Critical Analysis : Malaysia’s Trademarks Bill 2019


Malaysia is in the process of acceding to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), adopted in Madrid on June 27, 1989, in order to take advantage of the anticipated growth and development in the domain of trademarks owing to the exponential increase in established global businesses and ever-growing enterprises, both real and virtual[1].

The first reading of the Trademarks Bill 2019 was presented at the Parliament on April 9 and was debated on 2nd July before passing it in the lower house, or Dewan Rakyat. Following this, the Trade Descriptions (Amendment) Bill 2019 and Trademarks Bill 2019 was passed with a simple majority following a debate among eight MPs[2].

Current scenario of Trademark protection in Malaysia

Trademark law, to date, is governed by the Trademarks Act, 1976[1] and Trademark Regulations, 1997[2]. Even though both the Act as well as the Regulations have received a decent number of amendments[3], the time has come for Malaysia to bring a fresh Trademark Act in order to fulfill its international obligations.


The bill aims to provide monetization for trademarks by using it as collateral against borrowed funds as an intellectual property asset, it was provided provisions for the recognition of non – traditional trademarks, protection of collective marks, single filing International Trademark Registration Process, lower fees, substantive examination, and efficiency in trademark enforcement and opposition proceedings. A few major changes are worth discussing in detail.

a. Madrid Protocol and single filing procedure of International application

The accession to the Madrid Protocol was part of Malaysia’s obligation under the Asean Economic Community and commitment to the ASEAN Blueprint 2025. The move is long overdue as Malaysia was previously one of two members of ASEAN that had yet to accede to the Madrid Protocol[7]. With the enactment of this bill[8], Malaysia would be the latest country to accede to the Madrid Protocol.

The Madrid Protocol[9] is an international registration system which provides for the registration and administration of trademarks in up to 104 contracting parties through a single procedure, with a single administration, in a single language. Local businesses can now protect their trademarks internationally, in a more cost-effective manner. The local companies can now file an International Application at the International Bureau. From there, these companies can designate the countries they are interested in[10]. This also makes foreign business entities to designate Malaysia for protection of their trademarks.

b. Different types of marks recognized/ registered/ Registration of Non-traditional marks

Under Section 2(1) of the new bill, the definition of the sign has been widened and now includes “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, the shape of goods or their packaging, color, sound, scent, hologram, positioning, the sequence of motion or any combination thereof.[11]” in comparison with the present Trade Marks Act, 1976 which under Section 3 defines the term “mark” as including “a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof.[12]”, thus incorporating non – traditional trademarks such as scent, sound, shape, color, holograms, positioning, and motion marks[13].

(1) Recognition of collective marks

The new bill also defines recognizes collective marks as “a sign distinguishing the goods or services of members of the association[14]”, thereby expanding the ambit of trademark filing and registration processes.

(2) Multi-class trademark applications

The new bill has also facilitated trademark filing where an application made to the Registrar under Section 17(2), can be made in a single application “listing goods or services belonging to several classes of classification[15]”. This has particularly facilitated business through the ease of filing a trademark in respect of various goods and services under one application.

(3) Use of a trademark as a financial instrument

Section 81(e) of the new bill interprets the word “security” as “any sum of money in cash or another monetary instrument as determined by the Registrar[16]”. Further, Section 62 defines the nature of the registered trademark as “personal or moveable property and may be the subject of a security interest in the same way as other personal or moveable property[17]”. Hence, on the careful simultaneous reading of both the provisions of the Act, it can be understood that a registered trademark is practically an asset with easy liquidity as it can be used as collateral to obtain financing from financial institutions[18].

(4) Remedies against groundless threats

Further, Section 61(2) of the new bill elaborates upon the remedies available against groundless threats of infringement proceedings in the form of declaration, injunction, or damages[19].

(5) Penalty for false representation/ misrepresentation

Under Section 104 of the new bill[20], any person who is found to falsely represents that a trademark is a registered trademark, makes a false representation as to the goods or services for which a trademark is registered, with the knowledge of it being false, will be liable to a fine not exceeding ten thousand ringgit.


Impact on businesses/ trademark applicants

As a consequence, the bill is set to significantly change the existing Malaysian trademark landscape[21]. This long-overdue amendment to trademark laws will also help Malaysia become an attractive base for trademark filings[22]. A total revamp of TMA or the introduction of a new act will put Malaysia on a new frontier of trademark development, on international and national fronts. A modern, lean and efficient trademark law is expected to transform Malaysia into one of the competitive players in the trademark economy of the 21st century, ranging from a wide variety of businesses including e – commerce[23]. It was also stated by Chong Chieng Jen, Minister of Deputy Domestic Trade and Consumer Affairs that this bill after being enacted and enforced will offer trademark protection for businesses and assist them in expanding their products internationally[24].

Way forward

As the bill inches closer to its enactment, it is yet to be passed by the Senate or the Dewan Negara. After the bill is passed in the Upper House, it will be sent for the assent of Yang di-Pertuan Agong by affixing a public seal to it and its publication in the official gazette under Article 66(5) of the Federal Constitution of the Yang Di-Pertuan Agong[25].

Author: Madhur Tulsiani, L. L. B. IInd Year, Rajiv Gandhi School of Intellectual Property Law, I. I. T. Kharagpur, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at

One thought on “Critical Analysis : Malaysia’s Trademarks Bill 2019”

Leave a Reply

Your email address will not be published. Required fields are marked *

one × four =


  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010