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 Act; "registered proprietor" in relation to a trade mark means the person for the time being entered in the Register as proprietor of the trade marks; 12 Laws of Malaysia ACT 175 "registered trade mark" means a trade mark which is actually upon the Register; "registered user" means a person who is registered as such under Part IX; "registrable trade mark" means a trade mark which is capable of registration under the provisions of this Act; "Registrar" means the Registrar of Trade Marks designated in subsection 4(1); "repealed Ordinances" means the Trade Marks Ordinance 1950 [Ord. 26 of 1950], the Trade Marks Ordinance of Sabah [Cap. 142] and the Trade Marks Ordinance of Sarawak [Cap. 62]; "specification" means the designation of goods or services in respect of which a trade mark or a registered user of a trade mark is registered or proposed to be registered; "trade mark" means, except in relation to Part XI, a mark used or proposed 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 as registered user to use the mark whether with or without an indication of the identity of that person, and means, in relation to Part XI, a mark registrable or registered under the said Part XI; "transmission" means transmission by operation of law, devolution on the personal representatives of a deceased person and any other mode of transfer not being assignment; "TRIPS Agreement" means the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 which constitutes A n n e x 1C to the Agreement Establishing the World Trade Organization; "word" includes an abbreviation of a word. (2) In this Act-- (a) references to the use of a mark shall be construed as r e f e r e n c e s to the use of a printed or other visual representation of the mark; Trade Marks 13 (b) references to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods; and (c) references to the use of a mark in relation to services shall be construed as references to the use thereof as a statement or as part of a statement about the availability or performance of services. PART II ADMINISTRATION Registrar, Deputy Registrars and Assistant Registrars 4. (1) The Director General of the Corporation shall be the Registrar of Trade Marks. (2) The Corporation may appoint, on such terms and conditions as it may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Trade Marks, Assistant Registrars of Trade Marks and other officers as may be necessary for the proper administration of this Act, and may revoke the appointment of any person so appointed or deemed to have been so appointed under subsection (3). (3) The persons holding office as Deputy Registrars, Assistant Registrars and other officers under this Act before the appointed date who were given an option by the Government of Malaysia to serve as employees of the Corporation and have so opted shall on the appointed date be deemed to have been appointed as Deputy Registrars, Assistant Registrars and such other officers under subsection (2). (4) Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the Registrar, a Deputy Registrar or an Assistant Registrar may exercise any function of the Registrar under this Act, and anything by this Act appointed or authorized or required to be done or signed by the Registrar may be done or signed by any Deputy Registrar or Assistant Registrar and the act or signature of a Deputy Registrar or an Assistant Registrar shall be as valid and effectual as if done or signed by the Registrar. 14 Laws of Malaysia ACT 175 (5) The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence. Protection of officers 4A.  No action or prosecution shall be brought, instituted or maintained in any Court against-- (a) the Registrar of Trade Marks; (b) a Deputy Registrar of Trade Marks; or (c) an Assistant Registrar of Trade Marks, for any act or omission done in good faith in the performance of his functions and the exercise of his powers under this Act. Central and regional trade marks offices 5. (1) For the purposes of this Act there shall be established a Central Trade Marks Office which shall be located at Kuala Lumpur. (2) In each of the States of Sabah and Sarawak there shall be established one regional trade marks office. (2A) In addition to the regional trade marks office established in the State of Sabah and Sarawak, there may be established such number of trade marks offices as may be necessary for the purposes of this Act. (3) A document required or permitted by this Act to be submitted at the Central Trade Marks Office may be submitted at any trade marks office and reference in this Act to the submission at the Central Trade Marks Office includes reference to the submission at a trade marks office. PART III THE REGISTER OF TRADE MARKS The Register 6. (1) There shall be kept and maintained at the Central Trade Marks Office a Register of Trade Marks which shall contain-- (a) all registered trade marks with the names, addresses and d e s c r i p t i o n s of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers, conditions, limitations; and Trade Marks 15 (b) such other matters relating to the trade marks as the Minister may from time to time prescribe. (2) (Deleted by Act A1078). (3) The previous registers of trade marks kept under the repealed Ordinances shall be incorporated with and form part of the Register in accordance with the entries in the previous registers immediately before this Act comes into force. (4) The incorporation of the previous registers into the Register shall have the following effect: (a) where a trade mark has been registered and entered in all the previous registers by a proprietor for all three component regions of Malaysia, such a trade mark shall in its incorporation into the Register be deemed to be a registered trade mark in the name of such proprietor under this Act; (b) where a trade mark has been registered and entered in any of the previous registers by a proprietor for any one or two of the component regions