WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
ofilltellectual Property Rights IP/N/1/MYS/TI1 
23 November 2001 
(01-5963) 
Original: Englishl 
anglaisl 
ingles 
MAIN DEDrCA TED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
MALAYSIA 
The present document reproduces the textl of the following laws and regulations, as notified by Malaysia under 
Article 63.2 of the Agreement (see document IP/NIlIMYSIl): 
Trade Marks Act ! 976 (Act J 75) 
Trade Marks (Amendment) Act 1994 (Act A88]) 
Conseil des aspects des droits de propriete 
intellectueile qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES It LA PROPRiETE 
INTELLECTllELLE NOTIFIEES All TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
MALAISIE 2 
58 
Le present document contient le textel des lois et reglementations ci-apres, notifiees par la Malaisie au 
titre de l'article 63:2 de I'Accord (voir le document IP/NIJIMYSIl): 
LOI de 1976 sur les marques (Loi n° 175) 
LOl de 1994 sur les marques (modification) (Loi n° A881) 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual reladonados con cl Comcrcio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICAD08 A LA PROPIEDAD INTELECTUAL 
NOTIFICADOS EN VIRTUD DEL pARRAFO 2 DEL ARTiCULO 63 DEL ACUERDO 
MALASIA 2 
58 
En el presente documento se reproduce el textol de Ias Jeyes y reglamentos notificados por Malasia en virtud de 10 
dispuesto en el parrafo 2 del articulo 63 del Acuerdo (vease el documento IP/NIl/MYS/I): 
Ley de Marcas de Fabrica 0 de Comercio de 1976 (Ley 175) 2 
Ley de Marcas de Fabrica 0 de Comercio (Modificaci6n) de 1994 (Ley A881) 58 
1 Distributed in English only. The texts of these laws in the original language are available for 
consultation by interested Delegations at the WTO Secretariat/En anglais seulement. Les delegations 
interessees peuvent consulter le:;; textes de ces 10is, dans leur langue d'origine, au Secretariat de 
l'OMC.lDistribuido en ingles solamente. Las delegaciones interesadas podnin consultar en la Secretaria de la 
OMC los textos de estas leyes en su idioma original. IPINIlIMYS/TIl 
Page 2 
Act 175 
lRADE MARKS ACf 1916 LAWS OF MALAYSIA 
Ad 175 
TRADE MARKS ACf 1976 
ARRANGEMENT OF SECTIONS 
PART I 
PRELIMINARY 
1. Short title. commenc~ment and application. 
2. Extent of application. 
3. Interpretation. 
PART n 
ADMINISl'RA TWN 
4. Registrar. Deputy Registrar and Assistant Registrar. 
5. Central and regional trade marks offices. 
PART ID 
THE ~GISTER OF TRADE MARKS 
6. The Register. 
7. Notice of trust 
8. Inspection of Register. 
9. False entries in Register. 
PART IV 
REGISl'RABLE TRADE MARKS 
10. Trade marks registrnble in Part A. 
11. Trade marks registrable in Part B. 
12. Distinctiveness. 
13. Colour of trade mark. 
14. Prohibition on registrntion. 
15. Where registration may be refused. 
16. Use of name of another person. 
17. Registration for particular gooWi. IPINIlIMYS/TI1 
Page 3 IP/NIlIMYS/T/l 
Page 4 
18. Disclaimer. 
19. Identical trade marks. 
20. Concurrent use. 
21. Jointly owned trade mark. 
22. Association of trade marks. 
23. ~jgnment 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 BFFECI' OF REGISTRATION 
30. Registration of trade mark. 
31. Time for registration. 
32. Duration of registration. 
33. Words used as name or description of an article or substance. 
34. Powers of registered proprietor. 
35. Rights given by registration. 
36. Registration prima facie evidence of Validity. 
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 un renewed trade mark. PART vm 
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. 
41. Registration of assignment. 
48. Registered user. PART IX 
REGISTERED USER IPINIIIMYS/T 11 
Page 5 
49. Powers to vary. extend or atncel registration of a registered 
user. 
50. EIect of permitted use. 
51. Infringement proceeding. 
52. Registered user not to assign. 
53. Hearing by Registrar. 
54. A ppeal to Court. 
PART X 
ASSIGNMENT OF TRADE MARKS 
55. Assignment and transmission of trade marks. 
PART XI 
CERTIFICATION TRADE MARKS 
56. Certification trade marks. 
PART XII 
DEFENSIVE TRADE MARKS 
57. Defensive registration of wen known trade marks. 
58. Defensive trade mark deemed to be associated trade mark. 
59. Rectification of Register. 
60. Application of Act. IPINI]!MYS/T/l 
Page 6 
PART xm 
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. Yang di-Perruan Agong may declare documents of foreign 
state pertaining to trade marks to be admissible. 
67. Discretionary power. 
68. Application for rectification may be ,made to Registrar. 
69. Appeal from Registrar. 
PART XlV 
INTERNATIONAL ARRANGEMENT 
70. Reciprocal protection of trade marks. 
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. PowekS of Registrar to amend document 
75. Other powers of Registrar.' 
76. Exercise of discretionary power. 
77. Extension of time. 
78. Extension of time by reason of error in trade marks office etc. 
79. Address for service. 
80. Agent. 
81. Falsely representing a trade mark as registered. 
82. Unregistered trade marks. 
83. Regulations. 
84. Repeal and saving. LAWS OF MALAYSIA 
Act 175 
TRADE MARKS ACf 1976 IPfNllIMYS/T/l 
Page? 
An Act to make better provisions in the law re~ating to trade 
marks and for other matters connected therewith. 
[ ] 
BE IT EN ACTED by the Dull Y ang Ma~a Mulia Seri 
Paduka Baginda Yang di-Pertuan Agong with the advice 
and consent of the Dewan Negara and Dew"an Rakyat in 
Parliament assembled, and by the authority of the same, as 
follows: 
PART I 
PRELIMINARY 
1. (1) This Act may be cited as the Trade Marks Act 1976, Short title. 
and shall come into force on such date as the Minister may, :~~:d 
by. notification in the Gazette, appoint. applicatioo. 
(2) This Act shall apply throughout Malaysia. 
2. (1) This Act shall apply to applications for trade marks Exte?t o.f 
made after the commencement of this Act and to the application. 
registrations of trade marks made on such applications. 
(2) Subject to subsection (4) of section 6, this Act shall 
also apply to the registrations of trade marks made 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. 
3. (1) In this Act, unless the context otherwise requires- lnt:::: . pr~ .... uon. 
"assignment" means assignment by act of the parties 
concerned; 
"component regions of Malaysia" means the regions of 
West Malaysia, Sabah and Sarawak; 
"Court" means the High Court; 
"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-IPINIIIMYS/TI1 
Page 8 
(a) mode of use; 
(b) use within a territorial area within Malaysia; or 
(c) use in relation to goods to be exported to a market 
outside Malaysia; 
"mark" includes a device, brand, heading, label, ticket, 
name, signature, word, letter, numeral or any combination 
thereof; . 
"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 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 
A.ct 91. constituted under the Courts of Judicature Act, 1964, and 
in other cases, prescribed by this Act or any regulations 
made thereunder; 
"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; 
Mregistered trade mark" means a trade mark which is 
actually upon the Register; 
"registered user~t 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", "Deputy Registrar" and "Assistant Regis@ 
trar" mean respectively the Registrar of Trad.e Marks, the 
Deputy Registrar of Trade Marks and the Assistant 
Registrar of Trade Marks appointed under section 4; IPlNlIIMYSffll 
Page 9 
Hrepealed Ordinancesn means the Trade Marks Ordi-161l9S0. 
nance, 1950, the Trade Marks Ordinance of Sabah and the ~b~41 
Trade Marks Ordinance of Sarawak; s:dwak . 
et d k" . l' P XI' Cap. 61. tra e mar means, except ID re ab on to art ,a 
mark used or proposed to be used in relation to goods for 
the purpose of indicating or so as to indicate a connection 
in the course of trade between the goods and a person 
having the right either as proprietor or as registered user to 
use the mark whether vrith 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 trapsfer not being assignment; 
"word" includes an abbreviation of a word~ 
(2) In this Act-
(a) references to the use of a mark shall be construed 
as references to the use of a printed or other visual 
representation of the mark; and 
(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 otp-er relation to, goods. 
PART n 
ADMINISTRATION 
4. (1) There shall be a Registrar of Trade Marks who shall, Registrar. 
in addition to the powers and functions conferred by this 
Act, have superintendence over all matters relating to trade ~sta.ot 
marks. Registrar. 
(2) The Minister may appoint such number of Deputy 
Registrars of Trade Marks as may be necessary for carrying 
out the provisions of this Act and the Deputy Registrars 
shall, subject to the control of the Registrar, have all the 
powers and functions of the Registrar under this Act except 
the power of delegation referred to in subsection (4). 
(3) The Minister may appoint such number of Assistant 
Registrars of Trade Marks as may be necessary for carrying 
out the provisions of this Act and the powers and functions 
of an Assistant Registrar shall be as prescribed by the 
Minister or delegated by the Registrar pursuant to sub­
section (4). IPIN/lIMYS/TIl 
Page 10 
Central and 
regional 
~rademarb 
offices. (4) The Registrar may in relation to a particular matter 
or class of matters by writing under his hand delegate all 
or any of his powers or functions under this Act, except his 
power of delegation, to an Assistant Registrar so that the 
delegated powers and functions may be exercised by the 
Assistant Registrar so delegated but a delegation made under 
this subsection is revocable at the discretion of the Registrar 
and does not prevent the exercise of that power or function 
by the Registrar or Deputy Registrar. 
(5) The R . trar shall have a seal of such device as may 
be approved the Minister and the impressions of such 
seal shall be judicially noticed and admitted in evide~ce. 
5. 0) For t!:le 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. 
(3) A document required or permitted by this Act to be 
submitted at the Central Trade Marks Office may be 
submitted at any regional trade marks office and reference 
in this Act to the submission at the Central Trade M arks 
Office includes reference to the submission at a regional 
trade marks office. 
PART ill 
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 descriptions of their proprietors, notifications 
of assignments and transmissions, tbe names, 
addresses and descriptions of all registered users, 
disclaimers, conditions, limitations; and 
(b) such other matters relating to the trade marks as the 
Minister may from time to time prescribe. 
(2) The Register shall be divided into two parts which 
shaH be known as Part A and Part B respectively. IP/NIl/MYS/T /1 
Page 1 i 
(3) The previous registers of trade marks kept under. the 
repealed Ordirtances shall be incorporated with and form 
part of Part A or Part B 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 h"as been registered and entered 
in any of the previous registers by a proprietor for 
anyone or two of the component regions of 
Malaysia, such a trade mark shall in its incorpora­
tion 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 com­
ponent 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 con­
fusion 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; IPlNllIMYS/TIl 
Page 12 
(c) where a trade mark has been registered and entered 
in any of the previous register& by a proprietor 
for anyone 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 anyone of the remaining component regions 
of Malaysia, both the first~mentioned trade mark 
and the identical trade mark or trade mark so nearly 
resembling' the first~mentionoo 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 tespective 
proprietors in accordance with subsection (1) of 
section 20; 
(cl) where a trade mark has been registered and entered, 
in any of the previous registers by a proprietor for 
anyone 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 success­
fully 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. IPINIlIMYS/TI 1 
Page 13 
1.. Nonce of a trust express, implied or constructive shall Notice of 
not be entered in the Register or be received by the trust. 
Registrar. 
S. (1) The Register shall be open to the inspection of the Inspec~OCl 
public at such times as the Minister may by regulations of Register, 
prescribe. 
(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 regional trade marks office for the purpos~ of facilitating 
any search to be made by the public at suc~ times as tbe 
Minister may by regulations prescribe and no copy or 
extract of any entry in such copies shall be made or given 
to any person. 
9. Every person who-- F~ . cClmesm 
(a) makes or causes to be made a false entry in the Register. 
Register; 
(b) makes or causes to be made a false entry in any 
certified copy of the Register deposited in a regional 
trade marks office; 
(c) makes or causes to be made a false document 
purporting to be a copy of an entry in the 
Register; 
(cl) 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. 
PART IV 
REGISTRABLE TRADE MARKS 
10. (1) In order for a trade mark (other than a certification Tra:iemarb 
trade mark) to be registrable in Part A of the Register, it X:e 
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; IPlNllIMYS/TIl 
Page 14 
Trademarks 
reg,istrable 
in Part B. 
Distinctive­
ness. (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 not being, according to its 
ordinary meaning, a geographical name or sur· 
name; or 
(e) any distinctive mark. 
(2) A name, signature or word which is not described in 
paragraph (a), (b), (c) or (d) of subsection (1) is not regis­
trable in Part A of the Register unless it is by evidence 
shown to be distinctive. 
(3) A trade mark may be registered in Part A of the 
Register in respect of any goods notwithstanding the 
registration of the trade mark or of a part or parts of the 
trade mark in Part B of the Register in the name of the 
same person in respect of the same or different goods. 
lIe (1) In order for a trade mark to be registrable .in 
Part B of the Register, it must be distinctive or capable of 
becoming distinctive of the goods in respect of which it is 
registered and with which the proprietor of the trade mark 
is or may be connected in the course of trade from goods 
with which no connection subsists, either generally or, 
where the trade mark is registered or proposed to be 
registered subject to conditions, amendments, mo<mications 
or limitations, in relation to use within the extent of the 
registration. 
