Malaysia introduces totally revamped Trademarks Bill

On 9 April 2019 the Malaysian Parliament tabled a new, totally revamped Trademarks Bill 2019 for its first reading. The proposed bill could bring about significant changes to the existing regime for trademark protection and enforcement in Malaysia. It will replace the Trade Marks Act 1976 and, among other things, seeks to put in place the necessary and long-overdue legislative framework for Malaysia’s accession to the Madrid Protocol. On top of this, the bill will introduce new provisions with regard to:

  •  the protection of non-traditional marks;
  • an express provision for the securitisation of registered mark;
  • enhanced statutory protection for registered marks; and
  • improved enforcement mechanisms against counterfeit goods.

1. Accession to the Madrid Protocol

The bill contains express provisions to pave the way for Malaysia’s imminent accession to the Madrid Protocol. In this regard, it seeks to empower the Minister of Domestic Trade and Consumer Affairs to prescribe the relevant regulations that will enable Malaysia to full its international obligations under the protocol. The regulations would govern matters relating to the applications for the international registration of marks and the protection accorded to such registrations, among other things.

2. New definition of ‘trademark’ and recognition of non-traditional marks

A famous colour and position trade mark

One of the significant changes proposed by the bill is the new definition of ‘trademark’, removing the definition promulgated by the UK Trademarks Act 1938. The term ‘trade mark’ is now spelled as ‘trademark’ and its definition has been updated to be in line with the modern definition of the word as found in the UK Trademarks Act 1994. A ‘trademark’ is defined as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings (Section 3(1)). And ‘sign’ is widely defined to include the following new items:

  • shape of goods or their packaging;
  • colour;
  • sound;
  • scent;
  • hologram;
  • positioning; and
  • sequence of motion.
An example of a sound trade mark registered in Russia

This brings about a significant yet welcome change in trademark practice, as the bill expressly recognises and accordingly grants protection to non-traditional trademarks in keeping with new developments. Owners of such non-traditional marks will soon be able to register them under the new legislation.

3. Trademarks as personal or moveable property and the securitisation thereof

With the objective of further developing a knowledge-based economy and to facilitate the creation of a viable ecosystem for IP trading, the Malaysian Parliament will introduce a new Part IX, which recognises trademark rights as a subject for securitisation. Pursuant to the provisions in this new part, a registered mark will be treated as personal or moveable property and “may be subject of a security interest in the same way as other personal and movable property” (Section 62). Charges may be placed on registered marks, in the same manner as personal or moveable property (Section 64(5)). As a result, the owner of a registered mark will be able to tap into its value and pledge it as a form of security or collateral in any financing arrangement. This would create an added incentive for owners to register their marks, aside from the usual rights accrued from the trademark’s registration.

4. Strengthened statutory relief and remedies for trademark infringement

The bill has also codified the remedies that are ordinarily awarded to successful claimants in an infringement action. These include damages, account of profits, injunctions (including interim injunctions) and mandatory orders. The bill empowers the courts to grant damages to the claimant, as well as to compel the defendant to provide an account of the profits made in cases of flagrant counterfeiting. This is not currently the case, as successful claimants are still required to elect which of the two heads of damages they wish to claim based on common law principles. The courts will also be empowered to grant mandatory orders against defendants, including handing down an order to erase the defendant’s offending sign and the delivery or disposal of the infringing goods, material or articles. With regard to civil actions against counterfeiters, the courts will be given the discretion to grant additional damages to the claimant depending on the flagrancy of the infringement, the benefit gained by the counterfeiter, the need to punish such counterfeiters and other relevant considerations. The bill will also provide relief to any person who is subjected to groundless threats of infringement proceedings. In the circumstances, a claimant may claim for a declaration that the threats are unjustified, an injunction to prevent the threat from continuing and damages for the loss suffered.

5. Enhanced legal enforcement of trademark rights

The logo of the Ministry of Domestic Trade and Consumer Affairs

Under the existing enforcement regime, criminal charges in respect of the false application of trademarks to goods and services is governed by the Trade Descriptions Act 2011, in particular Section 8. However, it appears that the legislature intends to include and consolidate all the relevant provisions for criminal sanctions against counterfeiting activities involving registered trademarks within the ambit of the bill. A new Part XV titled “Offence” will be introduced, which will consist of extensive provisions relating to trademark counterfeiting offences and the false application of a registered mark to goods or services. With the concurrent introduction of the proposed bill and the Trade Descriptions (Amendment) Bill 2019, it appears that the Malaysian legislature intends to transfer the provisions relating to enforcement of a registered trademark found in the Trade Descriptions Act to the bill. This is evident by the removal of Section 8 (offence relating to application of false trade description involving a registered mark) and placing it under the purview of the bill. This appears to be a logical move given that the subject of protection of Section 8 concerns a registered mark. For the first time, the bill will criminalise the act of counterfeiting a registered mark and falsely applying a registered mark to goods or services. It also criminalises acts of making an article specifically designed or adapted for making copies of a registered mark or a sign likely to be mistaken for it. Any person who imports, sells or exposes for sale or has in their possession, custody or control for the purpose of trade or manufacture any goods to which a registered trademark is falsely applied is guilty of an offence. Hefty penalties for the offences under Part XV are prescribed. Following the above proposed changes, Part XVI, titled “Investigation and Enforcement”, has adopted a substantial part of the provisions in the Trade Descriptions Act with regard to the powers of the enforcement authority. Similar to the powers under the act, enforcement officers will be armed with the powers to investigate, arrest suspects and search and seize goods suspected of being the subject of an offence.