of Malaysia, such a trade mark shall in its incorporation into the Register be deemed to be a registered trade mark in the name of such proprietor under this Act if on the date on which this Act comes into force-- (i) no identical trade mark or trade mark so nearly resembling the first-mentioned trade mark in respect of the same goods or same description of goods as is likely to deceive or cause confusion has been registered and entered in the remaining previous register or registers prior to the date of the coming into force of this Act by a different proprietor or proprietors for any of the remaining component regions of Malaysia; and (ii) no application for the registration of an identical trade mark or trade mark so nearly resembling the first-mentioned trade mark in respect of the same goods or same description of goods as is likely to deceive or cause confusion has been made prior to the date of the coming into force of this Act by another person for any of the remaining component regions of Malaysia or, where it has been made, it is subsequently refused, abandoned or successfully opposed; 16 Laws of Malaysia ACT 175 (c) where a trade mark has been registered and entered in any of the previous registers by a proprietor for any one or two of the component regions of Malaysia and an identical trade mark or trade mark so nearly resembling the first mentioned trade mark in respect of the same goods or same description of goods as is likely to deceive or cause confusion has been registered and entered in any of the previous registers by a different proprietor or proprietors for all or any one of the remaining component regions of Malaysia both the first mentioned trade mark and the identical trade mark or trade mark so nearly r e s e m b l i n g the first mentioned trade mark in their incorporation into the Register shall be deemed to be registered trade marks in the names of the respective proprietors under this Act subject to concurrent use of the trade marks by their respective proprietors in accordance with subsection 20(1); (d) where a trade mark has been registered and entered in any of the previous registers by a proprietor for any one or two of the component regions of Malaysia and only an application or applications for the registration of an identical trade mark or trade mark so nearly resembling the first mentioned trade mark in respect of the same goods or same description of goods as is likely to deceive or cause confusion has been made prior to the date of the coming into force of this Act by another person for any of the remaining component regions of Malaysia, the first mentioned trade mark in its incorporation into the Register shall be effective only in respect of the component region or regions of Malaysia in which it was originally registered unless the application or applications has or have been subsequently refused, abandoned or successfully opposed in which case the first mentioned trade mark shall be deemed to be a registered trade mark in the name of such proprietor under this Act. (5) Notwithstanding section 30 the date of the entry of a trade mark in any of the previous registers incorporated and forming part of the Register shall be deemed to be the date of the original registration of the trade mark. Trade Marks 17 Notice of trust 7.  Notice of a trust express, implied or constructive shall not be entered in the Register or be received by the Registrar. Inspection of Register 8. (1) The Register shall be open to the inspection of the public at such times and in accordance with such conditions as may be prescribed. (2) Certified copies or extracts of any entry in the Register sealed with the seal of the Registrar shall be given to any person requiring the same on payment of the prescribed fees. (3) Certified copies of the Register shall be deposited in any trade marks office for the purpose of facilitating any search to be made by the public at such times as the Minister may by regulations prescribe and no copy or extract of any entry in such copies shall be made or given to any person. False entries in Register Every person who-- 9. (a) makes or causes to be made a false entry in the Register; (b) makes or causes to be made a false entry in any certified copy of the Register deposited in a trade marks office; (c) makes or causes to be made a false document purporting to be a copy of an entry in the Register; (d) produces or tenders or causes to be produced or tendered in evidence any such document knowing such document or any entry therein to be false, is guilty of an offence and is liable, on conviction, to a fine not exceeding five thousand ringgit or to a term of imprisonment not exceeding five years or to both. 18 Laws of Malaysia ACT 175 PART IV REGISTRABLE TRADE MARKS Registrable trade marks 10. (1) In order for a trade mark (other than a certification trade mark) to be registrable, it shall contain or consist of at least one of the following particulars: (a) the name of an individual, company or firm represented in a special or particular manner; (b) the signature of the applicant for registration or of some predecessor in his business; (c) an invented word or words; (d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or (e) any other distinctive mark. (2) A name, signature or word which is not described in paragraph (1)(a), (b), (c) or (d) is not registrable unless it is by evidence shown to be distinctive. (2A) For the purposes of this section, "distinctive", in relation to the trade mark registered or proposed to be registered in respect of goods or services, means the trade mark must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration. ( 2  B ) I n determining whether a trade mark is capable of distinguishing as aforesaid, regard may be had to the extent to which-- (a) the trade mark is inherently capable of distinguishing as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid. Trade Marks 19 (3) A trade mark may be registered in the Register in respect of any goods or services. (Deleted by Act A1078). 