(2) A trade mark may be registered in Part B of the 
Register in respect of any goods notwithstanding the 
registration of the trade mark or of a part or parts of the 
trade mark in Part A of the Register in the name of the same 
person in respect of the same or different goods. 
12. (1) For the purposes of this Act, a trade mark is not 
distinctive of the goods unless it is adapted to distinguish 
goods with which the proprietor of the trade mark is or may 
be connected in the course of trade from goods with which 
no con.n.ection 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. IPINI 1 IMYSrrl 1 
Page 15 
(2) In determining whether a trade mark is distinctive 
regard may be had to the extent to which-
(a) the trade mark is inherently adapted to distinguish; 
and 
(b) by reason of the use of the trade mark. or of any 
other circumstances, the trade mark is in fact 
adopted to distinguish. 
(3) 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 per~on 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 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 the goods 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. 
(4) An order of the Registrar under subsection (3) is 
subject to appeal to the Court. 
(5) Where an order is made under subsection (3), 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 
?llow, that other person has not. become registered as the 
registered user of the trade mark. 
13. (1) A trade mark may be limited in whole or in part to Colour of 
°fi dId . h h f trade mark. one or more spec! e co ours an ,ID any sue case, t e act 
that the trade mark is so limited shall be taken into consi-
deration 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. IPlNllIMYS/TI1 
Page 16 
Prohibition 14. A mark or part of a mark shall not be registered as a 
~~tion. trade mark-
Where 
registration 
maybe 
refused. 
Use of name 
of another 
penon. (a) if the use of which is likely to deceive or cause 
confusion to the public or would be contrary to law; 
and 
(b) if it contains or comprises any scandalous or 
offensive matter or would otherwise not be entitled 
to protection by any court of law. 
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 re­
sembling. 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. 
16. Where a person makes an application to register a trade 
mark which consists of or includes the name or represen .. 
tation of another person whether dead ur alive 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 represen .. 
tation to be used as a trade mark. 
Registr~tion 17. (1) A trade mark shall be registered in respect of any 
i~:.ruc::ular or all of the goods comprised in a prescribed class of goods. 
(2) If any question arises as to the class in which goods 
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 applica­
tion by the proprietor for registration as a 
trade mark; or 
(ii) which is not separately registered by the pro .. 
prietor as a trade mark; or IPlNllIMYS/Til 
Page 17 
(b) contains matter which. is common to the tra1.te or 
business or is not distinctive, . 
the ar or the Court, in deciding whether the trade 
mark s 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 . ster shall aftect any right 
of the proprietor of a trade mar except a right arising out 
of the registration of the trade mark: in respect' of which the 
disclaimer is made. 
19. (1) No trade mark shall be registered in respect of any Ide'!loCIJ 
goods or description of goods that is identical with a trade trade ~ 
mark belonging to a different proprietor and entered in the 
Register in respect of the same goods or description of goods 
or that so nearly resembles such a trade mark: as is likely 
to deceive or cause confusion. 
(2) 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 in respect of the same goods or description of goods, 
the R . trar may refuse to register any of them until their 
rights e been determined by the Court or have heen 
settled by agreement in a manner approved by him or by 
the Court. 
20. (1) In the case of honest concurrent use or of the CoEAcurrent 
circumstances described in paragraph (c) of subsection (4) use. 
of section 6 or of other special circumstances which, in the 
opinion of the Court or the Registrar, make it proper so to 
<lo, the Court or the Registrar may permit the registration 
of trade marks which are identical or so nearly resembling 
each other in respect of the same goods' or description of 
goods by more than one -proprietor 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. 
(2) The Registrar shall not refuse to register a trade mark 
which is identical to or so nearly resemb another trade 
mark in the Register if the applicant of the rst-mentioned 
trade mark or his predecessor in business has continuously 
used that trade mark from a date before-IPlNllIMYS/TI1 
Page 18 
(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. 
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 with which both or an of them 
are connected in the course of trade, 
both or all of them may be registered as joint proprietoB 
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 0), nothing in this Act authorises. 
the registration of two or more persons who use a trade­
mark lnde dently, or propose so to use it, as joint pro­
prietors 0 the trade mark. 
22. (1) Where a trade mark which is registered or is the 
subject of an application for registration in r of any 
goods is identical with another trade mark is regis-
tered or is the subject of an application for registration in 
the name of the same proprietor in respect of the same goods 
or descri . on of goods or so nearly resembling it as is. 
likely to eive or cause confusion if used by a person other 
than the pro "etor, the Registrar may at any time require 
that the tra e marks shall 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 res ts 
any of them if he is satisfied that there would be no 
lihood of deception or confusion being caused if that trade 
mark were used by another person in relation to any of the 
goods in respect of which it is registered and may amend the 
Register accordingly. IP/N/IIMYS/TI1 
Page 19 
(3) A decision of the Registrar under subsection (2) is 
subject to appeal to the Court. 
23 .. (1) Associated trade marks shall be assignable or Ass.i~ent 
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. 
(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 . 
.24.. (l) Where several trade marks in respect of the same Series of 
goods or description of "goods resemble' each other in trndemarb4 
material particulars but differ in respect. of-
(a) statements or representation as to the goods in 
respect of which the trade marks are used or pro­
posed 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 tnereof seeks 
to register the trade marks, the trade marks may be regis­
tered as a series in one registration. 
\ 
(2) All trade marks registered in a series shall be deemed 
to be and shaH be registered as associated trade marks. 
PART V 
APPLICATION FOR RE9ISTRATION 
25 .. (1) Ally person claiming to be the proprietor of a trade I.~ttd«m. 
mark used or proposed to be used by him may make appli .. 
cation to the Registrar for the registration .of that mark-in 
Part A or Part B of the Register in the prescribed manner. IPINI1IMYS/TIl 
Page 20 
(2) An. application shall not be made in respect of goods 
comprised in more than one class. 
(3) Subject to the provisions of this Act, the Registrar may 
refuse ~he 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) AD. 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 su to what conditions, 
amendments, modifications or . °tation8, if any, the appli .. 
cation 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 accep .. 
tance 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. IPINIl!MYS/TIl 
Page 21 
(11) In the' case of an application for registration of a 
trade mark (other than a certification trade mark) in Part A 
of the Register, the Registrar may with the consent of the 
applicant treat the application as an a tion for 
registration in Part B of the Register and al with tbe 
application accordingly. 
(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 bas 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 con­
ditions or limitations, 
the Registrar may withdraw the acceptance and proceed 
as if the application bad not been accepted. 
26 .. (1) An application for the registration of a trade mark Application 
in respect of any goods shall not be refused nor shall =ed 
permission for such registration be withheld on the ground wheic.ttade 
that it appears that the applicant does not use or propose ~~ t;­
to 'use the trade mark- asa~pee or 
re~m:d 
(a) if tbe Registrar is satisfied that a body corporate is mer. 
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 by the corporation; or 
(b) if the application is accompanied by an application 
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 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. IP/N/IIMYS/T/l 
Page 22 
Adve~ 
mentor 
~~ce 
of 
IIlppliClation. 
Op~tion 
to 
registration (3) Where a trade mark is registered in respect of any 
goods under th~ power conferred by subsection (1), then 
unless the corporation has been registered as the proprietor 
of the trade mark in respect of those goods 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_ 
27.. (1) When an application for registration of a trade 
mark has been accepted whether absolutely or subject to 
conditions, amendments, modifications or limitations, the 
Registrar shall, as soon as may be after a lance, cause 
the application as accepted to be adverti in the pre-
scribed manner. . . 
(2) The advertisement shall set forth an 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 it is made 
under paragraph (e) of subsection (1) of section 10 ·or in 
any other case where it appears to him that it is expedient 
by reason of any exceptional circumstances to do so. 
(3) Where an application has been advertised under 
subsection (2) the Registrar may, if he thinks fit, adv~rtise 
it again when it has been accepted but he shall not be 
bound to do so. 
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 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 Registrar shall send a copy of the notice to the 
applicant and within the prescribed time after the receipt 
thereof the applicant shall send to the Registrar in the 
prescribed manner, a counter-statement of the grounds for 
his application, and, if he does not do so, he shall be 
deemed to have abandoned his application. 
(4) If the applicant submits such a countercstatement 'he 
shall furnish a copy thereof to the opponent and the 
Registrar shall after giving to the applicant and oppg.nent 
an opportunity of being heard decide-(a) to refuse to register the trade mark; 
(b) to register the trade mark absolutely; or _ IPINllIMYS/TIl 
Page 23 
(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 deter­
mining whether, and subject to what conditions, amend~ 
ments, 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 fu~her 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. _ 
(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 substanti~ly 
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) H a person giving notice of opposition or an applicant 
sending a counter~laim after receipt of a copy of such a 
notice, or an appellant, neither resides nor carries on 
business in Malaysia, the Court may require hitn to give 
security for costs of the proceedings before it relative to 
the opposition, application or appeal, as the case may be, 
and in default of such security being duly . en, may treat 
~he opposition, application, or appeal, as e case may be; 
as abandoned. IPINllIMYS/T/l 
Page 24 
Non<om~ 
pletion of 
re~stration. 
Timefof 
re~tioo. 29. (1) When an application for registration of a trade mark 
is not accepted within twelve months from the date of the 
application by reason of default on the part of the a cant, 
the Registrar may, after giving notice in writing of 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-acceptance 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 
30. (1) When an application for registration of a trade mark 
in Part A or Part B of the Register has been accepted 
and either-
(0) the applicatipn has not been opposed and the 
for opposition has expired; or 
(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 on payment of the pre .. 
scribed fees in the name of the proprietor in Part A or 
Part B of the Register, as the case may be, 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. 
31.. (1) Subject to subsection (2) a trade mark shall not be 
registered after twelve months from the date of the 
~~mentof the acceptance of the application for 
reglStration of the trade mark. IPINI1IMYS/TIl 
Page 25 
(2) Where the registration of a trade mark is delayed by­
(a) opposition to the registration of the trade mark; or 
(b) any appeal made to the Court, 
that trade mark may be registered within such time as 
directed by the Registrar o.r the Court respectively. 
(3) Where a trade mark has not been registered within 
the time applicable to it the application shall lapse. 
32.. (l) The registration of a trade mark shall be for a Duration of 
period of seven years but may be renewed from time to time re~i:tr:uion. 
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 undex= 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. 
(3) The registration of a trade mark may be renewed 
from time to time in accordance with Part VII. 
33. 0) The registration of a trade mark shall not be deemed Wordsused 
to have become invalid by reason only of any use after the d:: 
date of the registration of a word or words which the trade of an article 
mark contains or of which it consists as the name or ~ substance. 
description of an article or substance. 
(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; or 
(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, 
subsection (3) shall have effect. IPINI1IMYS/TIl 
Page 26 
(3) When the facts mentioned in paragraph (a) or (b) of 
of subsection (2) 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 markt so far as 
regards registration in· respect of the article or 
substance in question or of any goods of the same 
description, shall be deemed for the purpose of 
section 45 to be an entry wrongly remaining in the 
Register; 
(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 or substance in question or of any goods 
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 or substance or any goods 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 disclaim~r 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 or substance in 
question or to any goods of the same 
description; or 
(ii) if the trade mark contains that word or those 
words and other matter, all rights of the 
registered proprietor to the exclusive use of the 
word or those words, in such relation as in 
subparagraph 0), 
shall be deemed to have ceased on the date at which 
the use mentioned in paragraph (a) of subsection 
(2) first became well .known and established or at the 
expiration of the period of two years mentioned in 
paragraph (b) of subsection (2). IP/NI 1 IMYSIT 11 
Page 27 
(4) No word which is the commonly used and accepted 
name of any single chemical element or single ch~cal 
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 distin· 
guished from the element or compound as .made by others 
and in association with a suitable name or description open 
to the public use. 
34. Subject to the provisions of this Act,- PO~U$?J rCl1sterl;Y 
(a) the person for the time being entered in the Register proprietor. 
as registered. proprietor of a trade mark shall, 
subject to any rights appearing from such Register 
to be vested in any other· person, have power to 
assign the same and give good discharges f.or any 
consideration for the assignment; 
(b) any equities in respect of a trade mark may be 
enforced in like manner as in respect of any other 
personal property. 
35. (1) Subject to the provisions of this Act, the registration ~ight$ 
of a person in Part A or Part B as registered proprietor of a ~~i~~oo 
trade mark (other than a certification trade mark) in respect . 
of any goods 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 goods subject to any conditions, 
amendments, modifications or limitations entered in the 
Register. 
(2) Where two or more persons are proprietors of regis­
tered trade marks which are identical or nearly resembling 
each other whether for the same goods or different goods 
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 anyone of those 
persons as against any other of those persons by registration 
of the trade mark but each of those pe,rsons have the same 
rights as against other persons (not being registered users) 
as he would if he were the sole registered proprietor. IPlNll/MYS/T/l 
Page 28 
Registratioo 
prima jade 
evidence of 
validity. 
