Trade Marks 1 LAWS OF MALAYSIA REPRINT Act 175 TRADE MARKS ACT 1976 Incorporating all amendments up to 1 January 2006 PUBLISHED BY THE COMMISSIONER OF LAW REVISION, MALAYSIA UNDER THE AUTHORITY OF THE REVISION OF LAWS ACT 1968 IN COLLABORATION WITH PERCETAKAN NASIONAL MALAYSIA BHD 2006 2 Laws of Malaysia ACT 175 TRADE MARKS ACT 1976 Date of Royal Assent ... ... ... ... 21 June 1976 Date of publication in the Gazette ... ... 24 June 1976 PREVIOUS REPRINT First Reprint ... ... ... ... ... 2001 Trade Marks 3 LAWS OF MALAYSIA Act 175 TRADE MARKS ACT 1976 ARRANGEMENT OF SECTIONS PART I PRELIMINARY Section 1. Short title and application 2. Extent of application 3. Interpretation PART II ADMINISTRATION 4. Registrar, Deputy Registrars and Assistant Registrars 4A. Protection of officers 5. Central and regional trade marks offices PART III THE REGISTER OF TRADE MARKS 6. The Register 7. Notice of trust 8. Inspection of Register 9. False entries in Register 4 Laws of Malaysia ACT 175 PART IV REGISTRABLE TRADE MARKS Section 10. Registrable trade marks (Deleted) 11. 12. Use by proposed registered user to be considered for the purpose of determining distinctiveness, etc. 13. Colour of trade mark 14. Prohibition on registration 14A. Where registration shall not be refused 15. Where registration may be refused 16. Use of name of another person 17. Registration for particular goods or services 18. Disclaimer 19. Identical trade marks 20. Concurrent use 21. Jointly owned trade mark 22. Association of trade marks 23. Assignment of associated trade marks 24. Series of trade marks PART V APPLICATION FOR REGISTRATION 25. Registration 26. Application may be accepted where trade mark is to be used by assignee or registered user 27. Advertisement of acceptance of application 28. Opposition to registration 29. Non-completion of registration PART VI REGISTRATION AND EFFECT OF REGISTRATION 30. Registration of trade mark 31. Time for registration 32. Duration of registration Trade Marks 5 Section 33. Words used as name or description of article, substance or service 34. Powers of registered proprietor 35. Rights given by registration Registration prima facie evidence of validity 36. 37. Registration conclusive 38. Infringement of a trade mark 39. Infringement of trade mark by breach of certain restriction 40. Acts not constituting infringement PART VII RENEWAL OF REGISTRATION 41. Renewal of registration 42. Status of unrenewed trade mark PART VIII CORRECTION AND RECTIFICATION OF REGISTER 43. Correction of Register 44. Alterations of registered trade mark 45. Rectification of the Register 46. Provisions as to non-use of trade mark 47. Registration of assignment PART IX REGISTERED USER 48. Registered user 49. Powers to vary, extend or cancel registration of a registered user (Deleted) 50. 51. Infringement proceeding 52. Registered user not to assign (Deleted) 53-54. PART X ASSIGNMENT OF TRADE MARKS 55. Assignment and transmission of trade marks 6 Laws of Malaysia ACT 175 PART XI CERTIFICATION TRADE MARKS Section 56. Certification trade marks PART XII DEFENSIVE TRADE MARKS 57. Defensive registration of well known trade marks 58. Defensive trade mark deemed to be associated trade mark 59. Rectification of Register 60. Application of Act PART XIII LEGAL PROCEEDINGS, COST AND EVIDENCE 61. Certificate of validity 62. Hearing of Registrar 63. Costs 64. Mode of giving evidence 65. Sealed copies to be evidence 66. Minister may declare documents of foreign state pertaining to trade marks to be admissible 67. Discretionary power (Deleted) 68. 69. Appeal from Registrar PART XIV CONVENTIONS AND INTERNATIONAL ARRANGEMENTS Right of priority under Convention, etc. 70. 70A. Temporary protection of trade marks in respect of goods or services which are the subject matters of international exhibitions 70B. Protection of well-known trade marks Trade Marks 7 PART XIVA BORDER MEASURES Section 70C. Interpretation 70D. Restriction on importation of counterfeit trade mark goods 70E. Security 70F. Secure storage of seized goods 70G. Notice 70H. Inspection, release, etc., of seized goods 70I. Forfeiture of seized goods by consent 70J. Compulsory release of seized goods to importer 70K. Compensation for failure to take action 70L. Actions for infringement of registered trade mark 70M. Disposal of seized goods ordered to be forfeited 70N. Insufficient security 70O. Ex officio action 70P. Regulations relating to border measures PART XV MISCELLANEOUS 71. Use of trade mark for export trade 72. Use of trade mark where form of trade changes 73. Preliminary advice by Registrar 74. Powers of Registrar to amend document 75. Other powers of Registrar 76. Exercise of discretionary power 77. Extension of time Extension of time by reason of error in trade marks office, etc. 78. 