Dear valued clients, colleagues and friends,

With the enactment of the latest Trademark Act 2019, our Intellectual Property partner, Indran Shanmuganathan, has authored two books published by renowned publishers, Sweet & Maxwell namely “Trademark Act 2019 with overview by Indran Shanmuganathan” and “The Annotated Trademarks Act 2019” which is a part of Malaysian Legislation Series. These two books explore amongst other issues, reciprocal provisions in other jurisdictions and the long awaited ascension of Malaysia subscribing to the Madrid Protocol setting itself in alignment with most IP savvy jurisdictions in the world.

Please feel free to contact Indran if you would like to discuss any issues raised in the guide.

Trademark Act 2019 with overview by Indran Shanmuganathan

The chapter provides anoverview which highlights the following salient features of the new Act:

• Greater clarity on the registration of non-traditional trademarks;
• The registration of collective marks;
• Removal of the concepts of defensive trademarks and associated trademarks;
• Multi-class filings, divisions and mergers of applications previously unavailable under the Trade Marks Act 1976;
• Greater clarity on the examination of trademarks;
• New provisions on opposition and appeal procedures;
• Rearrangement of the provisions pertaining to cancellation actions;
• Illuminates the provisions pertaining to trademark infringement, including acts amounting to infringement, secondary liability, usage of signs, available defences and procedures and remedies (including the new remedy for groundless threat of infringement proceedings);
• Criminal offences relating to trademark infringement (previously found under the Trade Descriptions Act 2011) are now consolidated and provided for under the Trade Marks Act 2019;
• Commercialisation of trademarks;
• New provisions pertaining to the role and administrative procedure of trademark agents.

The Annotated Trademarks Act 2019

The introduction of the Trademarks Act 2019 to pave the way for Malaysia to join the Madrid Protocol saw the repeal of the Trade Marks Act 1976. The implementation of the Trademarks Act 2019 is a major change to the Malaysian trademark regime, bringing it in line with the trademark statutes in other major jurisdictions including the UK and Singapore.

This publication,The Annotated Trademarks Act 2019, provides invaluable section-by-section annotations to the Trademarks Act 2019, throwing light on the application and interpretation of the provisions of the Act. It is certainly a resource which will greatly assist in the understanding and application of the new trademark system in Malaysia.

The key terms and phrases in each section are explained by reference to local and foreign case law as well as academic writing. This publication facilitates quick and easy research with the inclusion of cross-reference from the provision being annotated to comparative provisions from other jurisdictions. The annotations should prove to be very useful for lawyers, judges, trademarks agents, court officers and law students.

KEY FEATURES:

• Section-by-section annotations to the Trademarks Act written in simple and straightforward style
• Annotations supported by copious citation of case authorities
• Procedural requirements stipulated by the Trademarks Regulations are included to supplement the workings of the Act
• All defined terms are identified with direct cross-references to the provision where each definition is found
• Comparative provisions from Singapore, UK and Australia Trademark statutes are provided where available to aid further research
• Clear page guides assist the user to locate a specific provision or Part of the Act quickly and efficiently
• Supplemented by detailed index for easy access to the annotations
• Includes the full text of the Trademarks Regulations 2019