Registratioo 
ooDchlsive. 36. In all legal proceedings relating to a registered trade 
mark (including applications under section 45) the fact that 
a person is registered as proprietor of the trade mark shall 
be prima jacie evidence of the validity of the original 
registration of the trade mark and of an subsequent assign­
ments and transmissions thereof. 
37. In all legal proceedings relating to a trade mark 
registered in Part A of the Register (including applications 
under section 45) the original registration of the trade mark 
under this Act shall, after the expiration of seven years from 
the date thereof, be taken to be valid in all respects unless 
it is shown-
(0) that the original registration was obtained by fraud; 
(b) that the trade mark offends against section 14; or 
(c) that the trade mark was not, at the commencement 
of the proceedings, distinctive of the goods of the 
registered proprietor, 
except that this section shall not apply to· a trade mark 
registered under the repealed Ordinances and incorporated 
in the Register pursuant to subsection (3) of section 6 until 
after the expiration of three years from the commencement 
of this Act. 
'Wrlngement 38. (1) A registered trade mark is infringed by a person :;:.ade who, not being the registered p prietor of the trade mark 
or registered user of the tr mark using by way of 
permitted use, uses a mark which is identical with it or so 
nearly resembling it as is likely to deceive or cause con .. 
fusion in the course of trade in relation to goods in respect 
of which the trade mark is registered in such a manner as 
to render the use of the mark likely to be taken either-
(a) as being use as a trade mark; or 
(b) in a case in which the use is use upon the goods or 
in physical relation thereto or in an advertising 
circular, or other advertisement, issued to the public, 
as importing a reference to a person having tke right 
either as registered proprietor or as registered user 
to use the trade mark or to goods with which the 
person is connected in the course of trade. IP/N/IIMYS/T/l 
Page 29 
(2) In an action for infringement of a trade mar~gis­
tered in Part B of the Register (not being an infringement 
occurring by reason of an act referred to in section 39) an 
injunction or other relief shall not be anted to the tilI 
if the defendant establishes to the sat 'on of th Court 
that the use of the trade mark of which the plaintiff-complains 
is not likely to deceive or cause confusion or to be taken as 
indicating a connection in the course of trade between a 
person having the right either as registered proprietor or 
as registered user to use the trade mark and the goods in 
respect of which the trade mark is registered. 
39 .. (1) Where, by notice upon goods or upon the container Infringement 
of goods, the registered proprietor or a registered user of a ~t; 
trade mark registered in Part A or Part B of the Register ~ ef 
makes a statement prohibiting the doing of an act to which =on. 
this section applies, a person who, being the owner for the 
time being of the goods, does that act, or authorises it to be 
done, in relation to the goods in the course of trade or with 
a view to a dealing with the goods in the course of trade, 
shall be deemed to infringe the trade mark .uruess-
(a) at the time when he agreed to buy the goods he 
acted in good faith without notice that the state .. 
men t appeared on the J!oods; or 
(b) he became the owner of the goods by virtue of a 
title derived from another person who had agreed 
to buy the goods. 
(2) The acts to which this section applies are-
(a) the application of the trade mark u goods after 
they have suffered alteration to err state, con .. 
ditions, get .. up or packing; 
(b) in a case in which the trade mark is upon the goods 
the alteration, partial removal or partial oblitera­
tion of the trade mark, the application of some 
other trade mark to the goods or the addition to 
the goods of other matter in writing or otherwise 
that is likely to injure the reputation of the trade 
mark; and 
(c) in the case in which the trade mark is upon the 
goods and there is also other matter upon the goods 
indicating a connection in the course of trade 
between the registered proprietor or registered user 
and the goods, the removal or obliteration, whether 
wholly or partially, of the trade ·mark unless that 
other matter is wholly removed or obliterated. IPlNlIIMYS/T/l 
Page 30 
(3) In this section references in relation to goods to the 
registered proprietor, to a registered user, and to the 
registration of a trade mark shaH be construed, respectively, 
as references to the registered proprietor of the trade mark, 
to a registered user of the trade mark and to the registration 
of the trade mark in respect of those goods and the expres­
sion "upon" includes, in relation to goods, a reference to 
physical relation to the goods. 
Actli~ot. 40. (1) Notwithstanding anything contained in this Act, 
:fri~;:~t. the following acts do not constitute an infringement of a 
trade mark-
(a) the use in good faith by a person of his own name 
or the name of his place of business or the name 
of the place of business of any of his predecessors 
in business; 
Cb) the use in good faith by a person of a d . tion 
of the character or quality of his goods not ing 
a description that would be likely to be taken· as. 
importing. any reference as is mentioned in para­
graph (b) of subsection (l) of section 38 or para­
graph (b) of subsection (3) of section 56; 
(c) the use by a person of a trade mark in relation to 
goods in respect of which he has by himself or his 
predecessors 'in business, continuously used the 
trade mark from a date before-
(i) the use of the registered trade mark by the 
registered proprietor,. by his predecessors in 
business or by a registered user of the trade 
mark; or 
(ii) the registration of the trade mark, 
whichever is the earlier; 
(d) . in relation to goods connected in the course of 
trade with the registered proprietor or a . ered 
user of the trade mark if, as to those g or a 
bulk of which they form part, the registered 
proprietor or the registered user in conforming to 
the permitted use has applied the trade mark and 
has not subsequently removed or obliterated it or 
has at any time expr or impliedly consented to 
the use of the trade mar ; and IPIN/IIMYS/TIl 
Page 31 
(e) the use of the trade mark by a person in relation 
to goods adapted to form part of, or to be accessory 
to, other goods in relation to which the trade mark 
has been used without infringement of the... . .right 
given or might. for the time being be so used, if 
the use of the' trade mark is reasonably necessary 
in order to indicate that the goods are so adapted 
and neither the purpose nor the effect of the use 
of trade mark is to indicate otherwise than in 
accordance with the facts a connection in the 
course of trade between any person and the goodS; 
and 
(I> the use of a trade mark, which is one of two or 
more registered trade marks which are substantially 
identical, ,. in exercise of the right to. the use of that 
trade mark given by registration as provided by 
this Act. 
(2) Where a trade mark js registered subject to con­
ditions, amendments, modifications or limitations, the trade 
mark is not infringed by the use of the trade mark in any 
manner in relation to goods to be sold or otherwise traded 
in in a place or in relation to goods to be exported to a 
market or in any other circumstances to which having 
regard to those conditions, amendments, modifications or 
limitations the registration does not extend. 
PART VII 
RENEWAL OF REGISTRATION 
(1) The Registrar shall, on application made by the Re~ewa~ of 
registered proprietor of a trade mark in the prescribed IegtStratlOll. 
manner and within the prescribed period, renew the 
registration of the trade mark for a period of fourteen years 
from the date of expiration of the original registration, or of 
the last renewal of registration, as the case may be, and this 
date shall hereinafter be referred to as "the date of expiration 
of the last registration". 
(2) At the prescribed time before the date of expiration of 
the last r . tration of a trade mark the Registrar shall send 
notice in prescribed manner to the registered proprietor 
of the date of expiration of the last registration and the 
conditions as to payment of fees upon which the renewal of 
the registration may be obtained and if such conditions have 
not been duly complied with, the Registrar may remove the 
trade mark from the Register subject to such conditions, if 
any, as to its restoration to the Register as may be prescribed. IPINI1/MYS/TIl 
Page 32 
Status of. 
wu-enewed 
trademark. 
Correction 
of Register. 42.. Where a trade mark has been removed from the 
~egister for non-payment of the fee for renewal, it shall, 
nevertheless, for the purpose of an application for the 
registration of a trade mark within one year from the date 
of the removal be deemed to be a trade mark which is 
already on the Register except that this section shall not 
have effect when the Registrar is satisfied either-
(0) that there has been no use in good faith of the trade 
mark which has been removed during the two years 
,immediately preceding its removal; or 
(b) that no deception or confusion is likely to arise 
from the use of the trade mark which is the subject 
of the application for registration bv reaso~ of any 
previous use of the trade mark which has been' 
removed. 
PART VID 
CORRECTION AND REcrIFICATION OF REGIS'l"'ER 
43. (1) The Registrar may, on request made in the 
prescribed manner by the registered proprietor of a tfade 
mark, amend or alter the Register-
(a) by correcting an· error or entering any change in the 
name, address or description of the registered 
proprietor of a trade mark; 
(b) by cancelling the entry of a trade mark in the 
Register; 
(c) by amending the specification of. the _ g~,in 
respect of which the trade mark is reg1stet~ or 
entering a disclaimer or mem9randum {clatrna.' to 
the trade mark without extending in ' way the 
rights given by the existing registration 0 'the 'trade 
mark, 
and may make any consequential amendment or alteration 
in the certificate of registration and for that ~ may 
require the certificate of registration to be submitted to ·hmi~ 
(2) The Registrar may on the request made. m, ,t:M; 
prescribed manner by a registered user of a trade .marlC 
correct an error or enter any change in the name:. ,AddresS 
or description of the 'registered user. 
(3) A decision of the Regimv tmder thilsetfioa ,b 
subject to appeal to the Coutt. IPINll IMYS/TI 1 
Page 33 
44 .. (1) The registered proprietor of a trade mark may apply AitA:n.tiODlI 
in the "bed manner to the Registrar for leave to add of registered 
t th tr d k . b . trade marlt. o or e a e mar ID any manner not su stantlally 
affecting the identity thereof and the Registrar may refuse 
leave or may grant it on such terms and subject to such 
limitations as he may think fit. 
(2) The Registrar may cause an application under this 
section to be advertised in the prescrihed manner in any case 
where it appears to him that it is expedient to do' so!, and if 
within the prescribed time from the date of the advertisement· 
any person gives notice to the Registrar. in the prescribed 
manner of opposition to the application, the Registrar shall, 
after hearing the parties if so required, decide the matter. 
(3) A decision of the Registrar under this section is 
subject to appeal to the Court. 
(4) Where leave under subsection (1) is granted the trade 
mark~ as altered, ~haU be advertised in the prescribed manner 
unless it has already been advertised in the form to which 
it has been altered in an advertisement under subsection (2). 
45. (1) Subject to the provisions of this Act- ~e~cation 
(a) the Court may on the application in the prescribed Register. 
manner cif any person aggrieved by the non .. 
insertion in or omission from the Register of any 
entry or by any entry made in the Register without 
sufficient cause or by any entry ully 
remaining in the Register, or by any error or fect 
in any entry in the Register, make such order for 
making, expunging or varying such entry as it 
thinks fit; 
(b) the Court may in. any proceeding under this section 
decide any question that may be necessary or 
expedient to decide in connection with the rectiti 
cation of the Register; . 
(c) in case of fraud in the registration~ assignment or 
transmission of a registered trade mark or if in his 
opinion it is in the public interest to do so, the 
Registrar may himself apply to the Court 'under 
this section; IPINI 1 IMYS/TI 1 
Page 34 
(cl) ~ order of ~e Court rect!fyin$ the Register shall 
direct that notice of the rectification be served on the 
Registrar in the prescribed manner and the Registrar 
shall upon receipt of the notice rectify the Register 
accordingly. 
(2) Power to rectify the Register conferred by this section 
shall include power to remove a registration in Part A of 
the Register to Part B. 
ProvisioilS 46. (1) Subiect to this section and to section 579 the 
~ :d~n-Wie Court -or--the -Registrar maY9 on application by a person 
man. aggrieved, order a trade mark to be removed from the 
Register in respect of any of the goods in respect of which 
it is registered on the ground-
(0) that the trade mark was registered without an 
intention in good faith, on the part of the applicant 
for registration or, if it was registered' under 
subsection (1) of section 26$ on the part of the body 
corporate or . tered user concerned, to use the 
trade mark in re ation ~o those goods and that there 
has in fact been no use in good faith of the trade 
mark in relation to those goods by the registered 
proprietor or registered user of the trade mark for 
the time being up to the date one month before the 
date of the application; or 
(b) that up to one month before the date of the appli= 
cation a continuous period of not less than three 
years had elapsed during which the trade mark was 
a registered trade mark and during which there was 
no use in good faith of the trade mark in relation 
to those goods by the registered proprietqr or regis­
tered user of the trade mark for the time being. 
(2) Except where an applicant has been pe~ttt4 under 
section 20 to register an identical or nearly resemblliig trade 
mark in respect of the goods to which the application ~la.tes 
or the Court or the Registrar is of the opinion, that the 
applicant can properly be permitted to register ",the trade 
mark, 'the Court or the Registrar may refuse an application 
made under subsection (1) in relation to any goods if there 
has been, before the relevant date or during the relevant 
period, as the case may be, use in good faith of the trade 
mark by the registered proprietor of the trade mark for the 
time being in relation to goods of the same description, 
being goods in respect of which the trade mark is registered. IPINII/MYS/T/l 
Page 35 
(3) Where in relation to goods in respect of which .trade 
mark is registered-
(a) the matter referred to in paragraph (b) of subsection 
(1) are shown as far as regards failure to use the 
trade matk in relation to goods to be sold or other­
wise traded in in a particular place in Malaysia 
(otherwise than for export from Malaysia) or in 
relation to ~oods to be exported to a particular 
market outsIde Malaysia; and 
(b) a person has been permitted Under section 20 to 
. register an identical or nearly resembling trade 
mark in respect of those goods under a registration 
extending to the use in relation to goods to be sold 
or otherwise traded in in that place (otherwise than 
for export from Malaysia) or in relation to goods 
to be exported to that market, or the Court or the 
Registrar is of the 0 . • on that that person might 
properly be permit! to register the trade mark, 
the Court or .the Registrar may, on application by that 
person, direct that the registration of the first .. mentioned 
trade mark shall be subject to such conditions, amendments, 
modifications or limitations as the Court or the Registrar 
thinks proper for securing that that registration shall cease 
to extend to use of the trade mark in relation to goods to 
be sold or otherwise traded in in that place (otherwise than 
for export from Malaysia) or in relation to goods to be 
exported to that market . 
