Japan Patent Office (JPO) Commissioned Survey

Survey on the Appeal, Opposition, Revocation andInvalidation Procedures Related to Patents,
Designs, and Trademarks in Malaysia

March 2021
Japan External Trade Organization (JETRO)Singapore OfficeIntellectual Property Division

TABLE OF CONTENT
A.

B.

C.

D.

E.

INTRODUCTION ......................................................................................................... 1
I.

Scope of Survey ................................................................................................ 1

II.

Method of Survey .............................................................................................. 1

III.

Results of Survey .............................................................................................. 2

ADJUDICATORY BODIES AND FORUM ................................................................... 3
I.

Adjudicatory Bodies ......................................................................................... 3

II.

Forums............................................................................................................... 5

PATENTS .................................................................................................................... 6
I.

Overview of the Patent Application Process................................................... 6

II.

Processing of a Patent Application ................................................................. 6

III.

Opposition Proceedings ................................................................................... 8IV.

Invalidation Proceedings .................................................................................. 8V.

Other Procedures to Challenge the Patentability of a Patent / Invention
Before and After Grant ..................................................................................... 9VI.

Statistics .......................................................................................................... 10

VII.

Case study....................................................................................................... 10

REGISTERED DESIGNS ........................................................................................... 12
I.

Overview of the Design Application Process................................................ 12II.

Processing of a Design Registration Application ......................................... 12

III.

Opposition Proceedings ................................................................................. 13

IV.

Revocation Proceedings ................................................................................ 13

V.

Rectification of the Register........................................................................... 15

VI.

Statistics .......................................................................................................... 18

VII.

Case Study ...................................................................................................... 18

TRADEMARKS ......................................................................................................... 19
I.

Overview of the Trademark Application Process ......................................... 19

II.

Processing of a Trademark Application ........................................................ 19

III.

Opposition Proceedings ................................................................................. 20

IV.

Revocation Proceedings ................................................................................ 27

V.

Invalidation Proceedings ................................................................................ 29

VI.

Statistics .......................................................................................................... 29

VII.

Case Study ...................................................................................................... 30

Annex A .............................................................................................................................................. 32

A.

INTRODUCTIONI.

Scope of Survey

1.1This survey report covers procedures concerning appeal, opposition, revocation, expungement,
and invalidation procedures for patents, registered designs and trademarks (together referred toas, "IP rights") in Malaysia, including:(a)

The main bodies that adjudicate on IP rights and their binding effect inter se;(b)

Requirements to be a judge/examiner, challenges to a judge/examiner, removal of ajudge/examiner;(c)

The applicable actions (i.e., appeal, opposition, revocation or invalidation proceedings) andforum for commencing the actions;(d)

The requirements for parties;(e)Time limits for commencing an action;(f)

Scope and reasons for commencing an action;(g)

Possibility of amendments to filings;(h)Amendments and corrections to the scope of IP (requirements, time limits, etc.);(i)

Mode (oral or written) of hearings;(j)

Average duration from commencement of an action to a decision;(k)

Details on the contents of non-final and final decisions;(l)Effect of decision and when it is finalised;(m)

Applicable forms and fees;(n)Publication of decisions and method of publication;(o)Flowchart of procedures;(p)Relationship between types of actions (i.e., certain proceedings that can only arise within
the context of other proceedings) and the possibility of a two-track dispute;(q)

Statistics on number of dispute cases for each IP right filed at the Malaysian Intellectual
Property Office ("MyIPO")/court, heard by the MyIPO/court, the success rate of the cases
heard by the MyIPO/court, and decisions that were appealed; and(r)

Representative cases and strategies to utilize the systems.

II.

Method of Survey

2.1

We have prepared this survey report based on a desktop survey of the various IP law andregulations.
The survey was conducted by the following consultants:• Ms.Chew Kherk Ying (Partner, Wong & Partners, a member firm of Baker McKenzie
International)

1

•
•

Ms Woo Wai Teng (Senior Associate, Wong & Partners, a member firm of Baker
McKenzie International)
Ms Koh Shueh Jing (Legal Assistant, Wong & Partners, a member firm of Baker
McKenzie International)

The consultants also carried out desk research to gather relevant data and statistics for the
relevant subjects of this Survey.
2.1.1

Desktop survey on IP laws and regulations. In Malaysia, IP rights are governed by thefollowing statutes:(a)Patents Act 1983 (Act 294) ("Patents Act") and Patents Regulations 1986("Patents Regulations");(b)

Industrial Designs Act 1996 (Act 552) ("Industrial Designs Act") and Industrial
Designs Regulations 1999 ("Industrial Designs Regulations"); and(c)

Trademarks Act 2019 (Act 815) ("Trademarks Act") and Trademarks Regulations
2019 ("Trademarks Regulations").

III.

Results of Survey

3.1

The results of the survey are set out in the following chapters of this survey report:(a)Chapter B: Adjudication bodies and Forum.

(b)

Chapter C: Patents.

(c)

Chapter D: Registered Designs.

(d)Chapter E: Trademarks.

2

B.

ADJUDICATORY BODIES AND FORUMI.

Adjudicatory Bodies

1.1

The two main bodies that adjudicate on IP rights in Malaysia are: (a) the MYIPO; and (b) theIntellectual Property Court.

1.2

The MyIPO.

1.3

1.2.1

The MyIPO is an agency under the purview of the Ministry of Domestic Trade andConsumer Affairs ("MDTCA"), and is responsible in the development and administration of
IP rights.1

1.2.2

MyIPO is the granting authority for all industrial property rights seeking protection in
Malaysia. The Trademarks, and Designs Registries within the MYIPO are responsible forregistering IP which qualifies for registration in line with provisions of the IP laws, andmaintaining the Registers for each IP.2

The Malaysia Judicial System.

Federal Court
Special Court
Superior
CourtsCourt of Appeal
High Court

Subordinate
CourtsSessions Courts

Magistrates'
CourtsFlowchart B-1: Structure of the Malaysian Courts.

1.3.1

The Malaysia judicial system is comprised of two tiers which can be broadly divided into
the Superior Courts and the Subordinate Courts. 3 The Superior Court consists of theFederal Court, Court of Appeal, and High Court. There is a specialised Intellectual Property
Court which consists of 15 Sessions Courts with criminal jurisdiction and 6 High Courts withboth civil and appellate jurisdictions, designated to deal exclusively with IP disputes. It
should be highlighted, however, that the judges sitting in the IP courts are not required tohave legal expertise in the realms of intellectual property and therefore, there are no
specialist judges or hearing officers sitting in the IP courts.

1.3.2

The Special Court does not fall within the ambit of either the Superior Courts or the
Subordinate Courts. The Special Court has exclusive jurisdiction to try all criminal and civil

1 http://www.MyIPO.gov.my/en/about/?lang=en
2 http://www.MyIPO.gov.my/en/about/?lang=en
3 Section 3, Courts of Judicature Act 1964 (Act 91) ("CJA"), and Section 3(2), Subordinate Courts Act 1948 (Act 92).

3

actions by and against the Yang di-Pertuan Agong or any of the Ruler of a State in his
personal capacity.4
1.3.3

In general, civil cases involving claims not exceeding RM 10,000 are dealt with by theMagistrates Court. The Sessions Courts deals civil cases involving claims not exceeding
RM 1,000,0005 with the exception of actions and suits in relation to motor vehicle accidents,
landlord and tenant and distress of civil nature wherein the Sessions Court has unlimited
jurisdiction. 6 The High Court generally hear civil cases where the claims exceed RM
1,000,000.