11. Use by proposed registered user to be considered for the purpose of determining distinctiveness, etc. 12. (1) Where an application for registration of a trade mark has been made by a person, and before the date of the application the trade mark had been used by a person other than the applicant under the control of and with the consent and authority of the applicant, and where an application is made by the applicant and that other person for the registration of that other person as a registered user of the trade mark immediately after the registration of the trade mark and the Registrar is satisfied that the other person is entitled to be registered as a registered user of the trade mark, the Registrar may, for the purpose of determining whether the trade mark is distinctive of or capable of distinguishing the goods or services of the applicant, treat use of the trade mark by that other person as equivalent to use of the trade mark by the applicant and may make an order that the trade mark is so distinctive or capable of distinguishing. (2) An order of the Registrar under subsection (1) is subject to appeal to the Court. (3) Where an order is made under subsection (1), the registration of the trade mark shall cease to have effect if at the expiration of the prescribed period, or such further period not exceeding six months as the Registrar may allow, that other person has not become registered as the registered user of the trade mark. Colour of trade mark 13. (1) A trade mark may be limited in whole or in part to one or more specified colours and, in any such case, the fact that the trade mark is so limited shall be taken into consideration for the purpose of determining whether the trade mark is distinctive. (2) Where a trade mark is registered without limitations as to colour, it shall be deemed to be registered for all colours. 20 Laws of Malaysia ACT 175 Prohibition on registration 14. (1) A mark or part of a mark shall not be registered as a trade mark-- (a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law; (b) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law; (c) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation; (d) if it is identical with or so nearly resembles a mark which is well known in Malaysia for the same goods or services of another proprietor; (e) if it is well known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for: Provided that the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well known mark, and the interests of the proprietor of the well known mark are likely to be damaged by such use; (f) if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods; or (g) if it is a mark for wines which contains or consists of a geographical indication identifying wines, or is a mark for spirits which contains or consists of a geographical indication identifying spirits, not originating in the place indicated by the geographical indication in question. (2) Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement shall apply for the purpose of determining whether a trade mark is a well known trade mark. Trade Marks 21 Where registration shall not be refused 14A. (1) A trade mark shall not be refused registration by virtue of paragraphs 14(f) and (g) if the application for its registration had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or his predecessor in title, either-- (a before the commencement of the Geographical Indications Act 2000 [Act 602]; or (b) before the geographical indication in question is protected in its country of origin. (2) A trade mark shall not be refused registration by virtue of paragraphs 14(f) and (g) if the geographical indication in question-- (a) has ceased to be protected; or (b) has fallen into disuse, in its country of origin. Where registration may be refused 15.  The Registrar shall refuse to accept an application for the registration of a trade mark which contains or consists of any of the following marks or a mark so nearly resembling any of those marks as is likely to be taken for that mark: (a) the word or words "Patent", "Patented", "By Royal Letters Patent", "Registered", "Registered Design" and "Copyright" or a word or words to the like effect in any language whatsoever; or (b) any mark which is specifically declared by the Minister in any regulations made under this Act to be a prohibited mark. Use of name of another person 16.  Where a person makes an application to register a trade mark which consists of or includes the name or representation of another person whether living or dead the Registrar may require the applicant to furnish him with the consent of that person if living or of the legal representative of that person if deceased before permitting the name or representation to be used as a trade mark. 22 Laws of Malaysia ACT 175 Registration for particular goods or services 17. (1) A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods or in respect of any or all of the services comprised in a prescribed class of services. (2) If any question arises as to the class in which goods or services are comprised that question shall be decided by the registrar whose decision shall be final. Disclaimer 18. (1) If a trade mark-- (a) contains any part-- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains matter which is common to the trade or business or is not distinctive, the Registrar or the Court, in deciding whether the trade mark shall be entered or shall remain in the Register, may require as a condition of its being upon the Register, that the proprietor shall disclaim any right to the exclusive use of any such part or matter, to the exclusive use of which the Registrar or the Court holds him not to be entitled or that the proprietor shall make such other disclaimer as the Registrar or the Court may consider necessary for the purpose of defining his rights under the registration. (2) No disclaimer on the Register shall affect any right of the proprietor