(4) An applicant is not entitled to rely for the purpose of 
paragraph (b) of subsection (1) or for the purpose of sub .. 
section (3) on any failure to use a trade mark if failure is 
shown to have been due to special circumstances in the 
trade and not to an intention not to use or to abandon the 
trade mark in relation to the goods to which the application 
relates. 
(5) An order or direction of the Registrar under this 
section is subject to appeal to the Court. 
47@ (1) Where a person becomes entitled by assignment or RePtrllticm 
transmission to a registered trade mark he shall 1p.ake ~gnment. 
application to the Registrar to register his title and the 
Registrar shall, on receipt of the application and proof of 
title to his satisfaction, register that person as the proprietor 
of the trade mark in respect of the goods in res of which 
. the assignment or transmission has effect an e p~ .. 
culars of the assignment or transmission to be entered in 
the Register. IPlNlIIMYS/T/l 
Page 36 
(2) A decision of the Registrar under subsection (1) is 
subject to appeal to the Court. . 
(3) Except in the case of an a peal under this section or 
of an application under section a document or instrument 
in respect of which no entry has been made in the Register 
in accordance with subsection (I) shall no~ unless the Court 
otherwise directs, be admissible in evidence in Court to prove 
title to a registered trade mark. 
PART IX 
REGISTERED USBR 
48 .. (1) Subject to this section, a person other than the 
registered proprietor of a trade mark may be registered as 
registered user of that trade mark for all or any of the goods 
in respect of which the trade mark is registered (other than 
a defensive trade mark) and either with or without conditions 
or restrictions. 
. (2) Where it is proposed that a person shall be registered 
as a registered user of a trade mark, the registered proprietor 
and the proposed registered user shall apply in writing 10 
the Registrar in the prescribed manner and shall furnish him 
with a statutory declaration made by the registered . 
pro . etor or by some person authorised in writing to act 
on behalf and approved by the Registrar-
(a) giving particulars of the' relationship existing or 
proposed between the registered proprietor and 
the proposed registered user, including particulars 
showing, the degrees of control by the registered 
proprietor over the permitted use which their 
relationship will confer and whether it is a term of 
their relationship that the proposed registered user 
shall be the sole registered user or that there shall 
be any other restriction as to persons for whose 
registration as registered users application may be 
made; 
(b) stating the goods in respect of which registration 
is proposed; 
(c) stating any conditions or restrictions proposed with 
respect to the characteristics of the goods, to the 
mode or place' of permitted use or to any other 
matter; and IPINIIIMYS/TIl 
Page 37 
(d) stating whether the permitted Use is to be for a 
period or without limit of period and if for a period 
the duration of that period, 
and with such further documents~ information or evidence 
as ,may be required by the Registrar or 'any regulations 
prescribed under this Act. 
(3) 'Where the requirements of subsection' (2) have been 
complied with, the Registrar, after considering the docu~ 
ments, information and evidence furnished to ·him is satisfied 
that in all the circumstances the use of the trade mark in 
relation to the proposed goods or any' of them by the 
proposed registered user subject to conditions or restrictions 
which the Registrar thinks appropriate would not be con­
trary to the public interest, he may register the proposed 
registered user as the registered user for the goods. 
(4) The Re~strar should not register a person as a 
registered user of a trade mark if it appears. to him that the 
registration would tend to facilitate trafficking in the trade 
mark . 
. (5) The registration of a person as a registered user of a 
trade mark shall be for such period as, having regard to the 
information referred to in paragraph Cd) of subsection (2), 
the Registrar thinks fit. 
(6) The Registrar may determine that the period of the 
registration of a person as a registered user of a trade mark 
shall commence on the date on which the application by that 
person for registration as a registered user was made. 
(7) The Registrar shall if required by an applicant under 
subsection (2) ensure that any document, information and 
evidence furnished for the purpose of the application (other 
than matter entered in the Register) is not disclosed to rivals 
in trade except by an order of the Court. 
49" (1) Without prejudice to section 45, the registration of Powers to 
a person as a registered user- ~:~ind 
(a) may be varied by the Registrar on the writt~n ~f~stration 
application in the prescribed manner of the r regi$tere<i 
tered proprietor with respect to the goods for w cb wer. 
or with respect to any conditions· or restrictions 
subject to which the registration has effect; 
(b) may be extended by the Registr~ on the appli­
cation in writing of the registered proprietor for 
such period as the Registrar thinks fit; IP/NllIMYS/T/l 
Page 38 
(c) may be cancelled by the Registrar on the application 
in the "bed manner of the registered proFietor 
or of e registered 'USer or of any other registered 
user of the trade mark; or 
(d) may be cancelled by the Registrar on the applica~on 
in the prescribed manner of a person' 'on the 
gronnd-
(1) that the registered user had used the trade 
mark otherwise than by way of the permitted 
use or in such a way as to cause or is likely to 
cause deception or confusion; 
(n) that the registered proprietor or the registered 
user misrepresented or failed to disclose 
some fact material to the application for the 
registration or that the circumstances have 
materially changed since the date of the rep 
tration; or 
(ill) that the registration ought not have been 
effected having regard to rights vested in the 
applicant, by 'virtue of a contract in the 
performance of which he is interested. 
(2) The Registrar may at any time cancel the registration 
of a person as a registered user of a trade mark for any 
goods in respect of which the trade mark is no longer 
registered. 
50. (1) The permitted use of a re~tered trade m3:fk shall 
be deemed to be use by the reglStered p . etor of the 
trade mark and not use by a person other th the registered 
proprietor for the purposes of section 46 and for any other 
n'I'lI1M'V"oSes for which use by the . ered proprietor of the 
tra e mark is material under this or common law. 
(2) Where--
(a) a person is registered as a registered user of a trade 
mark and there has been previous use (whether 
before or after the commencement of this Act) of 
the trade mark by that person; and 
(b) the use is in relation to goods in respect of which 
that person is registered and, where he is registered 
subject to conditions Of restrictions--fP/N/l/MYS/TIl 
Page 39 
(0 that use complied substantially with those 
conditions or restrictions; or 
(ll) did not so comply but was not such as to be 
contrary to the public interest, 
subsection (1) has effect as if that previous use had been 
permitted use. 
51" (1) Subject to any agreement subsisting between the W~mt 
registered user of a trade mark and the registered proprietor pr J-
of the trade mark, the registered user is entitled to call upon 
the registered proprietor to take proceedings for infringe~ 
ment of the trade mark, and if the registered proprietor 
refuses or neglects to do so within two months after being 
so called upon, the registered user may institute proceedings 
for ~gement .in his own name as if he were the registered 
proprietor and shall make the registered proprietor a 
defendant. 
(2) registered proprietor so added as a defendant is not 
liable for costs unless he enters an appearance and takes 
part in the proceedings. 
52.. This Part does not confer on the registered user of a Regbtered 
trade mark an ~signable or transmissible right to the use =~ to 
of that trade mark. 
53. Provisions shall be made by regulations for the ~=y 
notification of the registration of a person as a registered 
user to any other registered user of the trade mark for the 
notificatiqn of any application under paragraph (cl) of 
subsection (1) of section 49 to the registered proprietor and 
each registered user (not being the applicant) of the trade 
mark and for giving to the applicant on such an application 
.and to all persons to .whom such application is notified and 
who intervenes in the proceedings in accordance with the 
regulations an opportunity to be heard. 
54 .. A decision of the Registrar under this Part is subject to Ap~l to 
appeal to the Court. C(lurt. IP/NI 1 IMYS/TI 1 
Page 40 
lusigrunent 
and trans­
mission of 
trademarb. PART X 
ASSIGNMENT OF TRADE MARKS 
SS. (1) Subject to this section, a registered trade mark shall 
be assignable and transmissible with or without the goodwill 
of the business concerned in the goods in respect of which 
the trade mark is registered or in part of the goods. 
(2) Notwithstanding subsection 0), an assignment of a 
registered trade mark without goodwill whether before or 
after the commencement of this Act is invalid if the trade 
mark has not at any time before the 'assignment been in use 
in good faith in Malaysia by the assignor or his predecessor 
in title except that this subsection does not apply wher~ 
(a) the trade mark was registered with the .intention 
that it shall be assignable to a body corporate ye~ "to 
be formed and the trade mark has been assign~ ,or 
(b) the trade mark was registered 'With the intention that 
a person shall be permitted to 'use it as a registered 
user and such registered user has been registered'in 
respect of the trade mark within six months after the 
registration of the trade mark and has used that 
trade mark within that period. 
(3) Not'Withstanding subsection (1), a trade mark· shall not 
be, or be deemed to have been, assignable or transmissible 
in a case in which as a ,result of an assignment or tra,ns... 
mission there would in the circumstances subsist or have 
subsisted whether under common law or by registration 
exclusive rights in more than one of the persons concerned 
to the use, in relation to the same goods or description of 
goods, of trade marks so nearly resembling each other or of 
identical trade marks, if, having regard to the similarity of 
the goods and of the trade marks, the use of the trademarks 
in exercise of those rights would be or is likely to deceive or 
cause confusion and where a" trade mark is or have been so 
assigned or transmitted the assignment or transmission shall 
not be deemed to be or to have been invalid under this sub .. 
. section ,if the exclusive rights subsisting as a result thereof 
in the persons concerned respectively are or were, having 
regard to the limitations imposed thereon, such as not to be 
exercisable by two or more of those persons in relation to 
goods to be sold or otherwise traded in within Malaysia 
(otber'Wise than for export from Malaysia) or in relation to 
goods to be exported to the same market outside Malaysia. IPlNlIIMYSrrl1 
Page 41 
(4) Where an application is made in the prescribed manner 
by the registered proprietor of a trade mark who p ses 
to assign it or by a person who claims that a trade mar has 
been transmitted to him or to a predecessor in title of his 
since the commencement of this Act; the Registrar, if he is 
satisfied that in all circumstances the use of the trade marks 
in exercise of the said rights would not be contrary to the 
public interest, may in writing approve the assignment or 
transmission and an assignment or transmission so approved 
shall not be deemed to be or to have been invalid under this 
section but this provision shall not have effect unless 
application for the registration under section 47 of the title 
of the person becoming entitled is made within six months 
from the date on which the approval is given or, in the case 
of a transmission, was made l:?efore that date. 
(5) Where an assignment in fespect of any goods of a trade 
mark is at the time of the assignment used in a business in 
those goods is made otherwise than in connection with the 
goodwill of that business, the assignment shall not be 
deemed to have. taken effect unless the assignee applies to 
the Registrar for directions with respect to the advertisement 
of the assignment within six months from the date on which 
the assignment is made and advertises it in such form and 
manner and within such period as the Registrar may direct. 
(6) All rights subsisting in a trade mark whether under 
this Act or otherwise shall be deemed to be assigned or 
transmitted upon the registration of the assignment or 
transmission of the trade mark. 
(7) A decision of the Registrar under this section is 
subject to appeal to the Court. 
PART XI 
CERTIFICATION TRADE MARKS 
56. (1) A mark adapted in relation to any goods to distin- Certification 
guish in the course of trade goods certified by any person trade roub. 
in respect of origin, material, mode of manufacture, quality, 
accuracy, or other characteristic, from goods not so certified 
shall be registrable as a certification trade mark in Part A 
of the Register in respect of those goods in the name of that 
person as roprietor thereof except that a mark shall not 
be so re . le in the name of a person who carries on a 
trade in goods of the kind certified. lPlNllIMYS!TI1 
Page 42 
(2) In determining whether a mark is adapted to distin .. 
guish the Registrar may have regard to the extent to which-
(a) the mark is inherently adapted to distinguish in 
relation to the goods in question; and 
(b) by reason of the use of the mark or of any other 
circumstances, the mark is in fact adapted to 
distinguish in relation to the goods in question. 
(3) Subject to paragraphs (a) and (b) of section 37, 
paragraphs (a) to (c) of subsection (1) of section 40 and 
this Part, the registration of a person as registered 
proprietor of a certification trade mark in respect of any 
goods shall, if valid, give to that person the exclusive right 
to the use of the trade mark in relation to those , and 
without prejudice to the generality of the foregomg words, 
that right shall be deemed to be infringed by any person 
who, not being the registered pro rietor of the trade mark 
or a person authorised by him un the rules-in that behalf 
using it in accordance therewith, uses a mark identical with 
it or so nearly resembling it as is likely to deceive or cause 
confusion, in the course of trade, in relation to any goods 
in respect of which it is registered and in such manner as to 
render the use of the mark likely to be taken either-
(0) as being use as a trade mark; or 
(b) in the case in which the use is use upon the goods 
or in physical relation thereto or in an advertising 
circular, or other advertisement issued to the public, 
as importing a reference to some person having the 
right either as . stered proprietor or by his autho­
risation under e relevant rules to use the trade 
mark or to goods certified by the registered pro­
prietor. 