1.3.4

The Federal Court is composed of the Chief Justice of the Federal Court, President of the
Court of Appeal, the Chief Judges of the High Courts, and 11 other Federal Court judges7
which are appointed by the Yang di-Pertuan Agong acting on the advice of the Chief Justiceof the Federal Court.8

1.3.5

The Chief Justice of the Federal Court, the President of the Court of Appeal and the Chief
Judges of the High Courts are appointed by the Yang di-Pertuan Agong, acting on theadvice of the Prime Minister upon consulting the Conference of Rulers.9 An individual must
be a citizen and possess at least 10 years of legal practice as an advocate or as a memberof the judicial and legal service of the Federation or of a State to be qualified to be appointed
as a Judge of the Federal Court, Court of Appeal, or any one of the High Courts.10

1.3.6

All judges of the Superior Courts must retire when they attain the age of 66 or no later than
6 months after they reach the age of 66 provided that an approval has been obtained fromthe Yang di-Pertuan Agong.11 Alternatively, a judge may resign at any time by writing under
his hand addressed to the Yang di-Pertuan Agong.12 A judge of the Superior Courts may
be removed on the grounds of any breach of any provision of the code of ethics prescribedby the Yang di-Pertuan Agong (on the recommendation of the Chief Justice, the Presidentof the Court of Appeal, and the Chief Judges of the High Court, and after consulting thePrime Minister), or on the grounds of inability, from infirmity of body or mind or any othercause, properly to discharge the functions of his office.13 Thereafter, the Yang di-Pertuan
Agong shall appoint a tribunal of not less than five persons who hold or have held office as
judge of the Federal Court, the Court of Appeal or a High Court and refer the representation
to it, and may remove the judge from office on the recommendation of the tribunal.14

1.3.7

Proceedings in the High Court are presided by a single judge whereas proceedings in the
Court of Appeal are usually heard and determined by a panel of three judges. With regards
the Federal Court, potential appellants must first file an application for leave to appeal to
the Federal Court. An application for leave to appeal will be heard and disposed of by apanel of three judges, while the actual appeal will be heard and determined by a panel offive judges

4 Article 182(2) and (3), Part XV of the Federal Constitution
5 Sections 65(1)(b), 73(b), and 93(1), Subordinate Courts Act 1948 (Act 92).
6 Section 65(1)(a), Subordinate Courts Act 1948 (Act 92).
7 http://www.jac.gov.my/spk/en/commission/superior-court-judges.html (as at 23 October 2020)
8 Article 122(1) and (IA), Part IX of the Federal Constitution.
9 Article 122B(1), Part IX of the Federal Constitution.
10 Article 123, Part IX of the Federal Constitution.
11 Article 125(1), Part IX of the Federal Constitution.
12 Article 125(2), Part IX of the Federal Constitution.
13 Article 125(3), Part IX of the Federal Constitution.
14 Article 125(3) and (4), Part IX of the Federal Constitution.

4

II.

Forums

2.1

Litigation.
2.1.1

Presently, IP disputes may be commenced at the High Court, and may be heard in the High
Court, Court of Appeal, and the Federal Court, depending on the nature of the IP right, thetype of proceeding or the value of the claim. An overview of the appropriate forum tocommence an action for each IP right is set out in the table below.
IP Right

Opposition

Invalidation

Revocation

Infringement

Patents

N/A

High Court

N/AHigh Court

Designs

N/A

N/A

MyIPO / High
Court

High Court

Trademarks

MyIPO

High Court

MYIPO / High
Court

High Court

2.2. Alternative Dispute Resolution.
2.2.1

Beyond litigation, parties can consider alternative dispute resolution to settle their IP
disputes, using institutions such as the Asian International Arbitration Centre (AIAC) which
deals with all types of disputes, including IP disputes. These arealternatives to the adjudication framework described at 1.2 and 1.3

5

C.
I.

PATENTS

Overview of the Patent Application Process
Applicant files Patent
Application

Application not complete
Corrections notreceived

Completed
Application
received

Corrections(3 months to submit
corrections)

Invalid

Date of Filing Issued
Corrections received
Corrections notreceived
Preliminary Examination
Non-compliancewith the Act

Corrections(3 months to submit
corrections)

RefusedAverage time: 3 to 5 years

Accepted

Applications Laid Open for
Public Inspection(18 months from priority date or
filing date)Request for Substantive orModified Substantive
Examination, Deferment orExpedited Examination

Request not received
Withdrawn

Corrections received

Substantive Examination
Non-compliancewith the Act

Corrections /Arguments
not received
Corrections /Arguments(2 months to submit
corrections)

RefusedCertificate of Grant Issued

Appeal to the High Court(Intellectual Property Division)

GazetteFlowchart C-1: Overview of the Patent Application Process

II.

Processing of a Patent Application

2.1

Preliminary Examination. At this stage, the application is examined for formalities compliance. If
the formalities are in order, a Clear Formalities Report is issued. However, if there are deficiencies
6

in the documentation, an adverse report will be issued and the applicant is allowed a period of
three months from the date of mailing of the notification to make any observation on such finding
and to amend the application so as to comply with those requirements,15 otherwise, the applicationis refused.16
2.2

Applications Laid Open for Public Inspection. Once the Registrar is satisfied that the formality
requirements are met, the application will be made available for public inspection after eighteenmonths from the filing date of the application or its priority date, unless the application has been
withdrawn earlier or the application contains information which contravenes public order or morality.
MyIPO does not publish the application in printed form. The details of the application will be madeavailable for public inspection and a copy of the patent specification with any amendments may berequested from MyIPO with payment of prescribed fee.

2.3

Substantive Examination. Within 18 months from the filing date of the patent application, theapplicant is required to request one of the three Substantive Examinations options (i.e. Modified
Substantive Examination, Normal Substantive Examination or Deferred Substantive Examination)
by filing Form 5 together with the prescribed fee of RM 950 (if the form is filed online) or RM 1,100(if the form is filed manually).17 This 18-month period is absolute and non-extendible, and a failure
to make a request for a substantive examination within this period will mean that the application
will be deemed withdrawn, and reinstatement will not be possible. For national phase applicationsin Malaysia, the Applicant is required to file the request for Substantive Examination within four
years from the international filing date of the Patent Cooperation Treaty (PCT) application.

2.4

Divisional Applications. The Applicant has the option to divide the application into two or more
applications within a prescribed time.18 During the substantive examination stage, the Applicant
may file divisional application(s) pursuant to an objection made by the Examiner in his examination
report during prosecution. The divisional application(s) shall be filed within three months from thedate of mailing of the examination report. 19 The Applicant may also voluntarily file divisional
application(s) no later than three months from the date of mailing of the first examination report.

2.5

Certificate of Grant issued and Grant Advertised in Gazette. Upon a successful examination,
the patent will be granted and the Registrar will issue the Certificate of Grant and a copy of thepatent together with a copy of the Examiner's final report,20 and record the patent in the Register.21
Thereafter, the patent particulars and abstract will be advertised in the Government Gazette.
Copies of the full patent specification as granted are made available to the public after grant.

2.6

Notification of Refusal of Application If the Examiner refuses and application or there is no
response from the Applicant within the timeline stipulated in the Act or Regulations, the Registrar
shall issue a written notification to the applicant of his decision and shall state the reasons
therefor.22

2.7

Applicant files an appeal to High Court. An Applicant may contest the Registrar's decision theHigh Court by filing an Originating Summons supported by an affidavit within one month from thedate of issuance of the notification of refusal.

15 Regulation 26(2), Patents Regulations.
16 Section 29(2), Patents Act.
17 Regulation 27(1), Patents Regulations.
18 Section 26B, Patents Act.
19 Regulation 19A(a), Patents Regulations.
20 Section 31(2)(a), Patents Act.
21 Section 31(2)(b), Patents Act.
22 Regulation 28, Patents Regulations.

7

2.8

Effect of decision. Unless the applicant appeals against the Registrar's decision to the High Court,
the Registrar's decision will be final.