of a trade mark except a right arising out of the registration of the trade mark in respect of which the disclaimer is made. Trade Marks 23 Identical trade marks 19. (1) No trade mark shall be registered in respect of any goods or description of goods-- (a) that is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same goods or description of goods or in respect of services that are closely related to those goods; or (b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion. (2) No trade mark shall be registered in respect of any services or description of services-- (a) that is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same services or description of services or in respect of goods that are closely related to those services; or (b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion. (3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or so nearly resembling each other as are likely to deceive or cause confusion and-- (a) such applications are in respect of the same goods or description of goods; or (b) at least one of such applications is in respect of goods and the other or others is or are in respect of services closely related to those goods, the Registrar may refuse to register any of them until their rights have been determined by the Court or have been settled by agreement in a manner approved by him or by the Court. (4) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or so nearly resembling each other as are likely to deceive or cause confusion and-- (a) such applications are in respect of the same services or description of services; or 24 Laws of Malaysia ACT 175 (b) at least one of such applications is in respect of services and the other or others is or are in respect of goods closely related to those services, the Registrar may refuse to register any of them until their rights have been determined by the Court or have been settled by agreement in a manner approved by him or by the Court. Concurrent use 20. (1) Notwithstanding subsection 19(1), in the case of honest concurrent use or of the circumstances described in paragraph 6(4)(c) or of other special circumstances which, in the opinion of the Court or the Registrar, make it proper so to do, the Court or the Registrar may permit the registration of more than one proprietor in respect of trade marks which are identical or so nearly resembling each other as are likely to deceive or cause confusion where the registration of the different proprietors-- (a) is in respect of the same goods or description of goods; or (b) in the case of at least one proprietor, is in respect of goods, and in the case of the other or others, is in respect of services closely related to those goods, subject to such conditions, amendments, modifications or limitations, if any, as the Court or the Registrar, as the case may be, may think right to impose. (1A) Notwithstanding subsection 19(2), in the case of honest concurrent use or of other special circumstances which, in the opinion of the Court or the Registrar, make it proper so to do, the Court or the Registrar may permit the registration of more than one proprietor in respect of trade marks which are identical or so nearly resembling each other as are likely to deceive or cause confusion where the registration of the different proprietors-- (a) is in respect of the same services or description of services; or (b) in the case of at least one proprietor, is in respect of services, and in the case of the other or others, is in respect of goods closely related to those services, subject to such conditions, amendments, modifications or limitations, if any, as the Court or the Registrar, as the case may be, may think right to impose. Trade Marks 25 (2) The Registrar shall not refuse to register a trade mark which is identical to or so nearly resembling another trade mark in the Register if the applicant of the first mentioned trade mark or his predecessor in business has continuously used that trade mark from a date before-- (a) the use of that other trade mark by the registered proprietor or his predecessor in business or by a registered user; or (b) the registration of that other trade mark by the registered proprietor or his predecessor in business, whichever is the earlier. Jointly owned trade mark 21. (1) Where two or more persons are interested in a trade mark and none of them is entitled as between himself or the other or others to use the trade mark except-- (a) on behalf of both or all of them; or (b) in relation to goods or services with which both or all of them are connected in the course of trade, both or all of them may be registered as joint proprietors of the trade mark and this Act has effect in relation to any rights of such persons to the use of the trade mark as if those rights were rights of a single person. (2) Subject to subsection (1), nothing in this Act authorizes the r e g i s t r a t i o n of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors of the trade mark. Association of trade marks 22. (1) Where a trade mark which is registered or is the subject of an application for registration in respect of any goods-- (a) is identical with another trade mark which is registered or is the subject of an application for registration in the name of the same proprietor in respect of the same goods or description of goods or in respect of services that are closely related to those goods; or 26 Laws of Malaysia ACT 175 (b) is so nearly resembling it as is likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks be entered on the Register as associated trade marks. (1A) Where a trade mark which is registered or is the subject of an application for registration in respect of any services-- (a) is identical with another trade mark which is registered or is the subject of an application for registration in the name of the same proprietor in respect of the same services or description of services or in respect of goods that are closely related to those services; or (b) is so