(4) The right to the use of a certification trade mark given 
by registration shall be subject to any conditions, amend­
ments, modifications or limitations entered on the Register 
and shall not be deemed to be infringed by the use of any 
such mark in any mode, in relation to goods to be sold or 
otherwise traded in in any place, in relation to goods to be 
exported to any market, or in any circumstances to which 
having regard to any such conditions, amendments, modi .. 
fications or limitations, the registration does not extend. IPINI1IMYSrrl 1 
Page 43 
(5) The ri t to the use of a certification trade. mark 
given by re ation shall not be deemed to be infringed 
by the use of any such mark by a person-
(a) in relation to goods certified by the registered 
proprietor of the trade mark if, as to those goods 
or a bulk of which they form the· rietor 
or another in accordance wit his au ation 
under the relevant rules has applied the trade mark 
and has not" subsequently removed or obliterated it 
or the registered proprietor has at any time expressly 
or impliedly consented to the use of the trade mark; 
or 
(b) in relation to goods adapted to form part of, or to 
be accessory to, other goods in relation to which the 
trade mark has been .used without infringement of 
the right given or might for the time being be so 
used, if the use of the mark is reasonably necessary 
in order to indicate that the goods are so adapted 
and neither the purpose nor the effect of the use of 
the mark is to indicate otherwise than in accordance 
with the fact that the goods are certified by the regis~ 
tered proprietor, 
except that paragraph (a) shall not have effect in the case 
of use consisting of the application of any such mark to any 
goods, notwithstanding that they are such goods as are 
mentioned in that aragraph, if such application is contrary 
to the· relevant es. 
(6) Where a certification trade mark is one of two or more 
registered trade marks which are identical or nearly 
resembling each other, the use of any of those trade marks 
in exercise of the right to the use of that trade mark given 
by registration shall not be deemed to be an infringement 
of the right so given to the use of any other of those trade 
marks. 
(7) An application for the registration of a trade mark 
under this section must be made to the Registrar in writing 
in the prescribed manner by the person who proposes to be 
registered as the proprietor thereof. 
(8) The provisions of subsections (3) to (8) and sub­
section (10) of section 25 shall have effect in relation to an 
application under this section as they have effect in relation 
to an application under subsection (1) of that section. . IPINIlIMYS/TIl 
Page 44 
(9) 'In dealing with an application under this section the 
Registrar shall have regard to the like oonsiderations$ as far 
as relevant, as if the application were an application under 
section 25 and to any other considerations relevant to 
applications under this section, including the desirability of 
securing that a certification trade mark shall comprise some 
indication that it is such a trade mark. 
(10) An applicant for the registration of a trade mark 
under this section shall transmit to the Registrar draft rules 
for governing the use thereof, which shall include provisions 
as to the cases in which the proprietor is to certify goods 
and to authorise the use of the trade mark and may contain 
any other provisions that the Registrar may require or 
permit to be inserted therein (including provisions confer­
ring a right of appeal to the' Registrar against any i'efusaI of 
the proprietor to certify goods or to authorise the use of the 
trade mark in accordance with the rules) and such rules, if 
approved, shall be deposited with the R . at and shall 
be open to inspection in like manner as th Register. . 
(11) The Registrar shaH consider the application with 
regard to the following matters, that is to say-
(a) whether the applicant is competent to certify the 
goods in respect of which the mark is to be regis­
tered; 
(b) whether the draft rules are satisfactory; and 
(c) whether in all the circumstances the registrations 
applied for would be to the public advantage, 
and may either-
(i) refuse to accept the application; or 
(ii) accept the application and approve the rules, either 
without modification and unconditionally or subject 
to any conditions, amendments, modifications or 
limitations of the application or of the rules, which 
he may think requisite, 
but except in the 'case of acceptance and approval without 
modification and unconditionally, the Registrar shall not 
decide the matter without giving to the applicant an oppor­
tunity of being heard and the Registrar may, at the request 
of the applicant, consider the application before authorisa .. 
tion to proceed with the application has been given, so that 
he shall be at liberty to reconsider any matter on which he 
has given a decision if any amendment or modification is 
thereafter made in the application or in the draft rules. IP/NI I IMYS/TI 1 
Page 45 
(12) Where an application has been accepted the~egis", 
trar shall, as soon as may be after such acceptance, cause 
the application as accepted to be advertised in the preScribed 
manner and section 28 shall have effect in relation to the 
registration of the mark as if the a ation had been an 
application under section 25 except at, in deciding under' 
section 28, the Registrar shall have regard only to the 
consideration referred to in subsection (9), and a decision 
under section 28 in favour of the a :licant shall be 
conditional on the determination in favour by the 
Registrar under subsection (13) of any opposition relating 
to any of the matters referred to in subsection (11). 
(13) When notice of oppositi~n is given relating to any 
of the matters referred to in subsection (11),., the Registrar 
shall, after hearing the parties, if so required, and considering 
any evidence, decide whether, and subject to what conditions, 
amendments, modifications or limitations of the application 
or of the rules, if any, registration is, having regard to those 
matters, to be permitted. 
(14) (0) The rules deposited in respect of a certification 
trade mark may, on the application of the registered pro­
prietor, be altered by the Registrar. 
(b) The Registrar may cause an application for his 
consent to be advertised in any case where it appears to 
him that it is expedient to do so, and, where the Registrar 
causes an application to be advertised, if within the pres­
cribed time from the date of the advertisement any person 
gives notice to the Registrar of opposition to the application, 
the Registrar shall not decide the matter without giving the 
parties an opportunity of being heard. 
(15) ne Court may, on the application in the prescribed 
manner of any person aggrieved, or on the application of 
the Registrar, make such order as it thinks fit for expunging 
or varying any entry in the Register, relating to a certifica.­
tion trade mark, or for varying' the deposited rules, on the 
ground-
(0) that the registered proprietor is no longer competent, 
in the case of any of the goods in respect of which 
the trade mark is registered, to certify the goods; 
(b) that the registered proprietor has failed to observe 
a provision of the deposited rules to be observed on 
his part; IPINI1IMYS/TIl 
Page 46 
(c) that it is no longer to the public advantage that 
the trade mark should be registered; or , 
(dJ that it is requisite for the public advantage that, 
if the trade mark remains registered, the roles 
should be varied, 
but the Court shall not have any jurisdiction to make an 
order under section 45 on any of these grounds. 
(16) The Registrar shall rectify the Register and the 
deposited roles in such manner as may be requisite for 
giving effect to an order made under subsection (15). 
(I7) Notwithstanding anything in subsection (2) of section 
63 the Registrar shall not have any jurisdiction to award 
costs to or against any party' on an appeal to him against 
a refusal of the registered proprietor of certification trade 
mark to certify goods or to authorise the use of 'the trade 
mark. 
(18) Exce as expressly provided in this section, sections 
25, 26, 27, ,38, 39, 40 (except paragraphs (a), (b) and (c) 
of subsection (1) thereof), 46, 48, 49, 50, subsections (3), (4) 
and (5) of section 55, section 80, Part IX, Part xn and any 
other provisions of this Act, the operation. of which is 
limited by the terms thereof to registration in Part B of the 
Register, shall not apply in relation to a certification trade 
mark. 
(19) The provisions of this Part shall be construed subject 
76166. to section 19 of the Standards Act, 1966. 
PART XII 
DEFENSIVE TRADE MARKS 
Defensive 57 .. (1) Where a trade mark consisting of an invented word 
registration or words has become so wen known as regards ~ny goods of 'Gt'e11 ......,.. 
irnown trade in respect of which it is registered and, in relation to which 
marb. .it has been used, that the use thereof in relation to other 
goods would likely to be taken as indicating a connection 
in the course of trade between the other goods and a person 
entitled to use the trade mark in relation to the first­
mentioned goods, then, notwithstanding that the proprietor 
registered in respect of the first .. mentioned ods does not 
use or propose to use the trade mark in rela to the other 
goods and notwithstanding anything in section 46 the trade 
mark may, on the application in a prescribed manner of 
the proprietor registered in respect of the firstcmentioned 
goods, be registered in his name in t of the other 
goo<is as a defensive trade mark and e so registered, 
shall not be liable to be taken off the Register in reS~t of 
other goods under section 46. ' IPINIlIMYS/TI1 
Page 47 
. (2) The registered proprietor of a trade mark may apply 
for the registration' thereof in respect ot any goods IS a 
defensive trade mark notwithstanding that it is already 
registered. in his name in respect of the goods otherwise than 
as a defensive trade mark, or may apply for the registration 
thereof in respect of any goods otherwise than as a defensive 
trade mark notwithstanding that it is already registered in 
his name in respect of the goods as a defens~ve trade mark, 
in lieu in each case of the existing registration. 
58. A trade mark registered as a defensive trade mark and Deiemive 
that trade mark as otherwise registered in the name of the =~~\e 
same proprietor shall notwit ding that the respective usociated 
registrations are in respect of different goods be deemed to ttade mtUk. 
be" and shall be registered as, associated trade marks. 
59. The Registrar may at any time cancel the registration of Rectifi~tion. 
a defensive trade mark of which there is no longer any of RegISter. 
registration in the name of the same proprietor otherwise 
than as a defensive trade mark. 
60. Subject to this Part, this Act applies in relation to the Application 
registration of a trade mark as a defensive trade mark and of Act. 
a trade mark registered as a defensive trade mark but it is 
not necessary for .. the registered proprietor of a defensive 
trade mark to prove use of the trade mark for the purpose 
of obtaining renewal of the registration. 
PART xm 
LEGAL PROCEEDINGS. COST AND EVIDENCE 
61. In any legal proceedings in which the validity of a Certi~~te 
registered trade mark comes into question and is decided of vahdity. 
in favour of the registered proprietor of the trade mark, the 
Court may certify to that effect, and if it so certifies then in 
any subsequent legal proceedings in which the validity of 
the registration comes into question the registered proprietor 
of the trade mark on obtaming a final order or judgment 
in his favour shall have his full costs, charges and expenses 
as between solicitor and client, unless in the subsequent 
prooeedings the Court certifies that he ought not to have 
them. 
6:.t (1) In any legal proceedings in which the relief sought 
includes alteration or rectification of the " the 
Registrar shall have the' to ear and be card, and 
shall appear if so directed y the urt. . IPlNlI/MYS/T/l 
Page 48 
(2) Unless otherwise diIected by the Court, the Registrar, 
in lieu of appearing and being heard, may submit to the 
Court a statement in writing s· ed by ~ giving parti­
culars of the proceedings be~ e him in relation of the 
matter in issue or of the grounds of any decision given by 
him affecting the same or of the practice of the office in like 
cases, or of such other matters relevant to the issues, and 
within his knowledge as Registrar, as he thinks fit, and such 
statement shall be deemed to form part of the evidence in 
the proceedings. 
~. 63" (1) In all proceedings before the Court under this Act, 
the Court may award to any party such costs as it may 
consider reasonable and the costs as it may consider reason .. 
able and the costs of the Registrar shall be in the discretion 
of the Court, but the Registrar shall not be ordered to pay 
the costs of any of the other parties. 
Mode of 
giving 
evidence. (2) In all proceedings before the Registrar under this Act, 
the Registrar shall have power to award to any party such 
costs as he may consider reasonable and to direct how and 
by what parties they are to be paid, and any such order may, 
by leave of the Court, be enforced in the same manner as a 
judgment or order of the Court to the same effect 
64. (1) In all proceedings before the Registrar under this 
Act, the evidence shall be given by sta~tory declaration in 
the absence of directions to the contrary, but, in any case 
in which he thinks fit, the Registrar may take evidence viva 
voce in lieu of or in addition to evidence by declaration. 
(2) Any such statutory declaration may, in the case of 
a al, be used before the Court in lieu of evidence by 
.1, but if so used, shall have all the incidents and 
consequences of evidence by affidavit. 
(3) In any action or proceedings relating to a trade mark 
or trade name the Registrar or the Court, a$ the case may be, 
shall admit evidence of the usages of the trade concerned and 
of any relevant trade marks or trade name or get .. up 
legitimately used by other persons. 
65.. (1) Printed or written copies or extracts of or from the Sealed 
. trar purporting to be certified by the Registrar and ~:= be 
se with his seal shall be admissible as evidence in, any . 
proceedings before any court of law without further 'proof 
or production of the originals. IPINII IMYS/TIl 
Page 49 
(2) A certificate purporting to be under the hand of the 
Registrar as to any act which he is authorised under this 
Act to perform and which he has or has n9t performed, 
as the case may be, shall be prima facie evidence in any 
proceedings before any court of law of his having or not 
having performed the act. 