2.9

Extensions of time. Unless otherwise expressly directed by the Court, parties may request forextensions of time specified before or after the expiration of the specified time, but such extension
may only be granted once and no subsequent extension will be allowed. 23 Under the current
practice, the term for responding to a substantive examination adverse report may be extended
only once and up to a maximum of six months, with the payment of prescribed fees. The Registrar
has discretion to grant or refuse the request for extension. The Registrar may grant such requests
upon receipt of Form 21 accompanied by the prescribed fee (RM 290 if the form is filed manually
and RM 260 if the form is filed online).24

2.10

Publication of non-final and final decisions. All decisions by the Registry are usually issued in
the English language, but Applicants may also receive decisions in the Malay language for certain
applications. The Registry's decisions will be made to the Applicants in writing. Selected
documents relating to the Registry's decision may be made available to the public upon request
and payment of prescribed fees. Reported judgements issued by the High Court, Court of Appeal,and Federal Court are published in the Official Portal of the Office of the Chief Registrar Federal
Court Of Malaysia (http://www.kehakiman.gov.my/en), the Malayan Law Journal, and CLJ Legal
Network (one of Malaysia's legal online platform for decisions and judgments in Malaysia (see:http://www.cljlaw.com).

III.

Opposition Proceedings

3.1

There are no formal provisions for either a pre-grant and/or post-grant patent opposition procedure.
Any opposition or challenges to the grant of a patent must be filed before the Malaysian High Court.

IV.

Invalidation Proceedings

4.1

Grounds for Invalidation. Section 56(2) of the Patents Act provides that an aggrieved person
may initiate civil proceedings against the patent owner for the invalidation of a patent on thefollowing grounds:(a)the invention as claimed in the patent is not an invention within the definition of the Patents
Act;

(b)

the invention is not patentable;(c)the invention is excluded from protection;(d)the performance of the invention would be contrary to public order or morality;(e)the description or the claims do not comply with the Patents Regulations;(f)any drawings which are necessary for the understanding of the claimed invention have notbeen supplied;

23 Section 30(4), Patents Act.
24 Regulation 53, Patents Regulations.

8

(g)

the right to the patent does not belong to the person to whom the patent was granted; or(h)incomplete or incorrect information has been deliberately provided or caused to be provided
in relation to the request for substantive examination.

4.2

Eligible Persons. Any aggrieved person may institute Court proceedings against the owner of thepatent for the invalidation of the patent.25

4.3

Procedure for Invalidation of a Granted Patent. There are no procedures to challenge thevalidity of a patent at the MyIPO after it has been granted. Any challenges to the grant of a patent
would have to be filed before the High Court. An overview of the procedural steps to invalidate a
granted patent is set out above (see Chapter B: Adjudicatory Bodies and Forum, Section II:
Forum, paragraph 2.1).

4.4

Timeline. The invalidation proceeding at the High Court will usually take between ten to eighteenmonths from filing of the claim to the delivery of the court's decision. An appeal of the trial court's
decision to the Court of Appeal may take another one to two years, and a further appeal to theFederal Court may take an additional one to two years.

4.5

Effect of decision. If the grounds for the invalidation are proven, the Court will grant an orderdeclaring the patent or the claims or parts thereof, as the case may be, as invalid.26 Pursuant to
Section 57 of the Patents Act, when the decision of the Court becomes final, the declaration ofinvalidity will then be recorded in the Register of Patents and also published in the Government
Gazette.27 Any invalidated patent or claim or part thereof will be regarded as null and void from thedate of grant of the patent.28

4.6

Publication of decisions. Reported judgements issued by the High Court, Court of Appeal, andFederal Court are published in the Official Portal of the Office of the Chief Registrar Federal Court
Of Malaysia (http://www.kehakiman.gov.my/en), the Malayan Law Journal, and CLJ Legal Network(one of Malaysia's legal online platform for decisions and judgments in Malaysia (see:http://www.cljlaw.com).

V.

Other Procedures to Challenge the Patentability of a Patent /Invention Before and After Grant

5.1

Pre-Grant Third Party Observations.
5.1.1

5.2

Presently, there are no formal procedures under the Patents Act or Patents Regulations for
submitting pre-grant third party observations or oppositions. Nevertheless, in practice, it ispossible for a third party to informally notify the Examiner in writing with reasons why aparticular pending patent should not be granted. While there is no obligation on the part of
the Examiner to consider the materials forwarded by the third party, such information will
likely receive the attention of the Examiner, which the Examiner may rely on at his discretion.

Post-Grant Patent Re-examination.

25 Section 56(1), Patents Act.
26 Section 56(3), Patents Act.
27 Section 57(2), Patents Act.
28 Section 57(1), Patents Act.

9

5.2.1

Presently, the only recourse for persons to challenge the patentability of an invention is tocommence invalidation proceedings (see Section IV: Invalidation Proceedings). Thereis no available procedure that allows for a person to request for patent to be re-examined
after grant.

VI.

Statistics

6.1

MyIPO Statistics.29
6.1.1

Filings. Patent applications filed with MyIPO and granted between years 2010 to Sep 2020:

2010

2011

2012

2013

2014

2015

2016

2017

2018

2019

2020 (asof Sept)

Application

6,464

6,559

7,027

7,350

7,760

7,907

7,395

7,278

7,493

7,743

4,957

Granted

2,177

2,392

2,501

2,691

2,762

2,908

3,353

5,127

4,382

4,213

4,903

6.1.2

Court Statistics. The Malaysian courts do not publish official statistics about the patentdispute hearings before the courts.

VII.

Case study

7.1

Merck Sharp Dohme Group & Anor. v Hovid Bhd [2019] 9 CLJ 1
7.1.1

In a recent decision, Merck Sharp Dohme Group & Anor. v Hovid Bhd [2019] 9 CLJ 1,
the Federal Court considered whether the adjudication of an independent claim as invalid
would automatically render the claims which were depend on the independent claim invalid,
without the need for the court to consider the validity of each and every dependent claim(s)separately.

7.1.2

Significance. The Federal Court has reversed its earlier judgement in SKB Shutters
Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor ("SKB Shutters").
The legal position expounded in SKB Shutters is that in the event an independent claim isinvalidated, all other claims would consequently be invalidated, without a need for further
evidence to be adduced individually to invalidate each or them; nor was there a requirement
for the court to consider the validity of each claim. It must be emphasized that while theFederal Court is vested with the authority to depart from its earlier decision, in practice, thispower is used sparingly and hence, it is rare for the Federal Court to overrule its earlier
authority.

7.1.3

Facts. The Appellant patent proprietor and its local licensee (Plaintiffs) commenced apatent infringement proceeding alleging that the Respondent (Defendant) had infringed the
194 Patent. In response, the Respondent denied the alleged infringement and29 The data is obtained from MyIPO published statistics set out in Annex A.

10counterclaimed for a declaration that the 194 Patent was invalid. The High Court dismissed
the Plaintiffs' infringement claim and allowed the Defendant's counterclaim on the grounds
that the patent in question is invalid as it is not inventive. On appeal to the Court of Appeal
by the Plaintiffs, the Court of Appeal affirmed the High Court's decision.
7.1.4

Finding. The majority in the Federal Court laid down the following principles:(a)

In determining the validity of a patent, it is essential for the courts to evidentiallyassess each claim separately (whether independent or dependent claim).

(b)

The validity of the dependent claims is contingent upon the form of claim used - i.e.
whether they are completely interdependent claims ('Type 1') or claims withadditional features ('Type 2') - and the basis of challenge to their validity. A trial
court ought to undertake the evidential process of examining each claim separately
to consider the validity of the dependent claims on the basis of merit on each ofthese claims against the patentability requirements under the Patents Act and toascertain the type of claim before it or it may well overlook any features that could
render such a claim independently valid.

(c)

Further, Section 79A(3) of the Patents Act must be read together with Sections
56(3) and 57(2). In essence, amendments per se are not prohibited by the Act; inthe event of a partial invalidity, applicants may amend a dependent claim after court
proceedings.

Accordingly, the case was remitted to the High Court for an assessment on whether eachof the dependent claims possessed independent validity.
7.1.5

Comments. The invalidation of an independent claim does not necessarily lead to an
automatic failure or invalidation of the dependent claims which make reference to the
independent claim in question.

