof or production of the originals.
(2) A notification or certificate of registration shall be
admissible as evidence in any proceedings before any court of law
without further proof or production of the originals.
(3) A certificate purporting to be under the hand of the Registrar
as to any act which he is authorized to perform and which he has or
has not performed shall be prima facie evidence in any proceedings107before any court of law of his having or not having performed theact.
(4) No person in the employment of the Corporation shall be required
to attend the court for the purposes of producing(a) any documents relating to a trademark application or registeredtrademark which may be obtained under the provisions of this Act; or(b) any documents which are prescribed as confidential, not open for
public inspection or to be made available to any third parties inaccordance with this Act.
146. Electronic information, etc., certified by the Registrar
admissible in evidence
Any form, information or document, a copy or extract from any form,
information or document electronically filed with the Registrar or
issued by the Registrar, shall be a true extract from any form,
information or documents filed with or submitted to the Registrar as
required under this Act shall be prima facie evidence of mattersspecified in that form, information, document, copy or extract.
147. Minister may declare documents of foreign state pertaining
to trademarks to be admissible as evidence(1) The Minister may, by order published in the Gazette, declare any
documents or class of documents of a foreign state to be admissible
as evidence in any proceedings before a Court if(a) the document is sealed with the seal of the authorized officer
or the government of the foreign state and the seal pertains to thetrademarks registered in or otherwise recognized by the foreigncountry or if there is no such seal, there is enclosed a certificate
signed by the authorized officer to the effect that the document
shall be evidence of the matter contained therein; and(b) the foreign state or part thereof has entered into reciprocalarrangements with the Government of Malaysia in respect of theadmissibility of the documents.
(2) For the purposes of this section(a) "authorized officer” means a person or authority authorized by
the government of the foreign state to keep and maintain a registeror other record of trademarks under any written law in force in theforeign state relating to trademarks;(b) "document" means 108

(i) a printed or written copy of extract or other record of
trademarks kept and maintained in the foreign state under any
written law in force in the foreign state relating to trademarks; or(ii) any other document pertaining to any matter or act in relation
to trademarks registered in or otherwise recognized by the foreignstate as trademarks; and(c) "trademark” means any sign which includes the following or any
combination of the following, namely, any letter, word, name,signature, numeral, device, brand, heading, label, ticket, shape of
goods or their packaging, colour (whether single colour or a
combination of colours), sound, scent, hologram, positioning,sequence of motion which is used or intend to be used in relation to
goods or services for the purpose of indicating or so as to indicate
a connection in the course of trade between the goods or services
and a person having the right either as proprietor or licencee to
use the trademark (in the foreign state) whether with or without any
indication of the identity of that person and which is registered orotherwise recognized by the foreign state as a trademark (under any
written law in force in the foreign state relating to trademarks)
but does not include the trademarks of another foreign stateregistered in or otherwise recognized by the foreign state by virtueof a reciprocal arrangement between the foreign state and that otherforeign state.
(3) For the avoidance of doubt, this section shall not be construed
to confer recognition of the trademarks of any foreign state for the
purpose of registration under this Act but shall be construed onlywith references to the admissibility of evidence in any proceedings
before a Court of the documents of the foreign state.