66. (1) The Yang di-Pertuan Agong may by order published XlUlg 
in the Gazette declare any documents or class of documents ~;~r:y 
of a foreign state to be admissible. as evidence in any declare 
d' bee . if documents of procee mgs eLore a ourt - foreign state 
(a) the document is sealed with the seal of the ro~~X'!g 
authorised officer or the governmeat of the foreign ~~ !g~ 
state and the seal pertains to the trade marks a mlSSt • 
registered in or otherwise recognised by the foreign 
country or if there is no such seal there is enclosed 
a certificate signed by the authorised officer to the 
effect that the document is evidence of the matter 
contained therein; and 
(b) the foreign state or part thereof has entered into 
reciprocal arrangements with the Government of 
Malaysia in respect of· the admissibility of the 
documents, 
(2) For the purpose of this section-
Hauthorised officer" means a person or authority autho~ 
rised by the government of the foreign state to· keep and 
maintain a register or other record of trade marks under 
any written law in force in the foreign state relating to trade 
marks; 
"document" means-
(a) a printed or written copy of extract or other record 
of trade marks kept and maintained in the foreign 
state under any written law in force in the foreign 
state relating to trade marks; or 
(b) any other document pertaining to any matter or act 
in relation to trade marks registered in or otherwise 
recognised by the foreign state as trade marks; IPINIl/MYS/TI1 
Page 50 
"'trade mark" means any device, brand, heading, label, 
ticket, name, signature, word, letter, numeral or any 
combination thereof which is used or proposed to be used 
in relation to goods for the purpose of indicating or so as 
to indicate a connection in the course of trade between the 
goods and a person having the right either as prol'rietor or 
as . stered user to use the trade mark (in the foreign state) 
whe with or without any indication of the identity of 
that person and which is registered or otherwise recognised 
by the foreign state as a trade mark (under any written 
law in force in the foreign state relating to trade marks) 
but does not include the trade marks of another foreign 
state registered in or otherwise recognised by the foreign 
state by virtue of a reciprocal arrangement between the 
foreign state and that other foreign state. 
(3) For avoidance of doubt this section shall not be 
construed to conf~r recognition of the trade marks of any 
foreign state for the purpose of registration under this Act 
but shall· be construed only with references to the admissi­
bility of evidence in any proceedings before a Court of the 
documents of the foreign state. 
DiscretionM)' 67& In any appeal from the decision of the Registrar under 
power. this Act the Court shall have and exercise the same 
discretionary powers as are conferred upon the Registrar 
under this Act. 
Application 
for 
rectification 
maybe 
made to 
Registrar. 
Appeal from. 
Regima.r. 68. (1) Any application for the rectification of the Register, 
which under section 45 or paragraph (0) of subsection (2) 
of section 33 is to be made to the Court, may, at the option 
of the applicant, be made in the first instance to the 
Registrar except where an action concerning the trade mark 
in . question is pending. 
{2) The Registrar may at any stage of the' proceedings 
refer any such application to the Court or he may, after 
hearing the parties, determine the question between them, 
subject to appeal to the Court. 
69. Except where expressly given by the provisions of this 
Act or regulations made thereunder there shall be no appeal 
from a decision of the Registrar but the Court, in dealing 
with any question of the rectification of the Register 
(including all applications under section 45), shall have 
power to review any decision of the Registrar G relating to 
the entry in question or the correction sought to be made. PART XIV 
INTERNATIONAL ARRANGEMENT IPINIlIMYS/T 11 
Page 51 
70.. (1) Where any person has registered or applied for Reclpr~ 
protection of any trade mark in any foreign state with which ~t~~:!on 
the Y ang di~Pertuan Agong may, by order published in the marks. 
Gazette; declare to have made arrangement for reciprocal 
protection of trade marks, such person or his legal represen-
tative or assignee shall be entitled to registration of his trade 
mark in priority to other applicants and such registration . 
shall have the same date as the date of registration or 
application for protection in the foreign state concerned, 
as the case may be, except that-
(a) the application for registration is made within six 
months from the date of registration or application 
for protection of the trade mark in the foreign state 
concerned; and 
(b) nothing in this section shall entitle the proprietor of 
a trade mark to recover damages for infringements 
or any happening prior to the date on which the 
application for registration of the trade mark is 
made in Malaysia. 
(2) The registration of a trade m~k shall not be 
invalidated by reason only of the us~ of the trade mark 
by some other person in Malaysia during the period of six 
months. 
(3) Without prejudice to subsections (1) and (2) the 
application for the registration of a trade mark under this 
section shall be made and dealt with in the same manner 
as an ordinary application for registration under this Act. 
(4) The provisions of this section shall apply only in the 
case of those foreign states with respect to which the Yang 
di-Pertuan Agong may, by order published in the Gazette. 
declare them to be applicable and only for the duration of 
the period the order continues in force in. respect of each 
state. IP/N/IIMYS/T/l 
Page 52 
Use ofttade 
mark for 
export trade, PART XV 
MISCELLANEOUS 
71 .. (1) The application in Malaysia of a trade mark to 
goods to be exported from Malaysia and any other act done 
in Malaysia in relation to the goods ~hich if do~e !n 
relation to goods to be sold or othermse traded ID ID 
Malaysia would constitute use of a trade mark in Malaysia 
shall for the of this Act be deemed to constitute 
use of the' tr mark in relation to those goods. 
(2) Subsection (1) shall be deemed to have had elect 
in relation to an act done before the date of the commence-­
ment of this Act as it has effect in relation to an act done 
after that date, but does not affect a qetermination of a 
Court which has been made before that date or the deter .. 
mination of an appeal from a determination so made. 
Use of trade 72. The use of a registered trade mark in relation to goods 
~~ :fh~de where a form of connection in the course of trade subsists 
changes. between the goods and the person using the trade mark shall 
not be deemed to be lik to cause . on or confusion 
only ott the ground that trade mark been or is used 
in relation to goods where a different form of connection 
in the course of trade subsisted or subsists between the goods 
and that person or a predecessor in title of that person. 
Preliminuy 73. (1) The power to give to a person who ses to 
~~~. apply for the registration of a trade mark in A or 
Part B of the Re . advice as to whether the trade mark 
appears to the trar prima facie to be inherently 
adapted to distinguish, or le of distinguishing, as the 
case may be, shall be a function of the Registrar undet this 
Act. 
(2) Any person who is desirous of obtaining the advice 
shall make application to the Registrar in the prescribed 
manner. 
(3) Where an a . cation for the registration of a trade 
mark is made wi three months after the Registrar' has 
given advice in the affirmative and the Registrar, after 
further inves· ation 01" consideration, gives notice to the 
applicant of jection on the ground that the trade mark 
is not adapted to distinguish, 01" able of distinguishing, 
as the case may be, the applicant sh be entitled, on • . 
notice of withdrawal of the application within the pt'e5 
period, to have any fee paid on the filing of the application 
repaid to him. IPINIlIMYS/TIl 
Page 53 
74. (1) The Registrar may on such terms as to costs as he Pow:en of 
thinks just whether for the purpose of correcting a clerical ~e= 
error or an obvious mistake, permit the correction of an dOCl:n:Dalt. 
application for the registration of a trade mark or notice 
of opposition or other document submitted at any trade 
marks office. 
(2) An amendment of an application shall not be 
permitted under this section if the amendment would 
substantially affect the identity of the trade mark as specified 
in the application before amendment. 
(3) A decision of the Registrar under subsection (1) is 
subject to appeal to the Court. 
15. 0) The Registrar may, for the purpose of this Act­
(a) summon witnesses; 
(b) receive evidence on oath; 
(c) require the production of a document or article; and 
(d) amend costs as against a party to proceedings before 
him. 
(2) Any person who without any lawful excuse fails to 
comply with any summons, order· or direction made by the 
Registrar under paragraphs (a), (b) and (c) of subsection (1) 
is deemed to have committed an offence and is liable, on 
conviction, to a fine not exceeding one thousand ringgit or 
to a term of imprisonment not exceeding three months or to 
both. 
(3) Costs awarded by the Registrar may in default of 
payment be recovered in a court of competent jurisdiction 
as a debt due by the person against whom the costs were 
accorded to the person in whose favour they were accorded. 
16. Where any discretionary power is given to the Registrar Exercise of 
by this Act or by any regulations made thereunder, he shall ~:-:onary 
not exercise that power adversely to the applicant for regis- . 
tration or the registered proprietor in question without (if 
duly required to do so within the prescribed time) giving 
to the applicant an opportunity of being heard. 
11. W:ilere by this Act or any regulations made thereunder, Ext~nsion 
a time is specified within which an act or t' is to be done, of ume. 
the Registrar may, unless otherwise express provided or 
directed by the Court, extend the time either before or after 
its expiration. IPINI 1 IMYS/TI 1 
Page 54 
Extension 
of time by 
reason of 
error m 
trademarb 
office etc. 78. (1) Where by reason of--
(a) circumstances beyond the control of the person 
concerned; or 
(b) an error or action on the part of the Central Trade 
Marks Office or any regional trade marks office, 
an act in relation to an application for the registration of 
a trade mark or in proceedings under this Act (not being 
prcx:;eedings in a Court) required to be done within a certain 
time has not been so done the Registrar may extend the time 
for doing the act. 
(2) The time required for doing an act may be extended 
under this section although that time has expired. 
79. (1) When an applicant for the registration" of a trade 
mark or an agent does not reside or carry on business in 
Malaysia he shall give the Registrar an address for service 
In Malaysia and if he fails to do so the Registrar may refuse 
to proceed with the application until such address has been 
given. 
(2) An address for service stated in the application or a 
notice" of opposition shall, for the purposes of the applica .. 
tion or notice of opposition, be deemed to be the address 
of the applicant or opponent, as the case may be, and all 
documents in relation to the application or notice of 
opposition may be served by leaving them at, or sending 
them by post to, the address for service of the applicant or 
opponent, as the case may be. 
(3) An address for service may be changed by notice in 
writing to the Registrar. 
(4) Subject to subsection (l), the registered proprietor of 
a trade mark shall from time to time notify the Registrar in 
writing of any change in the Register and the Registrar shall 
alter the Register accordingly. 
(5) The address of the registered proprietor of a trade 
mark as appearing for the time being in the Register shall 
for all purposes under this Act be deemed to be the address 
of the registered proprietor. IPINIlIMYS/TIl 
Page 55 
80. Where by this Act any act has to be done by or to any Agent. 
person in connection with a trade mark or proposed trade 
mark or any procedure relating thereto, the act may, under 
and in accordance with this Act and any regulations made 
thereunder or in particular cases by special leave of the 
Registrar, be done by or to an agent of that person duly 
authorised in the prescribed manner. 
81. (1) A person who makes a represeritation- r=Otini 
(a) with respect to a mark, not being a registered trade ~::::s 
mark, to the effect that it is a registered trade mark; registered. 
(b) with respect to a part of a registered trade mark, 
not being a part separately registered on a trade 
mark, to the effect that it is so registered; 
(c) to the effect that a registered trade mark is registered 
in respect of goods in respect of which it is not 
registered; or 
(d) to the effect that the registration of a trade mark 
gives a right to the exclusive use of the trade mark 
in circumstances in which, having regard to condi­
tions or limitations entered on the Register, the 
registration does not give that right, 
hi' gUilty of an offence and is liable, on conviction, to a fine 
not exceeding five hundred ringgit or to a term of imprison­
ment not exceeding two months or to both. 
(2) For the purpose of this section, the use in Malaysia in 
relation to a trade mark of the word "registered" or of any 
other word referring whether expressly or impliedly to 
registration shall be deemed to import a reference to 
registration in the Register except-
(a) where the word is used in physical association with 
other words delineated in characters at least as large 
as those in which that word is delineated and 
indicating that the reference is to registration as a 
trade mark under the law of a country outside 
Malaysia being a country under the law of which the 
registration referred to is in fact in force; 
(b) where the word (being a word other than the word 
"registered") is of itself such as to indicate that the 
reference is to registration as mentioned in 
paragraph (a); or ... IPlNll/MYS/T/l 
Page 56 
'Unregistered 
trademarks. 
Regulatiolls. (c) where that word is used in relation to a mark 
registered as a trade mark under the law of a country 
outside Malaysia and in relation to goods to be 
exported to that country. 
82. (1) No person shaH be entitled to initiate any action to 
prevent or to recover damages for the infringement of an 
unregistered trade mark. 
(2) Notwithstanding subsection (1), nothing in this Act 
shall be deemed to affect the right of action against any 
person for passing off goods as those of another person or 
the remedies in respect thereof. 
833 (1) Subject to the provisions of this Act, the Minister 
may make regulations for the purpose of carrying into effect 
the provisions of this Act. 
(2) In particular and without prejudice to the generality 
of subsection (1), such regulations may provide for all or 
any of the following: 
(a) to regulate the practice (other than that relating to 
proceedings before the Court or connected there .. 
with) under this Act including service of documents; 
(b) to classify goods for the purpose of registration of 
trade marks; 
(c) to make or require duplication of trade marks or 
other documents; 
(d) to secure and regulate the publishing and selling or 
distributing in such manner as the Minister may 
think fit of copies of trade marks and other 
documents; 
(e) to prescribe the fees payable for the application on 
the registration of trade marks and other matters 
prescribed under this Act; 
(f) to regulate generally on matters pertaining to the 
business of trade marks carried on in any trade 
marks office whether or not specially prescribed 
under this Act but so as not to be inconsistent with 
any of the provisions of this Act. 