11

D.
I.

REGISTERED DESIGNS

Overview of the Design Application Process
Applicant files Registration of Design
Application
Requirements not met
Formality Examination and Novelty
Search(Does the application fulfill the definition
and requirements?)

No

Amendment &Submission(Within 3 months)

Application
RefusedAll requirements met

Yes

Certificate of Registration

Appeal to the High Court(Intellectual Property Division)
GazetteFlowchart D-1: Overview of the Design Application Process.

II.

Processing of a Design Registration Application

2.1

Examination process.
2.1.1

Formality Examination and Novelty Search. Design applications are only subject toformality examination and novelty search. Substantive examination is not a requirement for
design applications, though in practice, they may be raised by examiners occasionally.
During the formality examination and novelty search, the design examiner may notify theapplicant in writing of objections raised on the formality and novelty requirements, and allow
the applicant an opportunity to make observations on such findings and amend theapplication within three months from the date of the notification30.

2.1.2

Applicant responds to the Written Notice within 3 months. The applicant can respondto the written notice within 3 months from the date of the notice by:(a)

Making observations on such finding; and30 Regulation 19(2), Industrial Designs Regulations.

12

(b)

Amend the application so as to comply with the formal requirements.31

If the amended application is deemed to be in compliance with the formal requirements, itwill proceed to issuance of Registration Certificate and thereafter published in the Gazette.
2.1.3

2.1.4

Registry issues the Registration Certificate or Notification that the Application is
Refused. The Registry is obliged to provide a written notification to the applicant on his
decision to accept or refuse the application or, in the case of a multiple application, to
exclude the particular design which has not complied with the requirements.32(a)

If the formality requirements are met, the Registry will issue the certificate ofregistration and the design will be published in the gazette. 33 The registration
certificate shall be prima facie evidence of the validity of the registration and thefacts stated therein.34(b)

If any of the formality requirements are not met, the Registry will issue a written
notification informing the applicant that the designs application has been refused.
The written notification will include a brief summary of the grounds of refusal.

Appeal to the High Court. If the applicant wishes to contest the notification of refusal ofregistration, an appeal may be made to the High Court.35

2.2

Effect of Decision. Unless the applicant appeals the Registry's decision to the High Court, theRegistry's decision will be final. A registered design is given an initial protection period of five years
from the date of filling,36 and can be extended for a further four consecutive terms of 5 years each.37
The maximum protection period in total is 25 years.

2.3

Publication of Decisions. All decisions issued by the Registry are issued in the Malay language.
Whilst the Registry's decisions will be made to the applicants in writing, they will not be publishedto the public. Reported judgements issued by the High Court, Court of Appeal, and Federal Court
are published in the Official Portal of the Office of the Chief Registrar Federal Court Of Malaysia(http://www.kehakiman.gov.my/en), the Malayan Law Journal, and CLJ Legal Network (one of
Malaysia's legal online platform for decisions and judgments in Malaysia (see:http://www.cljlaw.com).

III.

Opposition Proceedings

3.1

The Industrial Designs Act 1996 does not provide any provision for opposition proceedings.

IV.

Revocation Proceedings

4.1

Grounds for Revocation. Section 27 of the Industrial Designs Act sets out the grounds uponwhich a registered design may be revoked:

31 Section 25(2), Industrial Designs Act.
32 Regulation 19(4), Industrial Designs Regulations.
33 Section 22(1), Industrial Designs Act.
34 Section 22(3), Industrial Designs Act.
35 Section 46, Industrial Designs Act.
36 Section 25(1), Industrial Designs Act.
37 Section 25(2), Industrial Designs Act.

13

(a)

the design has been disclosed to the public prior to the priority date of the application forregistration of the design;38 or(b)

the registration of the design has been procured by unlawful means;39 or(c)for the grant of a compulsory license on the ground that the industrial design is not appliedin Malaysia by any industrial process or means to the article in respect of which it isregistered, to such an extent as is reasonable in the circumstances of the case40

and the Court is entitled to make such order on the application as it considers just.
4.2

Eligible Persons. Any person may apply to revoke a registered design by filing an application forrevocation to the Court.41 The owner of a registered design may also request the Registrar for the
revocation of a registered design of which he is the owner to.42

4.3

Procedure for Revoking a Registered Design. Procedures for revoking a registered design will
differ depending on the relationship of the applicant of the revocation vis-à-vis the design inquestion.
4.3.1

Revocation by the Owner
An application for the revocation of a registered design by the owner of the design inquestion may be made to the Registrar. A revocation request made to the Registrar shallbe made on ID Form 6 accompanied with the prescribed fee (RM 600 if the form is filed
manually and RM 580 if the form is filed online)43 and a full statement of the applicant's
interest on which he intends to rely upon.44

4.3.2

Revocation by a Third Party
A revocation application must be made to the Court by Originating Summons. A copy of
the application and the ID Form 7 must be given to the Registrar by filing it at the MyIPO.45
Upon receipt of ID Form 7, the Registrar will halt any action on the registered design until
a decision has been made by the Court. Where an order is made by the Court, the applicant
must file an office copy of the order with the Registrar. If an order for the revocation of aregistered design is granted, the Registrar will process the Court order and published therevocation notice on the next publication of the Gazette.

4.4

Effect of decision. If an order for the revocation of a registered design is granted by the Court,
the Court may exercise its discretion and revoke the registration of the registered design with effectfrom the priority date of the design, the date of the oral decision,46 or any other date it considers
just.47

38 Section 27(1)(a), Industrial Designs Act.
39 Section 27(1)(b), Industrial Designs Act.
40 Section 27(1)(c), Industrial Designs Act.
41 Section 27(1), Industrial Designs Act.
42 Section 27(2), Industrial Designs Act.
43 Regulation 3 and First Schedule, Industrial Designs Regulations.
44 Regulation 27(1), Industrial Designs Regulations.
45 Regulation 28, Industrial Designs Regulations.
46 So Yin Yit & Anor v Choong Hon Ken & Anor [2018] 1 LNS 1382, at paragraphs [59]-[61]47 Section 27(1), Industrial Designs Act.

14

V.

Rectification of the Register

5.1

Grounds for Rectification. Section 24 of the Industrial Designs Act 1996 sets out the grounds
upon which a registered design may be rectified:(a)the entry was made in the Register without sufficient cause;48(b)

the entry is wrongfully remaining in the Register,49 e.g. where it is contrary to public orderor morality50;(c)there is an element of fraud in the registration, assignment or transmission of a registered
design;51 or(d)

it is in the interest of the public to do so.52

5.2

Eligible Persons. Any aggrieved or interested person may apply to rectify a registered design byfiling an application to the Court.53 The Registrar may make an application to the Court in cases
involving fraud in the registration, assignment or transmission of a registered industrial design orif, in his opinion, it is in the public interest to do so.54

5.3

Procedure for Rectifying a Registered Design. Procedures for rectification of a registered design
will differ depending on the grounds on which the action is based upon.
5.3.1

Rectification at the MyIPO.
An application for the rectification of a registered design on the grounds stipulated inparagraph 5.1 above may be made in the first instance to the Registrar, provided that theRegistrar himself is not the applicant of the rectification action.55 Further, the Registrar isvested with the power to refer any rectification application to the Court at any time ordetermine the question between the applicant and the owner of the registered design after
hearing both parties. 56 An overview of the procedural steps and timelines for therectification of a registered design before the Registrar is set out below.

48 Section 24(1)(a), Industrial Designs Act.
49 Section 13, Industrial Designs Act.
50 Section 13, Industrial Designs Ac).
51 Section 24(1)(c), Industrial Designs Act.
52 Section 24(1)(c), Industrial Designs Act.
53 Section 24(1)(a), Industrial Designs Act.
54 Section 24(1)(c), Industrial Designs Act.
55 Section 24(3), Industrial Designs Act.
56 Section 24(4), Industrial Designs Act.