109

Part XVIII MISCELLANEOUS AND GENERAL
148. Intellectual Property Official Journal(1) The Registrar shall publish an Intellectual Property Official
Journal which shall contain(a) all matters relating to trademarks which are required to be
published under this Act; and(b) such other information or matters relating to trademarks as theRegistrar deems necessary.
(2) The Intellectual Property Official Journal shall be madeavailable to the public on the payment of the prescribed fee.
(3) Publication in the Intellectual Property Official Journal shallconstitute sufficient notice of any matter required to be publishedunder this Act.
(4) A copy of the Intellectual Property Official Journal shall on
its production be admitted in legal proceedings as evidence without
further proof being given that the copy was so published.
(5) A copy of the Intellectual Property Official Journal shall be
prima facie evidence of the facts stated therein.
(6) Where the Intellectual Property Official Journal is published in
more than one form, the date of publication of the Intellectual
Property Official Journal shall be deemed to be the date theIntellectual Property Official Journal is first published in any
form.
149. Electronic filing(1) The Registrar may provide a service for the electronic filing of
documents required by this Act to be filed with the Registrar.
(2) A document electronically filed under this section shall bedeemed to have satisfied the requirement for filing if the document
is communicated or transmitted to the Registrar in such manner as
determined by the Registrar.
(3) A document that is required to be stamped, signed or sealed
shall, if the document is to be electronically filed, be certified110to be true copy or authenticated in such manner as determined by theRegistrar.
(4) Where a document that is required to be signed and attested
under this Act is to be filed electronically, the requirement forattestation of the signature does not apply.
(5) If a document is electronically filed with the Registrar, theRegistrar shall not be liable for any loss or damage suffered by any
person by reason of any error or omission of whatever nature or
however arising appearing in any document obtained by any person
under the service referred to in subsection (1), if such error oromission occurred or arose as a result of any defect or breakdown inthe service or in the equipment used for the provision of theservice or without the knowledge of the Registrar.
150. Issuing document electronically
The Registrar may, by electronic means, issue a document which is tobe issued by the Registrar under this Act.
151. Address for service(1) For the purposes of this Act, an address for service in Malaysiaof an applicant, any person who opposes the registration of a
trademark or any other person who is involved in any proceedings
before the Registrar, who is residing or carrying on businessprincipally in Malaysia shall be furnished with the Registrar in themanner as determined by the Registrar.
(2) The address furnished with the Registrar under subsection (1)shall be entered into the Registrar's record or Register and shallbe deemed to be the address for service of the person undersubsection (1) for all the proceedings before the Registrar.
(3) An address for service may be changed upon notifying theRegistrar in the form as determined by him and within the prescribedperiod which shall be entered into the Registrar's record or
Register.
(4) Upon receipt of the request for change in subsection (3)together with the payment of the prescribed fee, the Registrar shallchange the address for service of the person under subsection (1)111which may affect some or all of his applications for registration orregistered trademarks.
(5) The Registrar may refuse to proceed with the application orregistration of trademark if the address of service as stated insubsection (1) is not furnished.
(6) If the person stated in subsection (1) is not residing or
carrying on business in Malaysia, he shall appoint and authorize aregistered trademark agent to act for him in the prescribed manner.
(7) When the person mentioned in subsection (1) appoints andauthorizes a registered trademark agent to act for him, the addressof service of the registered trademark agent which shall be enteredinto the Registrar's record or Register, shall be deemed to be theaddress for service of the person under subsection (1) for allproceedings before the Registrar.
152. Power of Registrar to allow amendments of documents(1) The Registrar may, upon an application in the form as determinedby the Registrar together with the payment of the prescribed fee andon such terms as to costs as he thinks just, whether for the purposeof amending a clerical error or an obvious mistake, allow theamendment of (a) an application for the registration of trademark;(b) notice of opposition;(c) counterstatement; or(d) any documents as the Registrar thinks fit.
(2) An amendment applied under subsection (1), shall not be
permitted, under this section if the amendment would substantiallyaffect(a) the identity of the trademark as specified in the application
before amendment or without extending in any way the rights given by
the existing registration of trademark; or(b) the content of the documents filed with the Trademarks Office.
153. Power of Registrar to allow extension of time(1) Where by this Act, a time is specified within which an act orthing is to be done, the Registrar may, unless otherwise expressly
provided or directed by the Court, upon application in the form as112

determined by the Registrar, extend the time either before or after
its expiration upon payment of the prescribed fee.
(2) Subsection (1) shall not be applicable to sections 26, 27 and 28
except where the circumstances under subsection (3) apply.
(3) Where by reason of(a) an error or omission by the person or by his registeredtrademark agent;(b) circumstances beyond the control of the person or by his
registered trademark agent; or(c) an error or action on the part of the Trademark Office, an act
in relation to an application for the registration of trademark orin proceedings under this Act (not being proceedings in a Court)
required to be done within a certain time has not been so done, theRegistrar may extend the time for doing the act.
(4) The time required for doing an act under subsection (3) may be
extended even though that time has expired.
154. Mode of giving evidence(1) For the purposes of subsection 105(1), in all proceedings before
the Registrar, evidence shall be given by statutory declaration in
the absence of directions to the contrary but in any case, in which
he thinks fit, the Registrar may take evidence viva voce in lieu ofor in addition to evidence by declaration.
(2) Any such statutory declaration may, in the case of an appeal, be
used before the Court in lieu of evidence by affidavit, but if soused, shall have all the incidents and consequences of evidence byaffidavit.
(3) In any action or proceedings relating to a trademark, theRegistrar or the Court, as the case may be, shall admit evidence of
the usages of the trade concerned or evidence of business usages in
the provision of the services in question and evidence of any
relevant trademarks or trade name or business name or get-up
legitimately used by other persons.
155. Exercise of discretionary power
Where any discretionary power is given to the Registrar by this Act,113

he shall not exercise that power adversely to the applicant forregistration of trademark or the registered proprietor in question
without, if duly required to do so within the prescribed period,
giving to the applicant an opportunity of being heard.
156. Power of the Registrar to treat documents as confidential(1) In accordance with the regulations, the Registrar may(a) require that specified information in a document that has been
filed, or is to be filed, in relation to a trademark be held in theTrademarks Office confidentially;(b) make such a requirement subject to specified conditions orlimitations; and(c) vary or revoke such a requirement, condition or limitation.
(2) For the purposes of this section, procedures in connection withthe making, varying or revoking of any requirements, conditions orlimitations shall be as prescribed.
157. Adaptation of entries to new classification(1) The Registrar may consider the necessary to implement any
amendment or substitution of classification of goods or services forthe purposes of the registration of trademarks including making theamendment of existing entries on the Register so as to accord with
the new classification as prescribed.
(2) The amendment made under subsection (1) shall not extend therights conferred by the registration, except where it appears to theRegistrar that compliance with this requirement would involve undue
complexity and that any extension would not be substantial and would
not adversely affect the rights of any person.
(3) The Registrar may(a) require the registered proprietor, within such prescribedperiod, to file a proposal for amendment of the Register; and(b) cancel any relevant goods or services as identified by theRegistrar or refuse to renew the registration of trademark in theevent of his failing to do so.
(4) Any proposal made under paragraph (3)(a) shall be published in
the Intellectual Property Official Journal and may be opposed inaccordance with section 35.
114