6. Attempts to modernise and streamline registration procedures

As a measure to modernise trademark registration procedures, the bill will introduce the publication of the Intellectual Property Journal (presumably in lieu of the possibly more time-consuming Government Gazette ), electronic ling and issuance of documents via electronic means and issuance of guidance and practice directions. It also seeks to clarify some of the administrative powers of the registrar of trademarks. Besides that, as a bulk of the work of the registrar or assistant registrar is to determine whether the use of a trademark is likely to cause confusion, the bill introduces a new Section 9, which provides that in determining whether the use of a trademark is likely to cause confusion, the registrar may take into account all relevant factors,
including whether the use is likely to be associated with a registered or earlier mark. It is believed that the original intention of this section is to codify guidelines for determining the issue of confusion between two marks. However, as the current wording stands, it appears too brief and general and risks imposing upon the registrar an additional requirement of expanding the scope of such inquiry to include the issue of confusion by association. It is highly doubtful whether the proposed and rather briefly worded Section 9 will provide much assistance to the registrar. The statutory mandate to take into account confusion by association may instead prove to be an additional burden on it.


The bill contains substantial changes to the existing law and practice relating to trademarks in Malaysia. It is a welcomed development as it will bring Malaysian trademark law in line with international standards

Teo Bong Kwang, Wong Jin Nee & Teo
Eugene Ee,  Wong Jin Nee & Teo

June 2019 

Postscript: The Trademark Bill 2019 went through its second reading at the lower house of the Malaysian Parliament with some minor changes on 2 July 2019. The upper house (Senate) approved it on 23 July 2019.  It is expected that the new bill may come into force in early part of 2020.

This article first appeared on WTR Daily, part of World Trademark Review on 18 June 2019. For further information, please go to The images found in this post were inserted by the authors.



大凡藏书杂乱的人都有这种经验:因为书太多而地方不够,同一个架子,往往前后摆放了两排的书籍。一旦要寻找某本书,当然是先浏览书架上放在外排的书籍。但是糟糕的是如果要的书是摆放在后排,那就得大费周章了。尤其当书籍多,塞在几个如墙壁面积大小的书柜时,艰辛度还算不小的。先得把前面一排的书搬下来,放在一边,让后查看后排有没有摆着所要的书。这样的动作,是需要一个书架子一个书架子重复进行,搞了两三个小时,弄到满手灰尘,鼻子受不了灰尘的袭击,而直打喷嚏,仍然找不到。看到桌子地上散落都是书籍心中的那种苦恼,不是过来人恐怕还不能理解。肉体累是一回事,搞到半夜, 还是找不到所要的书籍,开始有点明白什么是“上穷碧落下黄泉,两处茫茫皆不见”。


翻开《风满楼证道文集》的《前言》,得知这是许牧世在1971年,因为参与美国圣经公会进行的《现代中文圣经》的翻译工作,而移居到纽约郊外,住在宅车房的屋顶加上盖子的一间书房,进行翻译圣经与写作的工作。根据许牧世的说法,他把这个书房称为“风满楼“,第一个原因是当年来华的宣教士马礼逊(Robert Morrison)翻译《圣经》时,将”圣灵“翻译为”神风“。其二是《圣经》使徒行传第2章记载,五旬节圣灵降临时,就像一阵大风充满了整个房子。”风满楼“之命名,是渴望圣灵的充满。

我信手翻到第一篇文章,题目为“亚当,你在哪里?” 这是根据《圣经》的第一本书《创世纪》第3章第8到10节所写的一篇讲章。内容说道黄昏中,一阵凉风吹过,亚当听到神走过来的声音,心里畏惧 (因为他吃了禁果),连忙躲藏起来。而上帝发出这个亘古不变的问题:“亚当,你在哪里?” “亚当”其实就是人的意思。神在问:“人呀,你在哪里?” 来到新约,耶稣也说过:“我在门外敲门,若有人听见我的声音就开骂,我要进去。我要跟他一起坐席,他也要跟我一起坐席”,坐席者,吃饭也。能跟另外一个人吃饭,这是一种接纳,友爱的关系。清楚不过,耶稣要与人建立朋友的关系。

记得当年去曼彻斯特探望在哪儿读书的孩子时,某个下午因为有点时间,就到处看看。来到曼彻斯特的博物院。进去浏览,很欣喜地看到一幅叫做”世界之光“的画。这幅画是英国19世纪前拉斐尔的创始人之一威廉·霍尔曼·亨特(William Holman Hunt)所画的。之前在一个叫做“启发课程“的视频里,曾看到这幅图画。据说原作是放在伦敦的圣彼得大教堂。曼彻斯特的博物院的那幅较小。但是画的是一样:耶稣提着一盏灯。在一个满了青藤的门敲着。据说有人告诉画家,你漏了画门柄了。但是亨特说,门的手柄是在里面,是需要里面的人自己把门打开。

最近也在阅读一些关于神存不存在的书籍,众说纷纭,弄到心中也不太实在了。看到许牧世这篇文章,猛然间醒悟过来: 是神一直在寻找我们呀!我们只要打开心门接纳他即可。