(3) Regulations made under this section shall be published 
in the Gazette and laid as soon as practicable before both 
Houses of Parliament. IPINIIIMYS/TI1 
Page 57 
(4) Subject to ;the provisions of this Act, the Rules 
Committee constituted under the Courts of Judicature Act, A.c:t91. 
1964, may make rules of court regulating the practice and 
procedure in relation to proceedings before the Court or 
connected therewith and the costs of the proceedings. 
84. (1) The Trade Marks Ordinance, 1950, the Trade Marks Re~ and 
Ordinance of Sabah and the Trade Marks Ordinance of ~7s"t 
Sarawak are hereby repealed. suW: 
Cap.U2. 
(2) N otwiilistanding the repeal of the Ordinances specified frk·62 in subsection (1): alP· • 
(a) any subsidiary legislation made under any of the 
ed laws shall insofar as such subsidiary 
I lation is not inconsistent with the provisions of 
this Act continue in torce and have effect as if it 
had been made under this Act and may be repealed, 
extended, varied or amended accordingly; . 
(b) an intment made under the repealed laws or 
sub ary legislation made thereunder shall ·con­
tinue in force and have effect as if it had been made 
under this Act unless the Minister otherwise directs; 
(c) any certificate issued under any of the repealed laws 
and is in force immediately prior to the coming into 
force of this Act shall, subject to the terms, condi­
tions and the period of validity specified in the 
certificate, continue in force and have the like effect 
as if it had been issued under this Act and the 
Registrar may amend, modify, renew, cancel or 
revoke such certificate in accordance with the 
powers conferred upon him by the relevant provi$ 
sions of this Act relating thereto. IP/NIlIMYS/T/l 
Page 58 
L WS OF MALAYSIA 
Act ASS1 
TRADE MARKS (AMENDMENT) ACT 1994 
Date of Royal Assent 
Date of Publication m 
Gazette 15th February 1994 
3rd March 1994 lPlNlIIMYS/TI1 
Page 59 
LAWS OF MALAYSIA 
Act A881 
TRADE MARKS (AMENDMENT) ACT 1994 
An Act to amend the Trade Marks Act 1976. 
[ ] 
BE IT ENACTED by the Duli Yang Maha Mulia Sed 
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: 
1. This Act may be cited as the Trade Marks Short 
(Amendment) Act 1994 and shall come into force on title and commence-such date as the Minister may, by notification in the ment. 
Gazette, appoint; and different dates may be appointed 
for the coming into force of different provisions of this 
Act.' 
2. Subsection 2(2) of the Trade Marks Act 1976, which Amendment 
in this Act is referred to as the "principal Act" is of section 2. 
d d b . f d ' .' Act 175. amen e y substItuting or the wor s' the registratIOns 
of trade marks made" the words "trade marks 
re gistered" . 
3. Section 3 of the principal Act is amended­
(a) in subsection (1 
(i) by inserting after the definition of 
"component regions of MalaysiaH the 
following: 
• "Convention country" means a 
country which is a party to any 
multilateral treaty relating to trade 
marks to which Malaysia is also a 
party; '; Amendment 
of section 3. 1 P/N/l IMYS/TIl 
Page 60 
(H) by inserting after .the definition of 
"Court" the following: 
'''in the course of trade", in 
relation to the provision of services, 
means in the course of business;'; 
(Hi) in the definition of "limitations" by 
inserting after the word "Malaysia" in 
paragraph (c) the words "or use in 
relation to services to be provided in a 
place outside Malaysia"; 
(iv) in the definition of "permitted use" by 
inserting after the word "goods" the 
words '~or services"; 
(v) by inserting after the definition of 
"prescribed" the following: 
'''prescribed foreign country" 
means a country declared by the 
Minister, by order published in the 
Gazette, as having made arrange­
ments with Malaysia for the 
reciprocal protection of trade 
marks; '; 
(vi) by inserting after the definition of 
"repealed Ordinance" the following: 
• "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;'; and 
(vii) by inserting after the word "goods" 
wherever it appears in the definition of 
"trade mark" the words "or services"; 
and 
(b) m subsection (2)-
(i) by deleting the word "and" at the end of 
paragraph (a); IPlNllIMYS/TIl 
Page 61 
(H) by substituting for the full stop at the 
end of paragraph (b) the word ".; and"; 
and 
(Hi) by inserting after paragraph (b) the 
following: 
"( 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." . 
4. Section 4 of the principal Act is amended-
( a) in subsection (1) by substituting for the words 
"There shall be a Registrar of Trade Marks" the 
words "The Minister may appoint a person to 
be the Registrar of Trade Marks"; and 
(b) in subsection (3) by deleting the words 
"prescribed by the .Minister or". 
5. Section 5 of the principal Act is amended-
(a) by inserting after subsection (2) the following: 
"(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."; and 
(b) by deleting the word "regional" wherever it 
appears in subsection (3). Amendment 
of section 4. 
Amendment 
of section 5. 
6. Subsection 8(3) of the principal Act is amended by Amen~ment 
deleting the word "regional". of section 8. 
7. Paragraph 9(b) of the principal Act is amended by Amen~ment 
deleting the word "regional". of sectlon 9. IPINI1 IMYS/TI1 
Page 62 
Amendment 8. Section 10 of the principal Act is amended­
of section 10. 
(a) in subsection (1)-
(i) by inserting after the word "goods" in 
paragraph (d) the words "or services"; and 
(ii) by inserting after the word "any" In 
paragraph (e) the word "other"; 
(b) by inserting after subsection (2) the following: 
"(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 it is 
adapted to distinguish 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. 
(2B) In determining whether a trade mark 
is adapted to distinguish as aforesaid regard 
maybe had to the extent to which-
(a) the trade mark is inherently adapted to 
distinguish as aforesaid; and 
(b) by reason of the use of the trade mark 
or of any other circumstances, the 
trade mark is in fact adapted to 
distinguish as aforesaid."; and 
(e) m subsection (3)-
(i) by inserting after the words "any goods" 
the words "or services"; and IPINI1 IMYS/TI1 
Page 63 
(ii) by substituting for the words Hor different 
goods" the words "goods or servIces or 
other goods or services". 
9. Section 11 of the principal Act is amended-
(a) by substituting for subsection (1) the following: 
"( 1) In order for a trade mark to be 
registrable in Part B of the Register, it must 
be capable, in relation to goods or services in 
respect of which it is registered or proposed 
to be registered, 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."; 
(b) by inserting after subsection (1) the following: 
"(lA) In 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."; and 
(c) m subsection (2)-
0) by inserting after the words "any goods" 
the words "or services"; and 
(H) by substituting for the words "or different 
goods" the words "goods or services or 
other goods or services". Amendment 
of section J 1. IP/N/l IMYS/TI I 
Page 64 
S ubsti tu ti on 
of section 12. 10. The principal Act is amended by substituting for 
section 12 the following: 
"Use by 12. (1) Where an application for registration 
proposedd of a trade mark has been made by a person, 
reglstere d b f h d f h 1" d user to be an e ore t e ate 0 t e app lcatlOn the tra e 
considered mark had been used by a person other than the for the • 
purpose applIcant under the control of and with the 
of deter-consent and authority of the applicant, and mining 
distinc-where an application is made by the applicant 
tiveness, and that other person for the registration of etc. 
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. H, 
Amendment 11. Section 14 of the principal Act is amended­
of section 14. 
(a) by deleting the word "and" at the end of 
paragraph (a); 
(b) by substituting for the full stop at the end of 
paragraph (b) the word "; or"; and (e) by inserting after paragraph (b) the following: 
H( e) 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.". IPINIlIMYSIT 11 
Page 65 
12. Section 16 of the principal Act is amended by Amendment 
substituting for the words "dead or alive" the words of section 16. 
"living or dead". 
13. Section 17 of the principal Act is amended-
(a) by inserting after the word "goods" in the 
marginal note the words "or services"; 
(b) in subsection (1)-
(i) by substituting for the word "shall" the 
word "may"; and 
(ii) by inserting after the words "prescribed 
class of goods" the words "or in respect 
of any or all of the services comprised in 
a prescribed class of services"; and 
(e) by inserting after the word "goods" In 
subsection (2) the words "or services". Amendment 
of section 17. 
14. The principal Act is amended by substituting for Substit.ution 
section 19 the following: of sectlon 19. 
"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. lPlNll/MYS/TI1 
Page 66 
(2) No trade mark shall be registered in 
respect of any services or description of 
servlces-
(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 (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.~'. 
15. Section 20 of the principal Act is amended-
(a) by substituting for subsection (1) the following: 
"(1) Notwithstanding subsection (1) of 
section 19, in the case of honest concurrent 
use or of the circumstances described in 
.paragraph ( c) of subsection (4) of section 6 
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."; and IPINIlIMYS/TI1 
Page 67 
Amendment 
of section 20. IP/NIlIMYS/T/l 
Page 68 
(b) by inserting after subsection (l) the following: 
"(lA) Notwithstanding subsection (2) of 
section 19, 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.". 
Amendment 16. Section 21 of the principal Act is amended by 
of section 21. inserting after the word "goods" paragraph (1 )( b) the 
words "or services". 
Amendment 17. Section 22 of the principal Act is amended­
of section 22. 
(a) by substituting for subsection (1) the following: 
"( 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 IPlNllIMYS/T/l 
Page 69 
(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."; 
(b) by inserting after subsection (1) the following: 
"(lA) 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."; and 
(e) by inserting after the word "goods" m 
subsection (2) the words "or services". 
18. Subsection 24( 1) of the principal Act is amended- Amendment 
of section 24. 
(a) by inserting after the words "description of 
goods" the words "in a single class or in respect 
of the same services or description of services 
a single class"; and 
(b) by inserting after the word "goods" in paragraph 
(a) the words "or services". fPlNllIMYS/T/l 
Page 70 
Amendment 19. Section 25 of the principal Act is amended­
of section 25. 
(a) by inserting after the word "goods" in 
subsection (2) the words "or services"; and 
( b) by inserting after the words "had not been 
accepted" in subsection (12) the words "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", 
Amendment 20. Section 26 of the principal Act is amended­
of section 26. 
Amendment 
of section 27, 
Amendment 
of section 28. (a) by inserting after the word "goods" wherever it 
appears in subsections (1) and (3) the words "or 
services"; and 
(b) by substituting for the words "if the application 
is accompanied by an application" in subsection 
(1) the words "if an application has been made", 
21. Section 27 of the principal Act is amended by 
substituting for the words "it is made under paragraph 
( e) of subsection (1) of section 10" in subsection (2) 
the words "the considerations in subsection (2E) of 
section 10 or subsection (lA) of section 11 apply". 
22. Section 28 of the principal Act is amended-
(a) by inserting after the word "Registrar" 1fi 
subsection Cl) the words "and applicant"; 
(b) by substituting for subsection (3) the following: 
"(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."; (c) by inserting after subsection (3) the following: 
"(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 in 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."; 
(d) by substituting for subsection (4) the following: 
"( 4) 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."; and 
(e) in subsection (10)-
(i) by substituting for the word "counter­
claim" the word "counter-statement"; 
(H) by deleting the words "a copy of'; 
(Hi) by inserting after the words "business in 
Malaysia, the" the words "Registrar or 
the"; and 
(iv) by deleting the words "before it", IPINIIIMYS/TIl 
Page 71 IPINI1IMYS/T/! 
Page 72 
Amendment 23. Section 29 of the principal Act is amended­
of section 29. 
(a) by substituting for the word "accepted" In 
subsection (1) the word "completed"; and 
(b) by substituting for the word "non-acceptance" 
in subsection (2) the word "non-completion". 
Amendment 24. Subsection 31 (2) of the principal Act is amended­
of section 31. 
(a) by deleting the word "or~' at the end of 
paragraph (a); 
(b) by substituting for the word "Court," In 
paragraph (b) the words "Court; or"; and 
(c) by inserting after paragraph (b) the following: 
"(c) an action on the part of the Central 
Trade Marks office or any trade marks 
office,". 
Amendment 25. Subsection 32( 1) of the principal Act is amended 
of section 32. by substituting for the word "seven" the word "ten". 
Amendment 26. Section 33 of the principal Act is amended­
of section 33. 
(a) by substituting for the words "an article or 
substance" in the marginal note the words 
"article, substance or service"; 
(b) by substituting for the words "article or 
substance" in subsection (l) the words "article, 
a substance or a service"; 
( c) in subsection (2)-
(i) by deleting the word "or" at the end of 
paragraph (a); 
(H) by substituting for the comma at the end 
of paragraph ( b) the word "; or"; and 
(Hi) by inserting after paragraph (b) the 
following: 
"(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 heing 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,"; and IPINI1/MYS/Tfl 
Page 73 
( d) m subsection (3 )-. 