158. Costs awarded by Registrar(1) In all proceedings before the Registrar, the Registrar shallhave power to award to any party such costs including taxation of
the costs as he may consider reasonable and to direct how and by
what parties they are to be paid, and any such order may, by leaveof the Court, be enforced in the same manner as a judgment or orderof the Court to the same effect.
(2) A party to any proceedings before a Registrar who is desirous toobtain costs or to have the costs taxed shall apply to the Registrar
in the prescribed manner.
(3) Costs awarded by the Registrar under subsection (1) may, indefault of payment be recovered in a court of competent jurisdiction
as a debt due by the person against whom the costs were accorded tothe person in whose favour they were accorded.
159. Unregistered trademarks(1) No person shall be entitled to initiate any action to prevent or
to recover damages for the infringement of an unregisteredtrademark.
(2) Notwithstanding subsection (1), nothing in this Act shall bedeemed to affect the right of action against any person for passing
off goods or services as those of another person or the remedies inrespect of the goods or services.
160. Guidelines or practice directions by Registrar(1) The Registrar may issue guidelines or practice directions on any
matter.
(2) The guidelines or practice directions issued by the Registrar
under this section shall be published in the Intellectual Property
Official Journal and shall be effective from the date as specified
in the guidelines or directions.
(3) Any person who are specified in the provision under this Act
shall comply with the guidelines and practice directions.
(4) The Registrar may vary, review or revoke any guidelines or115

practice directions.
(5) Subject to subsection (4), the procedures set out in subsections(2) and (3) shall apply in respect of any variation, review or
revocation of the guidelines or practice directions.
(6) Any person, applicant or registered proprietor who does notcomply with any guidelines or practice directions of the Registrar,
where such guidelines or practice directions are applicable to such
person, applicant or registered proprietor(a) is deemed to have failed to fulfil the requirements as requiredby the Registrar which renders the application as withdrawn, lapsed,refused, revoked or as determined by the Registrar; or(b) commits an offence and shall, on conviction, be liable to a finenot exceeding ten thousand ringgit.
161. Power to amend Schedules(1) The Minister may, by order published in the Gazette, amend theFirst and Second Schedules.
(2) The Minister shall, before making an amendment to the First or
Second Schedule(a) publish a notice of his intention in the Intellectual Property
Official Journal to make the amendment and the proposed amendment;(b) give at least thirty days from the date of notice to allow any
submission to be made by members of the association, competent bodyor the public in relation to the proposed amendment; and(c) give due consideration to any submission made.
162. Power to make regulations(1) Subject to the provisions of this Act, the Minister may makeregulations for the purpose of carrying into effect the provisionsof this Act.
(2) In particular and without prejudice to the generality ofsubsection (1), such regulations may provide for all or any of thefollowing purposes:(a) to regulate the practice, other than that relating toproceedings before the court or connected therewith, under this Act
including service of documents;(b) to classify goods or services for the purpose of registration of116

trademarks;(c) to provide for all matters relating to registration of trademark
including renewal of registered trademark;(d) to provide for all matters relating to alteration or voluntarycancellation of registered trademark, revocation or invalidity ofregistration, or correction of Register;(e) to secure and regulate the publishing and selling or
distributing in such manner as the Minister may think fit of copies
of extracts of trademarks and other documents from the record or
Register;(f) to prescribe fees to be paid for any matter or thing under thisAct;(g) to regulate all matters relating to registered trademarks
agents;(h) to regulate matters relating to the registration listing goods
or services comprising more than one class in one application;(i) to regulate all matters relating to division of application forregistration or registered trademarks;(j) to regulate all matters relating to merger of application forregistration or registered trademarks;(k) to regulate all matters relating to certification mark andcollective mark;(1) to regulate all matters relating to a series trademark;(m) to regulate generally on matters pertaining to the business
operation relating to trademarks carried on in any Trademarks Office
whether or not specifically prescribed under this Act but so as not
to be inconsistent with any of the provisions of this Act;(n) to regulate the matters in determining whether a trademark is
well-known and has fulfilled the requirement stipulated under
Article 6 bis of the Paris Convention and Article 16 of the TRIPS
Agreement;(o) to regulate the use of trademarks including how the trademark is
applied to or applied in relation to goods or services;(p) to regulate matters relating to use of trademarks on theinternet;(q) to provide for the manner and effect of a cancellation and forprotecting the interests of other persons having a right in theregistered trademark;(r) to regulate all matters relating to border measures;(s) to prescribe the entry, particulars or matters to be enteredinto the record or Register; and117

(t) to prescribe for all matters relating to appeals filed in Court
following the decision of the Registrar relating to the time forstarting the action or the manner for an application to be made foran extension of that time, subject to the provisions of the rules ofcourt.
(3) Subject to the provisions of this Act, the Rules Committee
constituted under the Courts of Judicature Act 1964, may make rulesof court regulating the practice and procedure in relation toproceedings before the Court or connected therewith and the costs ofthe proceedings.
163. Appeal from Registrar
Notwithstanding any provision in any written law in relation to
judicial review, any person aggrieved by the decision of theRegistrar in relation to the following matters may appeal to the
Court:(a) decision of the Registrar relating to examination of application
under subsection 29(8);(b) decision of the Registrar not to allow any amendment ofapplication for registration of trademark under section 33;(c) decision of the Registrar relating to opposition proceedings
under subsection 35(10);(d) decision of the Registrar not to allow any alteration of aregistered trademark under section 42;(e) decision of the Registrar not to allow any correction in theRegister under section 43;(f) decision relating to the revocation of registration by theRegistrar under subsection 45(4);(g) decision of the Registrar relating to the registration of any
transaction affecting any registered trademark under section 65;(h) decision of the Registrar relating to any application forregistration of a trademark as an object of property under section
67;(i) decision of the Registrar relating to the registration of a
trademark agent under section 97;(j) decision of the Registrar not to allow amendments of documents
under section 152; and(k) decision of the Registrar under paragraph 6 of the First
Schedule and Second Schedule.