nearly resembling it as is likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks be entered on the Register as associated trade marks. (2) On application made in the prescribed manner by the registered proprietor of two or more associated trade marks the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by another person in relation to any of the goods or services in respect of which it is registered and may amend the Register accordingly. (3) A decision of the Registrar under subsection (2) is subject to appeal to the Court. Assignment of associated trade marks 23. (1) Associated trade marks shall be assignable or transmissible only as a whole and not separately but they shall for all other purposes be deemed to have been registered as separate trade marks. (2) Where under this Act use of a registered trade mark is required to be proved for any purpose, the Court or the Registrar may, if and so far as it or he shall think right, accept use of an associated trade mark or of the trade mark with additions and alterations not substantially affecting its identity as an equivalent for such use. Trade Marks 27 (3) The foregoing provisions apply in relation to proof of use of any registered trade mark and not in relation only to proof of use of a trade mark which is one of two or more associated trade marks. Series of trade marks 24. (1) Where several trade marks in respect of the same goods or description of goods in a single class or in respect of the same services or description of services in a single class resemble each other in material particulars but differ in respect of-- (a) statements or representation as to the goods or services in respect of which the trade marks are used or proposed to be used; (b) statements or representations as to number, price, quality or names of places; (c) other matter which is not distinctive and does not substantially affect the identity of the trade marks; or (d) colour, and a person who claims to be the proprietor thereof seeks to register the trade marks, the trade marks may be registered as a series in one registration. (2) All trade marks registered in a series shall be deemed to be and shall be registered as associated trade marks. PART V APPLICATION FOR REGISTRATION Registration 25. (1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may make application to the Registrar for the registration of that mark in the Register in the prescribed manner. (2) An application shall not be made in respect of goods or services comprised in more than one class. 28 Laws of Malaysia ACT 175 (3) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such conditions, amendments, modifications or limitations, if any, as he may think right to impose. (4) In the case of refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the material used by him in arriving at the same. (5) A decision of the Registrar under subsection (3) is subject to appeal to the Court. (6) An appeal under this section shall be made in the prescribed manner and the Court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what conditions, amendments, modifications or limitations, if any, the application is to be accepted. (7) The appeal shall be heard on the material stated by the Registrar to have been used by him in arriving at his decision and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar other than those so stated except by leave of the Court. (8) Where any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of costs on giving notice in the prescribed manner. (9) The Registrar or the Court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connection with the application or may permit the applicant to amend his application upon such terms as he or it may think fit. (10) Any application submitted and accepted under this section shall notwithstanding any correction or amendment permitted by the Registrar or the Court to be made in such application be deemed to have been made on the date of its original submission. (11) (Repealed by Act A1078). Trade Marks 29 (12) Without prejudice to subsection (10) where after the acceptance of an application for registration of a trade mark but before the registration of the trade mark the Registrar is satisfied-- (a) that the application has been accepted in error; or (b) that in the special circumstances of the case the trade mark shall not be registered or shall be registered subject to additional or different conditions or limitations, the Registrar may withdraw the acceptance and proceed as if the application had not been accepted or, in respect only of a trade mark which shall be registered subject to additional or different conditions or limitations, reissue a new acceptance subject to additional or different conditions or limitations. Application may be accepted where trade mark is to be used by assignee or registered user 26. (1) An application for the registration of a trade mark in respect of any goods or services shall not be refused nor shall permission for such registration be withheld on the ground that it appears that the applicant does not use or propose to use the trade mark-- (a) if the Registrar is satisfied that a body corporate is about to be constituted and that the applicant intends to assign the trade mark to the corporation with a view to the use thereof in relation to those goods or services by the corporation; or (b) if an application has been made for the registration of a person as a registered user of the trade mark, and the Registrar is satisfied that the proprietor intends it to be used by that person in relation to those goods or services and the Registrar is also satisfied that that person will be registered as a registered user thereof immediately after registration of the trade mark. (2) The Registrar may, as a condition of the exercise of the power conferred by subsection (1) in favour of the applicant, require him to give security for the costs of any proceedings before him relative to any opposition and, in default of such security being duly given, may treat the application as abandoned. 