15

Step 1: Application for Rectification
3 months

Step 2: Owner to file Notice of Opposition
2 months

Step 3: Applicant to file CounterStatement
Subject to a specified time
set by the Registrar

Step 4: Both Parties to file Written
Submission

Step 5: Grounds of Decision

Step 6: Appeal to the High Court
Flowchart D-2: Overview of the procedural steps and timelines for expunging a registered design.
5.3.1.1 Step 1: Application for Rectification. An application shall be made to theRegistrar on ID Form 6 accompanied with the prescribed fee (RM 600 if the form isfiled manually and RM 580 if the form is filed online)57 and a full statement of theapplicant's interest on which he intends to rely upon. 58 A copy of theaforementioned form and statement must be served on the owner of theregistration.59
5.3.1.2 Step 2: Owner to file Notice of Opposition. The owner must, within 3 months
from the date of receipt of the application for rectification of registration, file a Noticeof Opposition which shall include a statement of the grounds he objects to. A copyof the same must be served on the applicant.60 All facts raised in the application forrectification will be deemed accepted if the owner does not file a Notice of
Opposition.61
5.3.1.3 Step 3: Applicant to file Counter-Statement. Within 2 months from the date ofreceipt of the Notice of Opposition, the applicant must file a Counter-Statement
enumerating the grounds on which he replies upon to support his application andthe facts alleged in the Notice of Opposition which he admits (if applicable), and
57 Regulation 3 and First Schedule, Industrial Designs Regulations.
58 Regulation 27(1), Industrial Designs Regulations.
59 Regulation 27(2), Industrial Designs Regulations.
60 Regulation 27(3), Industrial Designs Regulations.
61 Regulation 27(4), Industrial Designs Regulations.

16

serve the owner with a copy of the same at the same time.62 The application shallbe deemed to be abandoned if the applicant fails to do so.63
5.3.1.4 Step 4: Both Parties to file Written Submission. Both the applicant and theowner will be given an opportunity to be heard by filing in their respective written
submissions within a specified time imposed by the Registrar.64
5.3.1.5 Step 5: Grounds of Decision. The Registrar will issue his written decision upon
reviewing the written submissions filed the parties.
5.3.1.6 Step 6: Appeals to High Court. Should a party wish to appeal against theRegistrar's decision, an appeal may be made to the High Court.
5.3.1.7 Extension of Time. Unless otherwise expressly directed by the Court, parties may
request for extensions of time specified in paragraphs 5.3.1.1 to 5.3.1.4 above
before or after the expiration of the specified time.65 The Registrar may grant such
requests upon receipt of the ID Form 13 accompanied by the prescribed fee (RM
300 if the form is filed manually and RM 280 if the form is filed online).66
5.3.1.8 Publication of decisions. Whilst the Registry's decisions will be made to theapplicants in writing, they will not be published to the public.
5.3.2

Rectification at the IP Court
Generally, an application should be made to the Court by Originating Summons. A copy of
the application and the ID Form 7 must be given to the Registrar by filing it at the MyIPO.67
Where an order is made by the Court, the applicant must file an office copy of the orderwith the Registrar. If a rectification of the Register is required, in addition to an office copyof the order, the applicant must file ID Form 8 and the prescribed fee (RM 200 if the form
is filed manually and RM 180 if the form is filed online).68

62 Regulation 27(5), Industrial Designs Regulations.
63 Regulation 27(6), Industrial Designs Regulations.
64 Regulation 27(7), Industrial Designs Regulations.
65 Section 43, Industrial Designs Act.
66 Section 27(1)(a), Industrial Designs Act

and Regulation 43, Industrial Designs Regulations.

67 Regulation 28, Industrial Designs Regulations.
68 Regulation 29, Industrial Designs Regulations.

17

VI.

Statistics

6.1

MyIPO Statistics.69
6.1.1

Filings. Design applications filed with MyIPO and registrations granted between years
2010 to Sep 2020:

Type / Year

2010

2011

2012

2013

2014

2015

2016

2017

2018

2019

2020 (asof Sept)

Application

1,677

1,871

2,082

2,053

1,882

1,762

1,630

1,814

1,845

1,904

1,213

Registration

1,598

1,641

1,924

2,001

1,891

1,301

1,900

1,379

1,475

1,238

916

6.1.2

Design disputes. The MyIPO does not publish official statistics about design disputes
decided by MyIPO.

6.2

Court Statistics. The Malaysian courts do not publish official statistics about the design dispute
hearings before the courts.

VII.

Case Study
There have been no recent Malaysian cases reported in relation to revocation proceedings brought
under the Industrial Designs Act 1996.

69 The data is obtained from MyIPO published statistics set out in Annex A.

18

E.
I.

TRADEMARKS

Overview of the Trademark Application Process
Applicant does not fulfil theformality requirements

Applicant files Trademark
Application

Total Provisional
RefusalFormality Examination(Does it fulfil the formality
requirements?)

No

Provisional
RefusalNo response
from applicant

Applicant responds to the provisional
refusal and the Registrar accepts thetrademark for registration

Yes

Application
withdrawn
No response
from applicant

Substantive Examination(Does it comply with the statutory
requirements of registration?)

No

Provisional
RefusalApplicant responds to the provisional refusal and theRegistrar accepts the trademark for registration

Yes

Acceptance and Publication in
the Intellectual Property Office
JournalNo opposition

Application does not meetthe statutory requirementsof registration
Total Provisional
Refusal

Opposition by
third party
Opposition Proceedings

Third party's opposition
successful

Third party's
opposition
unsuccessful

Application
Refused

Trademark RegisteredAppeal to the High Court(Intellectual Property Division)

Flowchart E-1: Overview of the Trademark Application Process.

II.

Processing of a Trademark Application

2.1

Examination process.
2.1.1

Applicant Responds to Provisional Refusal. During the examination process, if theapplication does not fulfil the formality or substantive requirements for registration of a
trademark, the Registrar shall inform the applicant the grounds of provisional refusal by a19

written notice. The applicant shall be allowed the opportunity to respond to the provisional
refusal by:-

2.1.2

2.1.3

(a)

making representations either in writing, or by applying to the Registrar for a hearing
by filing form TMC1 with the payment of RM 150 (per class);(b)

amending the application so as to meet the conditions, amendments, modifications
or limitations imposed or directed by the Registrar; or(c)furnishing additional or any other information or evidence by way of statutory
declaration and/or orally.70

Registry Accepts Application for Publication or Issues a Decision Refusing theApplication.
(a)

If the Registrar is satisfied that the application fulfils the requirements for registration,
the Registrar may accept the application, whether absolutely or subject toconditions, amendments, modifications or limitations71, and thereafter publish theapplication in the Intellectual Property Office Journal.72 The Registrar may issue awritten notification of the publication to the applicant.73(b)

If the Registrar maintains the objections raised, such refusal shall be a total
provisional refusal. The total provisional refusal must be notified to the applicant inwriting.74 The applicant can request for the written grounds of decision by filing
Form TMC3/ TMC4 together with a payment of RM 1,000 within two months (nonextendible)75 from the date of the Registry's decision.76

Applicant files an appeal to High Court. An applicant can contest the Registry's groundsof decision by filing an appeal with the High Court within one month from the date of thedecision.77 Subject to the Registrar's approval and the payment of the prescribed fee of RM
100 (per month), an extension may be obtained for a period not extending two months.78

2.2

Effect of Decision. Unless the applicant appeals the Registry's decision to the High Court, theRegistry's decision will be final.

2.3

Publication of Decisions. All decisions issued by the Registry are issued in the English language.
Whilst the Registry's decisions will be made to the applicants in writing, they will not be publishedto the public.

III.

Opposition Proceedings

3.1

Grounds for opposition. Section 34 of the Trademarks Act set out the grounds upon which a
trademark application which has been accepted for registration by the Registrar of Trademarks
and published may be opposed, which include grounds for refusal of registration as set out under
Sections 23 and 24 of the Trademarks Act.