118

Part XIX REPEAL, SAVINGS AND TRANSITIONAL PROVISIONS
Chapter 1 Repeal and savings
164. Repeal and savings(1) The Trade Marks Act 1976 is repealed.
(2) Notwithstanding the repeal of the Act under subsection (1)(a) any appointment made under the repealed Act shall continue inforce and have effect as if it had been made under this Act;(b) all decisions, directions and notices made or issued under the
repealed Act shall, to the extent that the decisions, directions andnotices are consistent with this Act, continue in force until suchdecisions, directions and notices are revoked or amended;(c) any investigation, trial and proceedings done, taken orcommenced under the repealed Act immediately before the commencementof this Act shall, on the commencement of this Act, be dealt with asif the repealed Act has not been repealed by this Act; and(d) nothing in the repealed Act or this Act shall affect any
person's liability to be prosecuted or punished for offences
committed under the repealed legislation before the commencement of
this Act, or any proceedings brought, sentence imposed or action
taken before that day in respect of such offence.

119Chapter 2 Transitional provisions for trademarks
165. Interpretation(1) Notwithstanding the repeal, the following subsections shall beapplicable.
(2) In this Chapter, "existing registered mark” means a trade mark,certification trade mark or defensive trade mark registered under
the repealed Act immediately before the commencement of this Act.
(3) For the purposes of this Chapter(a) an application shall be treated as pending on the commencementof this Act if it was made but not finally determined before
commencement of this Act; and(b) the date on which it was made shall be taken to be the date offiling under the repealed Act.
166. Existing registered marks(1) Any existing registered marks kept in the Register under the
repealed Act, subject to the provision of this part, shall be aregistered trademark for the purposes of this Act.
(2) Any existing registered mark registered as a certification trade
mark in the Register kept under the repealed Act shall be aregistered certification mark for the purposes of this Act.
(3) Any existing registered mark registered as a series of trade
marks in the Register kept under the repealed Act shall be similarly
registered in the Register kept under this Act for the purposes ofthis Act.
(4) Any indication that an existing registered mark is associatedwith any other mark shall cease to have effect on the commencementof this Act.
(5) A condition, disclaimer or limitation entered into the Register
under the repealed Act in relation to an existing registered markimmediately before the commencement of this Act shall beincorporated into the Register kept under this Act and have effectas if entered into the Register pursuant to section 36 of this Act.
(6) Sections 37 and 38 of this Act may be applied in relation to an120

existing registered mark under the repealed Act on the commencementof this Act.
167. Effects of registration in relation to infringement(1) Sections 48, 49, 50, 51 and 54 of this Act apply in relation toan existing registered mark as from the commencement of this Act andsection 56 of this Act applies in relation to infringement of an
existing registered mark committed after the commencement of thisAct, subject to subsection (2).
(2) Sections 38 and 51 of the repealed Act continue to apply in
relation to infringements committed before the commencement of thisAct.
168. Infringing goods, material or articles
Section 59 of this Act applies to infringing goods, material or
articles whether the application for the order is made before orafter the commencement of this Act.
169. Rights and remedies of licensee or authorized user
(1) Section 70 of this Act applies to licences granted before thecommencement of this Act only in relation to infringements committed
after the commencement of this Act.
(2) Subparagraph 9(2) of the Second Schedule of this Act apply only
in relation to infringements committed after the commencement of
this Act.
170. Co-proprietorship of registered mark(1) Section 63 of this Act applies as from the commencement of thisAct to an existing registered mark of which two or more persons wereimmediately before commencement of this Act registered as joint
proprietors.
(2) Where two or more persons are registered as joint proprietors
under section 21 of the repealed Act shall continue to exist as if
this Act has not been enacted.
171. Assignment, etc., of registered mark(1) Section 64 of this Act applies to transactions occurring after
the commencement of this Act in relation to an existing registered121

mark and the repealed Act continues to apply in relation totransactions occurring before the commencement of this Act.
(2) Existing entries under section 47 of the repealed Act shall betransferred on the commencement of this Act to the Register kept
under this Act and have effect as if made under section 65 of thisAct.
(3) An application for registration under section 47 of the repealed
Act which is pending before the Registrar on the commencement of
this Act or which has been determined by the Registrar but not
finally determined before the commencement of this Act shall betreated as an application for registration under sections 65 and 67
of this Act and shall proceed accordingly.
(4) For the purposes of subsection (3), the Registrar may require
the applicant to amend his application so as to conform to therequirements of this Act and subsection (2) shall apply in relation
to any resulting entry in the Register.
(5) Where before the commencement of this Act, a person has become
entitled by assignment or transmission to an existing registered
mark but has not registered his title, any application forregistration after commencement of this Act shall be made under
section 64 of this Act.
(6) For the purposes of subsections (3) and (5), subsection 47(3) of
the repealed Act shall continue to apply as regards the consequencesof failing to register.
172. Licensing of registered mark(1) Section 69 of this Act applies only in relation to licences
granted after the commencement of this Act and the repealed Act
continues to apply in relation to licences granted before thecommencement of this Act until the expiration of such licences.
(2) Existing entries under section 48 of the repealed Act shall betransferred on the commencement of this Act to the Register kept
under this Act and have effect as if made under section 65 of this
Act.