30 Laws of Malaysia ACT 175 (3) Where a trade mark is registered in respect of any goods or services under the power conferred by subsection (1), then unless the corporation has been registered as the proprietor of the trade mark in respect of those goods or services within a period of six months, the registration shall cease to have effect in respect thereof at the expiration of that period and the Registrar shall amend the Register accordingly. Advertisement of acceptance of application 27. (1) When an application for registration of a trade mark has b e e n accepted whether absolutely or subject to conditions, amendments, modifications or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted to be advertised in the prescribed manner. (2) The advertisement shall set forth all conditions, amendments, modifications and limitations subject to which the application has been accepted except that the Registrar may cause an application for registration of a trade mark to be advertised before acceptance thereof if the considerations in subsection 10(2B) or subsection 11(1A) apply or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances to do so. ( 3 ) W h e r e an application has been advertised under subsection (2) the Registrar may, if he thinks fit, advertise it again when it has been accepted but he shall not be bound to do so. Opposition to registration 28. (1) Any person may, within the prescribed time from the date of the advertisement of an application for the registration of a trade mark, give notice to the Registrar and applicant of opposition to the registration. (2) The notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition. (3) The applicant shall, within the prescribed time after the receipt of the notice of opposition, send to the Registrar and the opponent a counter-statement, in the prescribed manner, of the grounds for his application, and, if he does not do so, he shall be deemed to have abandoned his application. Trade Marks 31 (3A) If the applicant submits a counter-statement under subsection (3), the opponent and applicant shall file evidence and exhibits in the prescribed manner and within the prescribed time support of the opposition or the counter-statement, as the case may be, to be adduced in the prescribed manner, and if the opponent or applicant fails to do so, the opposition or application, as the case may be, shall be treated as abandoned. (3B) If the applicant files evidence and exhibits under subsection (3A), the opponent may, within the prescribed time, send to the Registrar and applicant evidence in reply to be adduced in the prescribed manner. (4A) After considering the evidence and exhibits and after giving the applicant and the opponent an opportunity of making written submissions, the Registrar shall decide whether-- (a) to refuse to register the trade mark; (b) to register the trade mark absolutely; or (c) to register the trade mark subject to such conditions, amendments, modifications or limitations as he may think fit. (5) A decision of the Registrar under subsection (4) is subject to appeal to the Court. (6) An appeal under this section shall be made in the prescribed manner and the Court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions, amendments, modifications or limitations, if any, registration is to be permitted. (7) On the hearing of an appeal under this section any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court but no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar other than those stated by the opponent except by leave of the Court. (8) Where any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed. 32 Laws of Malaysia ACT 175 (9) In any appeal under this section the Court may after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity of the trade mark, but in any such case the trade mark as modified shall be advertised in the prescribed manner before being registered. (10) If a person giving notice of opposition or an applicant sending a counter-statement after receipt of such a notice, 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 relative to the opposition, application or appeal, as the case may be, and in default of such security being duly given, may treat the opposition, application, or appeal, as the case may be, as abandoned. Non-completion of registration 29. (1) When an application for registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice in writing of the non-completion to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice. (2) Where an appeal under any of the provisions of this Act has been instituted in respect of an application for registration of a trade mark, the Registrar shall not give notice of non-completion of the application until the expiration of three months after the determination of the appeal or until the expiration of such further time as the Court may allow. PART VI REGISTRATION AND EFFECT OF REGISTRATION Registration of trade mark 30. (1) When an application for registration of a trade mark in the Register has been accepted and either-- (a) the application has not been opposed and the time for opposition has expired; or Trade Marks 33 (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 in error, register the trade mark in the Register on payment of the prescribed fees in the name of the proprietor, and the trade mark so registered shall be registered as of the date of application for registration and that date shall be deemed for the purpose of this Act to be the date of registration. (2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate of the registration of the trade mark in the prescribed form under the seal of the Registrar. Time for registration 31. (1) Subject to subsection (2) a trade mark shall not be registered after twelve months from the date of the advertisement of the acceptance of the application for registration of the trade mark. (2) Where the registration of a trade mark is