70 Regulation 17(1), Trademarks Regulations.
71 Regulation 18(1), Trademarks Regulations.
72 Section 31, Trademarks Act.
73 Regulation 18(2), Trademarks Regulations.
74 Regulation 17(5), Trademarks Regulations.
75 Regulation 17(7), Trademarks Regulations.
76 Regulation 17(6), Trademarks Regulations.
77 Regulation 17(9), Trademarks Regulations.
78 Regulation 17(10), Trademarks Regulations.

20

3.1.1

Section 23: Absolute Grounds for Refusal of Registration.
3.1.1.1 Trademarks that fall under one or more of the following circumstances:

3.1.2

(a)

signs not capable of being represented graphically and not capable ofdistinguishing goods or services of one undertaking from another;(b)devoid of any distinctive character;(c)descriptive of the kind, quality, quantity, intended purpose, value,geographical origin, the time of production of goods or of rendering ofservices, or other characteristics of goods or services;(d)generic (common in trade);(e)sign consists exclusively of the shape which results from the nature of thegood, the shape which is necessary to obtain a technical result, or the shapewhich gives substantial value to the goods;(f)consists exclusively of the name of a country or contains or consists ofrecognized geographical indications;(g)deceptive or likely to cause confusion;(h)contrary to public policy or morality; or(i)

use is prohibited in Malaysia by law.

Section 24: Relative Grounds for Refusal of Registration.
3.1.2.1 Trademarks that are identical to an earlier mark79 or likely to cause confusion to the
public under the following circumstances:

No.

Application Mark

Goods/Services

Other requirements(i)

Identical to earlier markGoods/Services identical

-

(ii)

Identical to earlier markGoods/Services similar(iii)

Similar to earlier markGoods/Services identicalor similar(iv)

Identical or similar to awell-known trademark
which is not registered •Goods/Services identical• There exists a likelihood ofconfusion on the part of the
public.

• Third party mark is a wellknown trademark in
Malaysia.

79 The following qualifies as an "earlier mark" under the Trademarks Act, Section 5: (i) a registered or pending trademark or aninternational trademark (designating Malaysia) whose date for application is earlier than that of an Application Mark (taking into accountany priority claims made in respect of the trademarks). This includes pending applications, provided that the trademark is eventuallyregistered; (ii) a registered trademark which, at the date the Application Mark was filed (taking into account any priority claims made in
respect of the trademarks), is well known in Malaysia; or (iii) an unregistered trademark which, at the date the Application Mark was
filed (taking into account any priority claims made in respect of the trademarks), is well known in Malaysia and the owner is from a
Paris Convention or World Trade Organisation ("WTO") country or is domiciled in and has a real and effective industrial or commercial
establishment in a Paris Convention or WTO country. This is regardless of whether the owner of the well-known trademark carries on
business, or has any goodwill in Malaysia (see: Section 76(1) of the Trademarks Act).
21

No.

Application Mark

Goods/Services

Other requirements(v)

Identical or similar to awell-known trademark
which is registered

Goods/Services not
identical and dissimilar• Third party mark is a wellknown trademark in
Malaysia;• Use of the application markwould indicate a connection
between the applicant's
good/services and the
proprietor of the earlier
trademark;• There exists a likelihood ofconfusion on the part of the
public; and• Such use is likely to damage
the interests of the proprietorof the earlier trademark.

3.1.2.2 Trademarks will also not be registered if their use in Malaysia is liable to beprevented by virtue of any law that protects unregistered trademarks (such as thelaw of passing off) or by virtue of an earlier right (such as the copyright or industrial
designs).80
3.1.3

Section 34: Grounds of Opposition
3.1.3.1 Prior rights of a registered proprietor by virtue of its continuous use of a trademark
before the use of the applicant’s trademark or from a date before the filing of theapplication by the applicant;81
3.1.3.2 Any grounds under Section 23 or 24 (see: Section III, paragraphs 3.1.1 and 3.1.2);
3.1.3.3 The applicant is not the proprietor of the trademark; or3.1.3.4 The opposed trademark is identical or similar to a well-known trademark would leadto the following circumstances:No.

Application Mark

Goods/Services

Other requirements(i)

Identical to wellknown trademark in
Malaysia

Goods/Services not
identical or notsimilar• Use of the application markwould indicate a connection
between the applicant's
good/services and the•

80 Section 24(4), Trademarks Act.
81 Section 34, Trademarks Act.

22

No.

Application Mark

Goods/Services(ii)

Similar to wellknown trademark in
Malaysia

Goods/Services not
identical or notsimilar

Other requirements
proprietor of the earlier
trademark;• There exists a likelihood ofconfusion on the part of the
public; and• Such use is likely to damage
the interests of the
proprietor of the earlier
trademark.

(a)This may only be raised to oppose the registration of an application forregistration made on or after 27 December 2019.82

3.2

Eligible Persons. Any person may oppose a trademark registration by commencing opposition
proceedings.83

3.3

Procedure for Opposition Proceedings. An overview of the procedural steps and timelines for
opposing a trademark application for registration is set out below.

82 Section 34(4), Trademarks Act.
83 Section 35(1), Trademarks Act.

23

Trademark published in Trademarks
Journal
2 months

Step 1: Notice of Opposition
2 months

Step 2: Applicant to file
Counterstatement
2 months

Step 3: Opponent to file evidence
2 months

Step 4: Applicant to file evidence
2 months

Step 5: Opponent to file evidence in
reply (optional)

Step 6: Parties to file Written
Submissions

Step 7: Grounds of Decision
1 monthStep 8: Appeal to High Court
Flowchart E-2: Overview of the procedural steps and timelines for opposing a trademark application forregistration.
3.3.1

Step 1: Notice of Opposition. Opposition proceedings can be initiated by filing Form
TMD1 (Notice of Opposition) which shall include a statement of grounds setting out the
grounds specified in Section 34 upon which the opposition action is based on84 (together
with payment of RM 950 in respect of each class). A copy of the same must be served on
the trademark applicant at the time of filing the notice of opposition.85

84 Section 35(2), Trademarks Act.
85 Regulation 23(8), Trademarks Regulations.

24

3.3.1.1 Under Regulation 23(4) and (5) of the Trademarks Regulations, if an application for
opposition is made on the basis of a registered trademark or a trademark in respectof which an application of registration of the trademark has been made, thestatement must include the following details: (a) a representation of that trademark;(b) details of the authority with which the trademark is registered/ applied for;(c) the registration/ application number of that trademark; and(d) the goods or services in respect of which that trademark is registered/applied for and the opposition is based.
3.3.1.2 Any opposition based on an unregistered trademark or other sign or by virtue ofearlier rights (see: Section III, paragraph 3.1.2.2) must include the representationof that trademark or sign and the goods and services in respect of which protection
is claimed in the statement.86
3.3.1.3 If the opponent fails to comply with any requirement in relation to the notice of
opposition, the opposition shall be deemed never to have been made.87
3.3.1.4 The opponent must file an affidavit of service with the Registrar within fourteen days
from the date of sending the copy of the notice of opposition to the applicant, where
the affidavit of service shall contain the proof of the date of receipt of the notice of
opposition by the applicant, failing which, the opposition shall be deemed
withdrawn.88
3.3.2

Step 2: Applicant to File Counterstatement. The applicant must, within 2 months fromthe date of receipt of the notice for opposition, file a Counterstatement in Form TMD6 with
the Registrar to contest the application (together with payment of RM 350 in respect ofeach class).89 A copy of the same must be served on the opponent at the time of filing the
document.90 The applicant shall file an affidavit of service with the Registrar within fourteendays from the date of sending the copy of the Counterstatement to the opponent, and theaffidavit of service must contain proof of the date of receipt by the opponent, failing which,the application for registration shall be deemed withdrawn. 91 The application will bedeemed withdrawn if the applicant fails to file the Counterstatement within the specified
period.92

3.3.3

Step 3: Opponent to File Evidence. The opponent is required to file evidence in supportof its opposition via a Statutory Declaration within 2 months from the date of receipt of theCounterstatement.93 A copy of the same must be sent to the applicant at the time of filingthe evidence. 94 It is imperative for the opponent to file an affidavit of service with theRegistrar within fourteen days from the date of sending a copy of the evidence to theapplicant, where the affidavit of service shall contain proof of the date of receipt of the

86 Regulation 23(6), Trademarks Regulations.
87 Regulation 23(7), Trademarks Regulations.
88 Regulation 23(9), Trademarks Regulations.
89 Regulation 24(1), Trademarks Regulations.
90 Regulation 24(2), Trademarks Regulations.
91 Regulation 24(3), Trademarks Regulations.
92 Regulation 24(4), Trademarks Regulations.
93 Regulation 25(1), Trademarks Regulations.
94 Regulation 25(2), Trademarks Regulations.