122

(3) An application for registration as a registered user which ispending before the Registrar on the commencement of this Act or
which has been determined by the Registrar but not finallydetermined before the commencement of this Act shall be treated as
an application for registration of a licence under section 65 or 67
of this Act and shall proceed accordingly.
(4) The Registrar may require the applicant to amend his application
so as to conform to the requirements of this Act and subsection (2)shall apply in relation to any resulting entry in the Register.
(5) Any proceedings pending on the commencement of this Act undersubsection 49(1) of the repealed Act shall be dealt with under the
repealed Act and any necessary alteration shall be made to theRegister under this Act.
173. Pending applications for registration(1) An application for registration of a mark under the repealed Act
which is pending on the commencement of this Act shall be dealt with
under the repealed Act subject to the following subsections, and if
registered, the mark shall be treated for the purposes of thissection as an existing registered mark.
(2) Section 22 of the repealed Act shall be disregarded after thecommencement of this Act for an application for registration.
(3) Sections 34 and 35 of this Act shall apply to an application forregistration of a mark under the repealed Act which is pending
publication on the commencement of this Act.
(4) Sections 32, 33 and 155 of this Act shall apply to an
application for registration of a mark under the repealed Act whichis pending registration on the commencement of this Act.
(5) Section 37 or 38 of this Act may be applied in relation to an
application for registration of a mark under the repealed Act whichis pending registration on the commencement of this Act.
174. Conversion of pending application(1) In the case of a pending application for registration which has
not been examined under the repealed Act before the commencement of123this Act, the applicant may give notice to the Registrar claiming tohave the registrability of the mark determined in accordance withthe provisions of this Act.
(2) The notice shall be filed in the form as determined by theRegistrar together with the payment of the prescribed fee within twomonths from the date of the commencement of this Act.
(3) A notice filed under subsection (2) shall be irrevocable andshall have the effect that the application shall be treated as if
the application for registration is made after the commencement of
this Act.
175. Trademarks registered according to old classification(1) The Registrar may exercise the powers conferred by regulations
under section 162 of this Act to secure that any existing registeredmarks which do not conform to the system of classification asprescribed under section 19 of this Act are brought into conformity
with that system.
(2) Subsection (1) shall apply to existing registered marks
classified in accordance with the classification as specified inThird Schedule of the Trade Marks Regulations 1997.
176. Claim to priority of Convention application(1) Where before the commencement of this Act, a person has duly
filed an application for protection of a trademark in a Convention
country, section 26, 27 or 28 of this Act shall apply to an
application for registration under this Act made after thecommencement of this Act.
(2) Nothing in this section affects proceedings on an application
for registration under the repealed Act made before the commencementof this Act.
177. Duration and renewal of registration(1) Subsection 39(1) of this Act shall apply in relation to theregistration of trademark pursuant to an application made after thecommencement of this Act and the repealed law shall continue toapply in relation to a trademark registered before the commencementof this Act.
124

(2) Subsection 39(2) and section 40 of this Act shall apply where
the renewal of existing registered marks under the repealed Act
falls due on or after the commencement of this Act and the repealed
Act shall continue to apply for existing registered marks where its
renewal does not fall due on or after the commencement of this Act.
(3) For the purposes of subsection (2), the renewal fee under thisAct shall be applicable regardless that such fee has been paid
before the commencement of this Act.
178. Pending application for alteration of registered markAn application under section 44 of the repealed Act which is pendingon the commencement of this Act shall be dealt with under the
repealed Act and any necessary alteration shall be made to theRegister in this Act.
179. Revocation for non-use(1) An application under section 46 of the repealed Act which ispending on the commencement of this Act shall be dealt with under
the repealed Act and any necessary alteration shall be made to theRegister in this Act.
(2) An application under section 46 of this Act may be made in
relation to an existing registered mark after the commencement of
this Act.
(3) Notwithstanding subsection (2), the application for the
revocation of the registration of an existing registered markregistered under section 57 of the repealed Act may only be madefive years after the commencement of this Act.
180. Application for rectification, etc.
(1) An application under section 43 or 45 of the repealed Act whichis pending on the commencement of this Act shall be dealt with under
the repealed Act and any necessary alteration shall be made to theRegister in this Act.
(2) For the purposes of proceedings under section 47 of this Act as
it applies in relation to an existing registered mark, theprovisions of this Act shall be deemed to have been in force at all125material times, except there is no objection to the validity of theregistration of an existing registered mark may be taken on the
ground specified in subsection 24(3) of this Act.
181. Rules as to use of certification mark(1) Rules governing the use of an existing registered certification
trademark deposited at the Trade Mark Central Office pursuant tosection 56 of the repealed Act shall be treated after thecommencement of this Act as if it is filed in accordance with theSecond Schedule to this Act.
(2) Any request for amendment of the rules which was pending on thecommencement of this Act shall be dealt with in accordance with thisAct.
182. Agents(1) Registration of an agent applied under the repealed Act before
the commencement of this Act shall continue to be in force and haveeffect as if made under section 97 of this Act and if registered,
the agent shall be treated as a registered trademark agent under
this Act.
(2) The requirements for renewal of registration of trademark agents
under this Act shall apply to the registration of the agent obtained
under the repealed Act.
183. Guidelines, etc., on transitional matters
The Registrar may issue guidelines or practice directions to provide
for any matters in force before the commencement of this Act to be
dealt with in such manner to bring them in conformity with this Act.