delayed by-- (a) opposition to the registration of the trade mark; (b) any appeal made to the Court; or (c) an action on the part of the Central Trade Marks office or any trade marks office, that trade mark may be registered within such time as directed by the Registrar or the Court respectively. (3) Where a trade mark has not been registered within the time applicable to it the application shall lapse. Duration of registration 32. (1) The registration of a trade mark shall be for a period of ten years but may be renewed from time to time in accordance with this Act. (2) Where a trade mark is registered under the repealed Ordinances and is incorporated into and forms part of the Register under this Act the registration of such trade mark unless renewed under this Act shall be for a period equal to the unexpired portion of the period for which the trade mark was registered or renewed under the repealed Ordinances. 34 Laws of Malaysia ACT 175 (3) The registration of a trade mark may be renewed from time to time in accordance with Part VII. Words used as name or description of article, substance or service 33. (1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of a word or words which the trade mark contains or of which it consists as the name or description of an article, a substance or a service. (2) If it is proved either-- (a) that there is a well known and established use of the word or words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or, in the case of a certification trade mark, goods certified by the proprietor; (b) that the article or substance was formerly manufactured under a patent, that a period of two years after the cesser of the patent has elapsed and that the word or words is or are the only practicable name or description of the article or substance; or (c) that there is a well known and established use of the word or words as the name or description of some service by a person or persons providing services which include that service, not being use in relation to services the provision of which the proprietor or registered user of the trade mark is connected to in the course of trade, subsection (3) shall have effect. (3) When the facts mentioned in paragraph 2(a), (b) or (c) are proved with respect to any word or words then-- (a) if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as regards registration in respect of the article, substance or service in question or of any goods or service of the same description, shall be deemed for the purpose of section 45 to be an entry wrongly remaining in the Register; Trade Marks 35 (b) if the trade mark contains the word or those words and other matter, the Court or the Registrar in deciding whether the trade mark shall remain on the Register so far as regards registration in respect of the article, substance or service in question or of any goods or service of the same description may in case of a decision in favour of its remaining on the Register require as a condition thereof that the proprietor shall disclaim any right to the exclusive use in relation to that article, substance or service in question or any goods or service of the same description of that word or those words so, however, that no disclaimer on the Register shall affect any right of the proprietor of a trade mark except such as arising out of the registration of the trade mark in respect of which the disclaimer is made; and (c) for the purposes of any other legal proceedings relating to the trade mark-- (i) if the trade mark consists solely of that word or those words, all rights of the registered proprietor to the exclusive use of the trade mark in relation to the article, substance or service in question or to any goods or service of the same description; or (ii) if the trade mark contains that word or those words and other matter, all rights of the registered p r o p r i e t o r to the exclusive use of the word o r those words, in such relation as in subparagraph (1), shall be deemed to have ceased on the date at which the use mentioned in paragraph (2)(a) or (c) first became well known and established or at the expiration of the period of two years mentioned in paragraph (2)(b). (4) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation except that this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark as distinguished from the element or compound as made by others and in association with a suitable name or description open to the public use. 36 Laws of Malaysia ACT 175 Powers of registered proprietor Subject to the provisions of this Act,-- 34. (a) the person for the time being entered in the Register as registered proprietor of a trade mark shall, subject to any rights appearing from such Register to be vested in any other person, have power to assign the same and give good discharges for any consideration for the assignment; (b) any equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property. Rights given by registration 35. (1) Subject to the provisions of this Act, the registration of a person as registered proprietor of a trade mark (other than a certification trade mark) in respect of any goods or services shall, if valid, give or be deemed to have been given to that person the exclusive right to the use of the trade mark in relation to those g o o d s or services subject to any conditions, amendments, modifications or limitations entered in the Register. (2) Where two or more persons are proprietors of registered trade marks which are identical or nearly resembling each other rights of exclusive use of either of those trade marks are not (except so far as their respective rights have been defined by the Registrar or the Court) acquired by any one of those persons as against any other of those persons by registration of the trade mark but each of those persons have the same rights as against other persons (not being registered users) as he would if he were the sole registered proprietor. Registration prima facie evidence of validity 36.  In