79. Address for service 80. Agent 81. Falsely representing a trade mark as registered 82. Unregistered trade marks 83. Regulations 84. Repeal and saving 8 Laws of Malaysia ACT 175 Trade Marks 9 LAWS OF MALAYSIA Act 175 TRADE MARKS ACT 1976 An Act to make better provisions in the law relating to trade marks and for other matters connected therewith. [1 September 1983, P.U. (B) 407/1983] BE IT ENACTED by the Seri Paduka Baginda Yang di-Pertuan Agong with the advice and consent of the Dewan Negara and Dewan Rakyat in Parliament assembled, and by the authority of the same, as follows: PART I PRELIMINARY Short title and application 1. (1) This Act may be cited as the Trade Marks Act 1976. (2) This Act shall apply throughout Malaysia. Extent of application 2. (1) This Act shall apply to applications for trade marks made after the commencement of this Act and to trade marks registered on such applications. (2) Subject to subsection 6(4), this Act shall also apply to trade marks registered under the respective repealed Ordinances. (3) Notwithstanding their repeal, the repealed Ordinances shall apply to applications for trade marks made before the commencement of this Act and to the registrations of trade marks made on such applications after the commencement of this Act. 10 Laws of Malaysia ACT 175 Interpretation 3. (1) In this Act, unless the context otherwise requires-- "appointed date" has the same meaning as is assigned to that expression in the Intellectual Property Corporation of Malaysia Act 2002 [Act 617]; "assignment" means assignment by act of the parties concerned; "Assistant Registrar" means the person appointed or deemed to h a v e been appointed to be an Assistant Registrar under subsection 4(2) or (3); "component regions of Malaysia" means the regions of West Malaysia, Sabah and Sarawak; "Convention country" means a country which is a party to any multilateral treaty relating to trade marks to which Malaysia is also a party; "Corporation" means the Intellectual Property Corporation of Malaysia established under the Intellectual Property Corporation of Malaysia Act 2002; "Court" means the High Court; "Deputy Registrar" means the person appointed or deemed t o have been appointed to be a Deputy Registrar under subsection 4(2) or (3); "geographical indication" means an indication which identifies any goods as originating in a country or territory or a region or locality in that country or territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin; "in the course of trade", in relation to the provision of services, means in the course of business; "limitations" means limitations of the right to the exclusive use of a trade mark given by the registration of the trade mark including limitations of that right as to-- (a) mode of use; Trade Marks 11 (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 place outside Malaysia; "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof; "Minister" means the Minister for the time being charged with the responsibility for intellectual property; "Paris Convention" means the Paris Convention for the Protection of Industrial Property of 20 March, 1883 as revised at Stockholm on 14 July 1967; "permitted use" in relation to a registered trade mark means the use of the trade mark by a registered user thereof in relation to goods or services with which he is connected in the course of trade and in respect of which the trade mark remains registered and he is registered as a registered user, being use which complies with any conditions or restrictions to which his registration is subject; "prescribed" means, in relation to proceedings before the Court or preliminary thereto or connected therewith, prescribed by rules of court made by the Rules Committee constituted under the Courts of Judicature Act 1964 [Act 91], and in other cases, prescribed by this Act or any regulations made thereunder; "prescribed foreign country" means a country declared by the Minister, by order published in the Gazette, as having made arrangements with Malaysia for the reciprocal protection of trade marks; "previous registers" means the registers of trade marks kept under the repealed Ordinances; "Register" means the Register of Trade Marks kept under this