126

FIRST SCHEDULE COLLECTIVE MARKS
1. Interpretation
In this Schedule –"association" means an organization duly registered in accordancewith the laws of its incorporation but not incorporated inaccordance with the laws relating to companies, and includes club,trade union and society incorporated accordingly.
2. Signs of which a collective mark may consist
In relation to a collective mark, the reference in the definition ofa trademark under section 3 as to distinguishing goods or servicesof one undertaking from those of other undertakings shall be
construed as a reference to distinguishing goods or services ofmembers of association which is the proprietor of the collective
mark from those of other undertakings.
3. Collective mark consisting of geographical indication(1) Notwithstanding paragraphs 23(1)(c), 4(a) and (b), a collective
mark which consists of geographical indication may be registered asa collective mark, to designate the geographical origin of the goods
or services subject to the following grounds:(a) it contains an individual term of multi-component terms, which
is identical with the common name of any goods or services in
Malaysia, where the registration of the collective mark is sought inrelation to those goods or services;(b) it contains the name of a plant variety or an animal breed;(c) the goods or services did not originate from the country, region
or locality indicated in subparagraph 5(3)(a);(d) the use of the collective mark in relation to the goods orservices is of such a nature as to mislead the public as to the trueplace of origin; or(e) if there exists a likelihood of confusion on the part of the
public because the geographical indication is identical with orsimilar to, and has the same geographical origin as, an earlier
geographical indication which has been registered under the
Geographical Indications Act 2000.
(2) The registered proprietor of such a collective mark undersubparagraph (1) is not entitled to prohibit the use of the signs orindications of geographical origin in accordance with honest
127

practices in industrial or commercial matters including by a person
who is entitled to use a geographical name, provided the use is by
the person carrying out their activity in the geographical area
specified in the Register which shall be in respect of the goods orservices specified in the Register in accordance to the quality,
reputation or characteristic specified in the Register.
4. Collective mark not to be misleading as to character orsignificance(1) A collective mark shall not be registered if the public islikely to be misled as regards to the character or significance ofthe collective mark, in particular if it is likely to be taken to besomething other than a collective mark.
(2) For the purposes of subparagraph (1), the Registrar may requirethat a collective mark in respect of which application is made forregistration include some indication that it is a collective mark.
(3) Notwithstanding subsection 33(3), an application may be amended
so as to comply with any other requirement.
5. Rules governing the use of collective mark(1) In addition to the requirements under section 17, an applicant
of a collective mark shall file the rules governing the use of thecollective mark with the Registrar.
(2) The rules under subparagraph (1) shall specify(a) the persons authorized to use the collective mark;(b) the conditions of membership of the association;(c) the conditions of use of the collective mark, if any; and(d) any sanctions against misuse of the collective mark, if any.
(3) In addition to subparagraph (2), if the application ofcollective mark consists of geographical indications undersubparagraph 3(1), the applicant shall file the rules which specify(a) that country, region or locality where the goods or services
originated from;(b) the quality, reputation or other characteristic of the goods orservices which is essentially attributable to its geographicalorigin;(c) the existing protection or registration of geographical128

indication in the country, region or locality of origin; and(d) the use of the geographical indication in the country, region or
locality of origin.
(4) For the purposes of subparagraphs (2) and (3), the Registrar may
require further requirements to be specified in the rules as hethinks fit.
6. Approval of rules and application for registration of collective
mark(1) A collective mark shall not be registered unless the rules
governing the use of the collective mark(a) specify all the requirements contained in subparagraphs 5(2),(3) and (4);(b) are not contrary to public interest or morality;(c) do not contain or consist of any scandalous or offensive matteror would otherwise not be entitled to protection by any court oflaw; and(d) do not contain a matter which is in the opinion of the Registrar
is or might be prejudicial to the interest or security of thenation.
(2) The applicant shall file the rules under paragraph 5 with theRegistrar within the period as prescribed and if the applicant does
not do so, the application for registration of collective mark shallbe deemed withdrawn.
(3) The Registrar shall consider whether the requirements undersubparagraph (1) are fulfilled.
(4) If it appears to the Registrar that the requirements undersubparagraph (1) are not fulfilled, he shall inform the applicant
and give him an opportunity within the period as determined by theRegistrar, to make representations or to file amended rules.
(5) If the applicant responds within the period as determined by theRegistrar but fails to satisfy the Registrar that the requirement
under subparagraph (1) are fulfilled, or to file rules that has been
amended so as to meet those requirements, the Registrar may refuse
the application for registration of collective mark.

