Hafiz Zubir & Co.



On 9th April 2019, the Trademark Act Bill 2019 has gone through the First Reading at Dewan Rakyat and it was presented by YB Tuan Chong Chieng Jen, Deputy Minister of Kementerian Perdagangan Dalam Negeri dan Hal Ehwal Pengguna(KPDNHEP)[1]. This step was taken in conjunction with Malaysia’s decision to finally accede the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks 1989 (“Madrid Protocol”).  Madrid Protocol currently has 104 countries acceding to it with Canada as the latest addition to the list. In order to accede Madrid Protocol, Malaysia has to amend the current Trademark Act 1976 in adhering to Madrid Protocol before acceding it. Our neighboring countries such as Singapore and Indonesia have acceded to the Madrid Protocol in 2000 and 2017 respectively [2].

Among the sections which are proposed to be inserted in the new Act are as the following:

  • Definition of sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, scent, hologram, positioning, sequence of motion or any combination thereof;
  • Definition of Well-Known Trademark and Earlier Trademark are added – Section 4 and 5;
  • Definition of infringing goods/materials/articles and counterfeit goods/trademarks are added – Section 6;
  • Use of trademark for export trade constitutes as use of trademark – Section 8;
  • Application in multiple classes can be made in a single application – Section 18;
  • If the application of the trademark has been accepted, the Registrar shall register the trademark and issue a notification with a seal of the Registrar to the proprietor. If the Registrar wants to obtain the certificate of registration, it shall be issued upon application and payment of prescribed fee – Section 36;
  • If a person can prove that the threats of infringement proceedings by a person (i.e lawyers) is groundless, he can get reliefs such as injunction from the threat and damages. – Section 61;
  • Offence of counterfeiting of trademark, falsely applies a registered trademark to goods or services, making/possessing article for committing offence and importing/selling goods with a falsely applied trademark may be liable to a fine and/or imprisonment – Section 99 -102;
  • Any person who falsely represents a trademark is a registered trademark with the knowledge it is false may be liable to a fine – Section 104;
  • Any communication between a professional legal adviser and his client is a privileged communication – Section 116; and
  • Any person who tips off any other person if he knows/has reason to believe that investigation is being or going to be conducted or disclosure has been made by an Assistant Controller, he may be liable to a fine. – Section 124.

According to WIPO, one of its main advantages of Madrid system is an applicant can simply file a single application with a single prescribed fee to International Bureau of WIPO in which it will be registered up to 120 countries instead of filing separately to each country the applicant desires to register. It is more convenient for the applicant to manage their trademark under one centralized system and to extend protection to the applicants in new markets. The renewal process can be done under a single application as well. [4]

YB Tuan Chong Chieng Jen also believes that this move will offer trademark protection for businesses and assist them in expanding their products internationally.  This move has been long due since 2013 when Malaysia expressed the intention to accede to Madrid Protocol at National Seminar on Madrid Protocol jointly organized by the Ministry of Domestic Trade, Co-Operatives and Consumerism, Intellectual Property Corporation of Malaysia (“MyIPO”) and World Intellectual Property Organization (“WIPO”) in 2011.[5]

Even so, International Trademark Association does raise the disadvantages of Madrid Protocol, which is: Central Attacks. An opponent may bring an opposition to the Applicant’s mark at the Home Office, i.e.  MyIPO within 5 years of the application and it may affect the status of the application of all other countries as well since it is centralized. The application by the Applicant may be cancelled during the 5-year period. The Applicant also still need the assistance of local agent for opposition/prosecution proceeding. If it is cancelled, the Applicant may apply through national registration of the Home Office. However, this is counterproductive to the one of the aims of Madrid Protocol, convenience and cost saving. In addition, some of the countries the applicant wishes to register may be not one of the parties of Madrid Protocol.

Nevertheless, more advantages are anticipated from Madrid Protocol in assisting the local businesses to expand their business internationally and helping Malaysian economy in the future. It is hope that this step will attract more foreign companies to seek business opportunities and invest in Malaysia.


[1] https://www.parlimen.gov.my/bills-dewan-rakyat.html?uweb=dr&lang=en

[2] https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8

[3] https://www.parlimen.gov.my/files/billindex/pdf/2019/DR/DR10%20BI.pdf – Trademark Bill 2019

[4] https://www.wipo.int/treaties/en/registration/madrid/summary_madrid_marks.html – Summary of Madrid System

[5] http://www.asiaiplaw.com/search/article/501 – Malaysia And Madrid System: Are We There Yet?

[6] https://www.inta.org/TrademarkBasics/…/INTAMadridProtocolPresentation.pptx –      The Madrid Protocol: Key Benefits, Risks and Strategies


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