Since our last issue of MY News in April of this year which highlighted the changes introduced by the new Trademarks Regulations 1997, the Malaysian Trademarks Registry has announced several changes to its rules of practice in relation to new trade and service mark applications. The Trademarks Regulations 1997 prescribe that all trade and service mark applications submitted after 1 December 1997 must be accompanied by:-

1. a Statutory Declaration inter alia affirming the applicant as the bona fide proprietor of the trade mark or service mark;

2. a certified true copy of the relevant priority document (in cases where priority is claimed); and

3. whenever applicable, a certified transliteration and translation of wordmark(s) having non-Roman characters.

However, in order to facilitate the implementation of the new Regulations during the transitional phase, the Registry has in practice been flexible in allowing the applicants a grace period (with an extendible deadline) to submit the required accompanying documents. In late June 1998, the Registry issued a notification of its intention to cease this practice effective from 15 September 1998 whereby it was announced that:-

1. all applications filed from 1 December 1997 onwards without the requisite attachments at the time of filling were to be granted a 15 September 1998 deadline for the submission of the outstanding documents; and

2. any applications presented for filing on or after 15 September 1998 without the complete documentation would be immediately rejected at the filing counters.

It was widely perceived that the strict implementation of the new rules particularly with respect to the filing of new applications would greatly inconvenience foreign applicants. Consequently, the Registry has by a further Official Notice agreed to accept filings of any application presented without the necessary accompaniments. However, the Registry will withhold the examination of these applications until such time when the appendages required in connection therewith are duly filed.

Our clients and associates are advised to take note of the latest change in the Registry's current practice.

Clara Yip, Legal Officer

Tel: 03 - 243 9122
Fax: 03 - 242 3354

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

If you require more information or if there is any way we can serve you, please email us at Click Contact Link