129

(6) If the applicant fails to respond within the specified period,
the application for registration of collective mark shall be deemed
withdrawn.
(7) If it appears to the Registrar the requirements undersubparagraph (1) and requirements for registration under Part IV,
are met, he shall accept the application and shall proceed inaccordance with sections 31 and 35.
(8) The rules shall be published in accordance with section 31 andnotice of opposition may be given relating to the matters undersubparagraph (1), in addition to any other grounds on which theapplication may be opposed.
7. Inspection of rules
The rules governing the use of a registered collective mark shall be
open to public inspection in the same way as the Register under
section 15.
8. Amendment of rules of registered collective mark(1) An amendment of the rules governing the use of a registeredcollective mark is not effective unless the amended rules are filedwith the Registrar in the form as determined by the Registrar
together with the payment of the prescribed fee.
(2) The Registrar shall, after considering the requirement undersubparagraph (1), cause the amended rules to be accepted andpublished in the Intellectual Property Official Journal.
(3) Any person may file a notice of opposition relating to thematters under subparagraph 6(1) in the form as determined by theRegistrar within the prescribed period after the amended rules has
been published in the Intellectual Property Official Journal undersubparagraph (2).
9. Rights of authorized users relating to infringement proceedings(1) The following provisions shall apply in relation to an
authorized user of a registered collective mark as in relation to alicensee of a trademark:(a) subsection 54(4);(b) subsection 60(2); (c) section 70; and130

(d) section 87.
(2) In infringement proceedings brought by the registered proprietor
of a collective mark, any loss suffered or likely to be suffered byauthorized users shall be taken into account and the Court may givesuch directions as it thinks fit as to the extent to which theplaintiff is to hold the proceeds of any pecuniary remedy on behalfof such users.
10. Limitation on rights given by registered collective markA member of an association in whose name a collective mark is
registered does not have the right to prevent another member of theassociation from using the collective mark in accordance with therules of association.
11. Grounds for revocation of registration
In addition to the grounds of revocation provided for in sections 45
and 46, the registration of a collective mark may be revoked by the
Court on the ground(a) that the manner in which the collective mark has been used by
the proprietor has caused it to become liable to mislead the publicin the manner referred to in subparagraph 4(1);(b) that the proprietor does not observe, or to secure theobservance of, the rules governing the use of the collective mark;or(c) that an amendment of the rules filed by the registeredproprietor(i) no longer complies with subparagraphs 5(2), (3) and (4);(ii) is contrary to public interest or morality;(iii) contain or consist of any scandalous or offensive matter orwould otherwise not be entitled to protection by any court of law;or(iv) contain a matter which is in the opinion of the Registrar is or
might be prejudicial to public interest or security of the country.
12. Grounds for invalidity of registration
In addition to the grounds of invalidity provided for in section 47,
the registration of a collective mark may be declared invalid by the
Court on the ground that the collective mark was registered inbreach of the provision of subparagraph 4(1) or subparagraph 6(1).

131

SECOND SCHEDULE CERTIFICATION MARKS
1. Signs of which a certification mark may consist
In relation to a certification mark, the definition of trademark
under section 3 as to distinguishing goods or services of one
undertaking from those of other undertakings shall be construed as areference to distinguishing goods or services which are certified
from those which are not.
2. Certification mark consisting of geographical indication(1) Notwithstanding paragraphs 23 (1)(c), 4(a) and (b), a
certification mark which consists of geographical indication may beregistered as a certification mark, to designate the geographicalorigin of the goods or services subject to the following grounds:(a) it contains an individual term of multi-component terms, which
is identical with the common name of any goods or services in
Malaysia, where the registration of the certification mark is sought
in relation to those goods or services;(b) it contains the name of a plant variety or an animal breed;(c) the goods or services did not originate from the country, region
or locality indicated in subparagraph 5(3)(a);(d) the use of the certification mark in relation to the goods orservices is of such nature as to mislead the public as to the trueplace of origin; or(e) if there exists a likelihood of confusion on the part of the
public because the geographical indication is identical with orsimilar to, and has the same geographical origin as, an earlier
geographical indication which has been registered under the
Geographical Indications Act 2000.
(2) The registered proprietor of such a certification mark undersubparagraph (1) is not entitled to prohibit the use of the signs orindications of geographical origin in accordance with honest
practices in industrial or commercial matters, provided the use isby the person carrying their activity in the geographical area
specified in the Register which shall be in respect of the goods orservices specified in the Register in accordance to the quality,
reputation or characteristic specified in the Register.
3. Nature of proprietor's businessA certification mark shall not be registered if the proprietor
132