25

evidence by the applicant.95 If any of the aforementioned requirements are not met, theopposition shall be deemed withdrawn.96

3.4

3.3.4

Step 4: Applicant to File Evidence. The applicant shall file evidence in support of its
application via a Statutory Declaration within 2 months from the date of receipt of the
opponent's evidence.97 A copy of the same must be sent to the opponent at the time offiling the evidence.98 It is imperative for the applicant to file an affidavit of service with theRegistrar within fourteen days from the date of sending a copy of the evidence to the
opponent, where the affidavit of service shall contain proof of the date of receipt of theevidence by the opponent.99 If any of the aforementioned requirements are not met, theapplicant will be deemed to have withdrawn its application for registration of the
trademark.100

3.3.5

Step 5: Opponent to File Evidence in Reply (optional). The opponent may, within 2months from the date of the receipt of the applicant's evidence, file further evidence for the
purpose of strictly replying to the applicant's evidence.101 This evidence in reply may bemade by way of a Statutory Declaration, a copy of which must be sent to the applicant at
the same time.102 Any further evidence can only be filed with leave from the Registrar
thereafter.103

3.3.6

Step 6: Parties to file Written Submissions. Upon completion of the filing of evidence,
the Registrar shall give notice to both the opponent and applicant to submit written
submissions relating to the opposition within 2 months from the date of issuance of thenotice.104

3.3.7

Step 7: Grounds of Decision. The Registrar will issue a written decision setting out his
decision and its grounds after considering the evidence, exhibit and any written
submission.105

3.3.8

Step 8: Appeal to High Court. A party can contest the Registrar's decision by filing anappeal to the High Court within 1 month from the date of issuance of the decision.106 Either
party may apply to the Registrar for an extension of time to file an appeal in Court for aperiod not exceeding 2 months. 107 No further material for consideration or grounds of
opposition shall be allowed except by leave of the Court.108

Extension of Time. Parties may request for extensions of time at any point during the proceedings.
The Registrar will grant such requests if it is satisfied that the circumstances are such as to justify
an extension of time.109 The applicant or opponent may request for an extension of time by filingform TMK1 with the payment of RM 50 (for each application), and shall explain the circumstances

95 Regulation 25(3), Trademarks Regulations.
96 Regulation 25(4), Trademarks Regulations.
97Regulation 26(1), Trademarks Regulations.
98 Regulation 26(2), Trademarks Regulations.
99 Regulation 26(3), Trademarks Regulations.
100 Regulation 26(4), Trademarks Regulations.
101 Regulation 27(1) and (2), Trademarks Regulations.
102 Regulation 27(1), Trademarks Regulations.
103 Regulation 28, Trademarks Regulations.
104 Regulation 30, Trademarks Regulations.
105 Section 35(8), Trademarks Act, and Regulation 33(1) Trademarks Regulations.
106 Regulation 33(3), Trademarks Regulations.
107 Regulation 33(4), Trademarks Regulations.
108 Section 35(10)(c), Trademarks Act.
109 Regulation 59(2), Trademarks Regulations.

26

in sufficient detail to allow the Registrar to determine if the extension is justified.110 The request foran extension of time may be applied for a period not exceeding 6 months.111
3.5

Effect of Decision. The Registrar's decision will be final, unless parties choose to file an appeal
against the Registrar's decision to the High Court (and file a subsequent appeal against the High
Court's decision at the Court of Appeal).112

3.6

Publication of Decisions. All decisions issued by the Registrar will not be published to the public.
Reported judgements issued by the High Court, Court of Appeal, and Federal Court are publishedin the Official Portal of the Office of the Chief Registrar Federal Court Of Malaysia(http://www.kehakiman.gov.my/en), the Malayan Law Journal, and CLJ Legal Network (one of
Malaysia's legal online platform for decisions and judgments in Malaysia (see:http://www.cljlaw.com).

IV.

Revocation Proceedings

4.1

Grounds for Revocation. Sections 45 and 46 of the Trademarks Act lay down the grounds uponwhich a registered trademark may be revoked.
4.1.1

Section 45: Revocation of registration by Registrar113
4.1.1.1 The Registrar had failed to take the notice of opposition filed into account indeciding to register the trademark; or
4.1.1.2 The Registrar had failed to take the application for extension of time for filing a
notice of opposition made before the registration into account in deciding to register
the trademark.

4.1.2

Section 46: Revocation of registration by Court114
4.1.2.1 Within a period of 3 years following the date of issuance of the notification ofregistration, the trademark has not been used in good faith in Malaysia, and there
are no proper reasons for the non-use;
4.1.2.2 The use of the trademark has been suspended for an uninterrupted period of 3
years and there are no proper reasons for non-use;
4.1.2.3 The trademark has become the common name in the trade due to acts or inactivityof the registered proprietor; or
4.1.2.4 The use of the trademark in relation to goods or services is liable to mislead the
public.

4.2

Eligible Persons. A revocation by the Registrar may be initiated by an opponent to the registrationof a trademark or the Registrar on their own motion. An aggrieved person may apply to revoke aregistered trademark in whole or in part by filing an application for revocation to the Court.115

110 Regulation 59(1), Trademarks Regulations.
111 Regulation 31(2), Trademarks Regulations.
112 Section 35(10)(c), Trademarks Act.
113 Section 45(1), Trademarks Act.
114 Section 46(1), Trademarks Act.
115 Section 46(1), Trademarks Act.

27

4.3

Procedure for Revoking a Registered Trademark. Procedures for revoking a trademark will
differ depending on whether the revocation action is commenced before the Registrar or High Court(see Chapter B: Adjudicatory Bodies and Forum, Section II: Forum, paragraph 2.1).
4.3.1

Revocation of registration by Registrar
4.3.1.1 Procedure. It is mandatory for the Registrar to give a notice of the proposed
revocation to the registered proprietor of the trademark and any person who has aright or an interest in the trademark before the revocation of the mark. The Registrar
must also allow the registered proprietor of the trademark or any person claiming aright or an interest in the trademark an opportunity to be heard, and they may apply
to the Registrar for a hearing by filing Form TMC1 with the payment of RM 150 (foreach class).
4.3.1.2 Effect of Decision. If the Registrar decides to revoke the registration of the
trademark, the registration shall be deemed to have never occurred and it shall be
subject to further examination or proceedings as determined by the Registrar. The
High Court's decision will be final unless parties choose to file an appeal against
the High Court's decision to the Court of Appeal.