carries on a business involving supply of goods or services of which
the registered proprietor certifies.
4. Certification mark not to be misleading as to character orsignificance(1) A certification mark shall not be registered if the public islikely to be misled as regards to the character or significance ofthe certification mark, including if it is likely to be taken to besomething other than a certification mark.
(2) For the purposes of subparagraph (1), the Registrar may requirethat a certification mark in respect of which an application is madefor registration include some indication that it is a certification
mark.
(3) Notwithstanding subsection 33(3), an application may be amended
so as to comply with any such requirement.
5. Rules governing the use of certification mark(1) In addition to the requirements under section 17, an applicant
of a certification mark shall file the rules governing the use of
the certification mark with the Registrar.
(2) The rules under subparagraph (1) shall specify(a) the persons authorized to use the certification mark;(b) the characteristics to be certified by the certification mark;(c) how the proprietor is to test those characteristics;(d) how the proprietor supervise the use of the certification mark;and(e) the procedures for resolving disputes between the proprietor andauthorized user.
(3) In addition to subparagraph (2), if the application ofcertification mark consists of geographical indications in
subparagraph 2(1), the applicant shall file the rules which specify(a) the country, region or locality where the goods or services
originated from;(b) the quality, reputation or other characteristic of the goods orservices which is essentially attributable to its geographicalorigin;(c) the existing protection or registration of geographical133indication in the country, region or locality of origin; and(d) the use of the geographical indication in the country, region or
locality of origin.
(4) For the purposes of subparagraphs (2) and (3), the Registrar may
require further requirements to be specified in the rules as hethinks fit.
6. Approval of rules and application for registration ofcertification mark(1) A certification mark shall not be registered unless(a) the rules governing the use of the certification mark (i) specify all the requirements contained in subparagraphs 5(2),(3) and (4);(ii) are not contrary to public interest or morality;(iii) do not contain or consist of any scandalous or offensive
matter or would otherwise not be entitled to protection by any courtof law; and(iv) do not contain a matter which is in the opinion of theRegistrar is or might be prejudicial to public interest or securityof the country; and(b) the applicant is competent to certify the goods or services forwhich the certification mark is to be registered.
(2) The applicant shall file the rules under paragraph 5 with theRegistrar within the period as prescribed and if the applicant does
not do so, the application for registration of certification markshall be deemed withdrawn.
(3) The Registrar shall consider whether the requirements undersubparagraph (1) are fulfilled.
(4) If it appears to the Registrar that the requirements undersubparagraph (1) are not fulfilled, he shall inform the applicant
and give him an opportunity within the period as determined by theRegistrar, to make representations or to file amended rules.
(5) If the applicant responds within the period as determined by theRegistrar but fails to satisfy the Registrar that the requirement
under subparagraph (1) are fulfilled, or to file rules that has been
amended so as to meet those requirements, the Registrar may refuse
134the application for registration of certification mark.
(6) If the applicant fails to respond within the specified period,
the application for registration of certification mark shall bedeemed withdrawn.
(7) If it appears to the Registrar the requirements undersubparagraph (1) and requirements for registration under Part IV,
are met, he shall accept the application and shall proceed inaccordance with sections 31 and 35.
(8) The rules shall be published in accordance with section 31 andnotice of opposition may be given relating to the matters undersubparagraph (1), in addition to any other grounds on which theapplication may be opposed.
7. Inspection of rules
The rules governing the use of a registered certification mark shallbe open to public inspection in the same way as the Register under
section 15.
8. Amendment of rules of registered certification mark(1) An amendment of the rules governing the use of a registeredcertification mark is not effective unless the amended rules are
filed with the Registrar in the form as determined by the Registrar
together with the payment of the prescribed fee.
(2) The Registrar shall, after considering the requirement undersubparagraph (1), cause the amended rules to be accepted andpublished in the Intellectual Property Official Journal.
(3) Any person may file a notice of opposition relating to thematters under subparagraph 6(1) in the form as determined by theRegistrar within the prescribed period after the amended rules are
published in the Intellectual Property Official Journal undersubparagraph (2).
9. Consent to assignment of registered certification markThe assignment or other transmission of a registered certification
mark shall not be effective without the consent of the Registrar.

135

10. Rights of authorized users relating to infringement proceedings(1) The following provisions shall apply in relation to an
authorized user of a registered certification mark as in relation toa licensee of a trademark:(a) subsection 54(4);(b) subsection 60(2); and(c) section 87.
(2) In infringement proceedings brought by the registered proprietor
of a certification mark, any loss suffered or likely to be sufferedby authorized users shall be taken into account and the Court may
give such directions as it thinks fit as to the extent to which theplaintiff is to hold the proceeds of any pecuniary remedy on behalfof such users.
11. Grounds for revocation of registration
In addition to the grounds of revocation provided for in sections 45
and 46, the registration of a certification mark may be revoked by
the Court on the ground(a) that the registered proprietor has begun to carry on such abusiness under paragraph 3;(b) that the manner in which the certification mark has been used by
the registered proprietor has caused it to mislead the public in themanner referred to in subparagraph 4(1);(c) that the registered proprietor has failed to observe, or tosecure the observance of, the rules governing the use of thecertification mark;(d) that an amendment of the rules filed by the registeredproprietor(i) no longer complies with subparagraphs 5(2), (3) and (4);(ii) contrary to public interest or morality;(iii) contain or consist of any scandalous or offensive matter orwould otherwise not be entitled to protection by any court of law;or(iv) contain a matter which is in the opinion of the Registrar is or
might be prejudicial to public interest or security of the country;or(e) that the registered proprietor is no longer competent to certify
the goods or services for which the certification mark is registered136

12. Grounds for invalidity of registration
In addition to the grounds of invalidity provided for in section 47,
the registration of a certification mark may be declared invalid by
the Court on the ground that the certification mark was registeredin breach of paragraph 3, subparagraph 4(1) or subparagraph 6(1).

137