4.3.2

Revocation of registration by Court
4.3.2.1 Procedure. Any person who files an application in the Court for the revocation ofregistration by the Court must furnish to the Registrar Form TMF3 with the payment
of RM300 (for each class) along with the following particulars:(a)the registration number of the subject trademark;(b)

the goods or services affected by the application;(c)the name of the registered proprietor of the of the subject trademark;(d)the number of the writ of summons or originating summons;(e)the date of filing of the application in Court;(f)

the Court of hearing;(g)

the parties to the application; and(h)the cause of action of the application.116

4.3.2.2 Effect of Decision. If the Court decides to revoke the registration of the trademark,the revocation is deemed to take effect from the date of application to the Court
unless the Court is satisfied that the grounds of revocation exists on an earlier
date.117 The High Court's decision will be final unless, unless parties choose to filean appeal against the High Court's decision to the Court of Appeal.
4.4

Publication of Decisions. Whilst the Registry's decisions will be made to the parties in writing,they will not be published to the public. Reported judgements issued by the High Court, Court ofAppeal, and Federal Court are published in the Official Portal of the Office of the Chief Registrar
Federal Court Of Malaysia (http://www.kehakiman.gov.my/en), the Malayan Law Journal, and CLJ

116 Regulation 51, Trademarks Regulations.
117 Section 46(5), Trademarks Act.

28

Legal Network (one of Malaysia's legal online platform for decisions and judgments in Malaysia(see: http://www.cljlaw.com).

V.

Invalidation Proceedings

5.1

Grounds for Invalidation. Section 47 of the Trademarks Act sets out the grounds upon which a
registered trademark may be invalidated:(a)

The trademark was registered in breach of the absolute or relative grounds of refusals (seeSection III: Opposition Proceedings, paragraphs 3.1.1 and 3.1.2); or(b)

There was fraud in the registration or the registration was obtained by misrepresentation.118

5.2

Eligible Persons. An aggrieved person may apply to invalidate a registered trademark in whole orin part by filing an application for invalidation.119

5.3

Procedure for Invalidating a Registered Trademark. The invalidation proceedings will follow thesame procedure as revocation proceedings (see Section IV: Revocation Proceedings,
paragraph 4.3.2.1)120 save that the party initiating the revocation would have to file Form TMF4
with the payment of RM 300 (per class), instead of TMF3.

5.4

Effect of decision. If the registration of the trademark is declared invalid, the registration shall bedeemed never to have been made. However, past and closed transactions shall not be affected.
The High Court's decision will be final unless, unless parties choose to file an appeal against theHigh Court's decision to the Court of Appeal.

5.5

Publication of decisions. Reported judgements issued by the Malaysian courts are published in
the Official Portal of the Office of the Chief Registrar Federal Court Of Malaysia(http://www.kehakiman.gov.my/en), the Malayan Law Journal, and CLJ Legal Network (one of
Malaysia's legal online platform for decisions and judgments in Malaysia (see:http://www.cljlaw.com).

VI.

Statistics

6.1

MyIPO Statistics121.
6.1.1

Applications
Registrations

Filings. Trademark applications filed with MyIPO and registrations granted between years
2010 to Sep 2020:

2010

2011

2012

2013

2014

2015

2016

2017

2018

2019

2020
(as ofSept)

26,37028,83331,87632,22534,57135,923

39,10741,09343,656

46,53028,417

14,294

23,81926,076

26,97927,42828,80032,80633,22534,566

19,481

20,505118 Section 47(6), Trademarks Act.
119 Section 47, Trademarks Act.
120 Regulation 51, Trademarks Regulations.
121 The data is obtained from MyIPO published statistics set out in Annex A.

29

6.1.2

Trademark disputes. The MyIPO does not publish official statistics about trademark
disputes (Trademark oppositions) decided by MyIPO.

6.2

Court Statistics. The Malaysian courts do not publish official statistics about the trademark dispute
hearings before the courts.

VII.

Case Study

7.1

Ooi Siew Bee (trading under the name and style Sykt Perniagaan Eng Leong) & Ors v Zhu
Ge Kong Ming Sdn Bhd [2020] 4 MLJ 815
7.1.1

The decision of Ooi Siew Bee (trading under the name and style Sykt Perniagaan Eng
Leong) & Ors v Zhu Ge Kong Ming Sdn Bhd [2020] 4 MLJ 815 stems from an
infringement action (the "Previous Proceedings") brought by the Respondent in this case(the "Current Proceedings") before the High Court.

7.1.2

Facts of the Previous Proceedings. The Respondent of this case (Plaintiff in the Previous
Proceedings) is a Malaysian company engaged in the business of manufacturing,
wholesaling and retailing Chinese prayer materials, including praying papers bearing the
respondent’s registered trademarks. The Appellants (Defendants in the Previous
Proceedings) consist of a sole proprietor who sells, amongst others, Chinese prayer papers
and prayer paper boxes, and the importer and dealer of the aforementioned prayer papers
and paper boxes. The Respondent had filed an action for, amongst others, trademark
infringement of the Respondent's registered trademark "" (the "Respondent'sMark"). The High Court concluded the Respondent's Mark is, amongst others, common
words in the Mandarin language and had accordingly dismissed the Respondent's claim
for infringement. The Respondent appealed against the High Court's decision to the Courtof Appeal, and the Court of Appeal had dismissed the Respondent's claim on the samegrounds.

7.1.3

Facts of the Current Proceedings. Thereafter, the Appellant of this case (defendant in
the Previous Proceedings) has brought a claim against the Respondent in the High Courton the grounds that the Respondent's Mark was registered in contravention of the Sections
10 and 14 of the Trade Marks Act 1976 (the "Old Trade Marks Act") and ought to be
revoked in accordance with Section 45 of the Old Trade Marks Act. The High Court has
dismissed the Appellant's claim on the basis, amongst others, that the Respondent's Markhas been registered for more than 7 years and hence, Section 37 of the Old Trade Marks
Act applies and accordingly, the Appellant cannot expunge the Respondent's Mark outsideof Section 37 of the Old Trade Marks Act. The Appellant has hence appealed against theHigh Court's decision to the Court of Appeal.

7.1.4

Issue on Appeal. Whether the findings in the Previous Proceedings that the words "" is a common word used in relation to prayer papers was caught by the doctrineof res judicata.

7.1.5

Finding. The Court has found that the current proceedings is estopped by the doctrine ofres judicata. Therefore, this is a case for appellate intervention as it was wrong for the High
Court in the current proceedings to decide on the issue on whether the Respondent's Markis descriptive as the Court of Appeal had in the Previous Proceedings dismissed the30respondent's claim for infringement of the Respondent's Mark on the basis that the Chinesecharacters in the Respondent's Mark are common descriptive words in its context. As thisissue has been decided by the Courts in the Previous Proceedings, the parties cannot
reopen the case. To allow the parties to reopen the matter would risk conflicting decisionon the issue, which is what the doctrine of res judicata aims to prevent. Accordingly, thejudgment in the Previous Proceedings is upheld, and the appeal is allowed so that the
Respondent's Mark can be rectified and expunged.
7.1.6

Comments. While this case is premised on the Old Trademarks Act, it is significant as it
illustrates the application of the doctrine of res judicata vis-à-vis trademark infringement
actions. The doctrine of res judicata may apply when the cause of action or the subject
matter of the dispute in the earlier proceeding is similar to that in the later proceedings,
notwithstanding that the causes of action are premised on different legislative provisions.

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31

ANNEX A
No.

Year

Statistics' Source1.

2010 - Sept2020

http://www.myipo.gov.my/en/statistic-application-registration/#toggle-id-1

2.

2010 - Sept2020

http://www.myipo.gov.my/en/statistic-application-registration/#toggle-id-3

3.

2010 - Sept2020

http://www.myipo.gov.my/en/statistic-application-registration/#toggle-id-2

32

Japan Patent Office (JPO) Commissioned Survey
Survey on the Appeal, Opposition, Revocation, andInvalidation Procedures Related to Patents,
Designs, and Trademarks in Malaysia

Published by
Japan External Trade Organization (JETRO)Singapore OfficeIntellectual Property Division

In cooperation with
Baker McKenzie Wong & Leow

March 2021

This report presents the findings of the survey conducted in 2020 by JETRO Singapore Office incooperation with Baker McKenzie Wong & Leow. There are possibilities that relevant laws maychange, and although the report is intended to be accurate, the publisher does not represent or
warrant the truth or accuracy of the information provided herein.
Copyright(C) 2021 JPO/JETRO. All rights reserved