(i) by substituting for the words "paragraph 
(a) or (b)" the words "paragraph (a), (b) 
or (e)"; 
CH) by substituting for the words "article or 
substance in question or of any goods of 
the same description" in paragraph (a) 
the words "article, substance or service 
in question or of any goods or service of 
the same description"; 
(Hi) by substituting for the words "article or 
substance in question or of any goods of 
the same description" in paragraph (b) 
the words "article, substance or service 
in question or of any goods or service of 
the same description"; 
(iv) by substituting for the words "article or 
substance or any goods of the same 
description" in paragraph (b) the words 
"article, substance or service in question 
or any goods or service of the same 
description"; 
(v) by substituting for the words "article or 
substance in question or to any goods of 
the same description" in paragraph (c) 
the words "article, substance or service 
in question or to any goods or service of 
the same description"; and 
C vi) by inserting after the words "paragraph 
(a)" in paragraph (c) the words "or (c)". 
27. Section 35 of the principal Act is amended- Amendment 
of section 35. 
(a) by inserting after the word "goods" wherever it 
appears in subsection (1) the words "or 
services"; and 
(b) by deleting the words "whether for the same 
goods or different goods" in subsection (2). 
Amendment 28. Paragraph 37(e) of the principal Act is amended by 
of section 37. inserting after the word "goods" the words "or services". 
Amendment 29. Section 38 of the principal Act is amended­
of section 38. 
(a) in subsection (1)-IPINII/MYS/TIl 
Page 74 
(i) by inserting after the words "in the 
course of trade in relation to goods" the 
words "or services"; 
(H) by deleting the word "or" appearing at 
the end of paragraph (a); 
(iii) by substituting for the full stop at the 
end of paragraph (b) the word "; or"; and 
(iv) by inserting after paragraph (b) the 
following: 
"( c) in a case in which the use is use 
at or near the place where the 
services are available or 
performed or in an advertising 
circular or other advertisement 
issued to the public, as importing 
a reference to a person having a 
right either as registered 
proprietor or as registered user to 
use the trade mark or to services 
with the provision of which the 
person is connected in the course 
of trade."; and 
(b) by inserting after the word "goods" In 
subsection (2) the words "or services". 
Amendment 30. Section 40 of the principal Act is amended­
of section 40. 
(a) in subsection (1)-
(i) by inserting after the word "goods" in 
paragraph (b) the words "or services, and 
in the case of goods"; 
(ii) by inserting after the word "goods" 
wherever it appears in paragraphs ( c) and 
(e) the words "or services"; 
(Hi) by inserting after the words "obliterated 
it" in paragraph (d) a semicolon and 
deleting the words "or has at any time 
expressly or impliedly consented to the 
use of the trade mark; and"; and 
(iv) by inserting after paragraph (d) the 
following: IPINIlIMYS/T/I 
Page 75 
"( dd) the use by a person of a trade 
mark in relation to goods or 
services to which the registered 
proprietor or registered user has 
at any time expressly or 
impliedly consented to.;"; and 
(b) by inserting after the word "market" In 
subsection (2) the words "or in relation to 
services to be provided in a place". 
31. Section 41 of the principal Act is amended-
(a) in subsection (1) by substituting for the word 
"'fourteen" the word "ten'); 
(b) in subsection (2) by inserting after the words 
"as may be prescribed" the words ", upon 
payment of fees for restoration"; and 
(c) by inserting after subsection (2) the following: 
"(3) Notwithstanding subsection (2), the 
registration of a trade mark shall not be 
renewed where the application for renewal is 
made after one year has lapsed from the date 
of expiration of the last registration.". Amendment 
of section 41. 
32. Section 42 of the principal Act is amended by Amendment 
substituting for the words "the removal" the words of section 42. 
"expiration of the last registration". 
33. Section 43 of the principal Act is amended-
(a) by inserting after the word "goods" in 
subsection (1) the words "or services"; and 
(b) by substituting for the words "of the" in 
subsection (2) the words "of that", 
Amendment 34. Section 46 of the principal Act is amended­
of section 46. 
(a) in subsection (1)-
(i) by deleting the words "or the Registrar"; 
and 
(H) by inserting after the word "goods" 
wherever it appears the words "or 
services"; 
(b) by substituting for subsection (2) the following: Amendment 
of section 43. IP/N/l/MYS/T/l 
Page 76 
"(2) Except where an applicant has been 
permitted under section 20 to register an 
identical or a nearly resembling trade" mark in 
respect of the goods or services to which ~he 
application relates or the Court is of the 
opinion that the applicant can properly be 
permitted to register the trade mark, the Court 
may refuse an application made under 
subsection (1)-
(a) in relation to any goods, if there has 
been, before the relevant date or during 
the relevant period, as the case may be, 
use in good faith of the trade mark by 
the registered proprietor of the trade 
mark for the time being in relation to 
goods of the same description, being 
goods in respect of which the trade 
mark is registered; and 
(b) in relation to any services, if there has 
been, before the relevant date or during 
the relevant period, as the case may be, 
use in good faith of the trade mark by 
the registered proprietor of the trade 
mark for the time being in relation to 
services of the same description, being 
services in respect of which the trade 
mark is registered."; 
(c) by deleting the words "or the Registrar" 
wherever they appear in subsection (3); 
(d) by inserting after subsection (3) the following: 
"(3A) Where in relation to services in 
respect of which a trade mark is registered-
( a) the matters referred to in paragraph (b) 
of subsection (1) are shown as far as 
regards failure to use the -trade mark in 
relation to services provided 0 in a 
particular place in Malaysia; and 
(b) a person has been permitted under 
section 20 to register an identical or a 
nearly resembling trade mark in respect 
of those services under a registration 
extending to the use in relation to 
services provided in that place, or the 
Court is of the opinion that th~t person 
might properly be permitted to register 
the trade mark, IPINll/MYS/T/l 
Page 77 
the Court may, on application by that person, 
direct that the registration of the first-mentioned 
trade mark shall be subject to such conditions, 
amendments, modifications or limitations as the 
Court thinks proper for securing that that 
registration shall cease to extend to use of the 
trade mark in relation to services provided in 
that place."; 
(e) by inserting after the words "subsection (3)" in 
subsection (4) the words "or (3A)"; and 
(f) by deleting subsection (5). 
35. Subsection 47(1) of the principal Act is amended Amendment 
. d" h d" of section 47. by Inserting after the word "goo s t e wor s or 
services" . 
36. The principal Act is amended by substituting for Substitution . 8 f 1 . of section 48. sectlOn 4 the 0 lowmg: 
"Registered 48. (1) Subject to the provISIons of this 
users. section, where the registered proprietor of a 
trade mark grants, by lawful contract, a right 
to any person to use the trade mark for all or 
any of the goods or services in respect of 
which the trade mark is registered, that person 
may be entered on the Register as a registered 
user of the said trade mark whether with or 
without any conditions or restrictions, 
provided that it shall be a condition of any 
such registration that the registered proprietor 
shall retain and exercise control over the use 
of the trade mark and over the quality of the 
goods or services provided by the registered 
user in connection with that trade mark. 
(2) Where is proposed that a person shall 
be registered as a registered user of a trade 
mark, the registered proprietor shall submit an 
application to the Registrar for the registration 
of that person as a registered user of the trade 
mark and such application shall be 
accompanied by the prescribed fee and the 
following information: 
(a) the representation of the registered trade 
mark; 
(b) the names, addresses, and addresses for 
service of the parties; IPINI1IMYSITIl 
Page 78 
(c) the goods or services in respect of which 
the registration is proposed; 
(d) any conditions or restrictions proposed 
with respect to the characteristics of the 
goods or services, to the mode or place 
of permitted use or to any other matter~ 
and 
(e) whether the permitted use is to be for a 
period or without limit of period, and if 
for a period, the duration of that period. 
(3) The registered proprietor shall furnish 
the Registrar with such further documents, 
information or evidence as may be required by 
the Registrar or any regulations made under 
this Act. 
(4) On receipt of an application for 
registration of a person as a registered user of 
a trade mark under subsection (2)" the 
Registrar shall enter on the Register all the 
particulars required to be provided thereunder. 
(5) Where a person has been registered as 
a registered user of a trade mark, the use of 
that trade mark by the registered user within 
the limits of his registration shall be deemed 
to be use by the registered proprietor of the 
trade mark to the same extent as the use of the 
trade mark by the registered user and shall be 
deemed not to be use by any other person. 
(6) The provisions of subsection (5) shall 
cease to have effect with regard to any 
registered user of a trade mark-
(a) if the trade mark ceases to be a registered 
trade mark for any reason; 
(b) if the goods or services for which the 
trade mark is registered are subsequently 
limited so as to exclude any or all of the 
goods or services in respect of which the 
registration of the registered user has 
been made; (c) if the registered proprietor ceases to 
exercise control over the use of the trade 
mark and over the quality of the goods 
or services provided by the registered 
user concerned in relation to that trade 
mark; 
(d) at the date of expiration of the last 
registration of the trade mark unless a 
fresh application under subsection (2) 
accompanies any application for renewal 
of the registration of that trade mark; 
(e) at the date of any assignment or 
transmission of the registered trade 
mark, unless and until the devolution of 
title is recorded on the Register in 
accordance with the provisions of this 
Act and the subsequent proprietor of the 
registered trade mark makes a fresh 
application under subsection (2). 
(7) If the registered proprietor of a trade 
mark fails to exercise any of the rights 
conferred on him by his registration to the 
prejudice of any registered user of that trade 
mark, the registered user may apply to the 
Court for such relief as the Court may consider 
just, including rectification of the Register by 
ordering that the registered user be recorded as 
the registered proprietor of the trade mark, and 
in any case where use of the trade mark by any 
person entitled to use it would be likely to 
deceive or cause confusion, the Court m'ay 
order that the trade mark shall be removed 
from the Register •. notwithstanding the 
provisions of section 37. 
(8) The provisions of section 62 shall apply 
to any proceedings under subsection (7) that 
might lead to any alteration or rectification of 
the Register.". 
Amendment 37. Section 49 of the principal Act is amended­
of section 49, 
(a) in subsection (1)-
(i) by inserting after the word "goods" in 
paragraph (a) the words "or services"; IPINIlIMYS/TIl 
Page 79 IPINII/MYS/T/l 
Page 80 
(ii) by substituting for paragraph (e) the 
following: 
«(e) may be cancelled by the Registrar 
on the application of the 
registered proprietor. "; and 
(iii) by deleting paragraph (d); 
(b) by inserting after the word "goods" in 
subsection (2) the words "or services"~ and 
(e) by inserting after subsection (2) the following: 
"(3) Any decision of the Registrar under 
subsection (1) or (2) is subject to appeal .to 
the Court.". 
38. Section 50 of the principal Act is deleted. 
39. Section 53 of the principal Act is deleted. 
40. Section 54 of the principal Act is deleted. 
41. Section 55 of the principal Act is amended-
(a) by inserting after the word "goods" wherever it 
appears in subsection (1) the words "or 
services"; 
(b) by inserting after subsection (1) the following: 
"(lA) Subsection (l) shall have effect in 
the case of an unregistered trade mark used 
in relation to any goods or services as it has 
effect in the case of a registered trade mark 
registered in respect of any goods or 
services, if at the time of the assignment or 
transmission of the unregistered trade mark 
it is or was used in the same business as a 
registered trade mark, and if it is or was 
assigned or transmitted at the same time and 
to the same person as that registered trade 
mark and in respect of goods or services all 
of which are goods or services in relation to 
which the unregistered trade mark is or was 
used in that business and in respect of which 
that registered trade mark is or was assigned 
or transmitted."; 
(e) by suhstituting for subsection (3) the 
following: Deletion of 
section 50. 
Deletion of 
section 53. 
Deletion of 
section 54. 
Amendment 
of section 55 IPINI 1 IMYS/TI 1 
Page 81 
"(3) Notwithstanding subsections (l) and 
(lA), a trade mark shall be deemed not to be 
assignable or transmissible if, as a result of 
the assignment or transmission, whether 
under common law or by registration, more 
than one of the persons concerned would 
have exclusive rights to the use of an 
identical trade mark or to the use of trade 
marks so nearly resembling each other as are 
likely to deceive or cause confusion."; 
(d) by substituting for subsection (5) the following: 
"(5) Where an assignment in respect of 
any goods or services of a trade mark which 
is at the time of the assignment used in a 
business in those goods or services is made 
otherwise than in connection with the 
goodwill of that business, the assignment 
shall not be deemed to have taken effe~t 
unless the assignment has been advertised in 
the p(escribed manner and the application 
for: the assignment without goodwill, 
accompanied by the advertisement, has been 
sent to the Registrar."; and 
(c) by deleting subsection (6). 
Amendment 42. Section 56 of the principal Act is amended­
of section 56. 
(a) by inserting after the word "goods" wherever it 
appears in subsections (1) and (2) the words "or 
services"; 
(b) in subsection (3)-
(i) by inserting after the word "goods" 
wherever it appears, except in paragraph 
(b), the words "or services"; 
(ii) by deleting the word "or" appearing at 
the end of paragraph (a); 
(iii) by substituting for the full stop at the 
end of paragraph (b) the word H; or"; and IPINIlIMYS/TI 1 
Page 82 
(iv) by inserting after paragraph (b) the 
following: 
H(e) in a case in which the use is use 
at or near the place where the 
serVIces are available or 
performed or in an advertising 
circular or other advertisement 
issued to the public, as importing 
a reference to a person having a 
right either as proprietor or as a 
registered user to use the trade 
mark" or to services with the 
provision of which such person is 
connected in the course of trade."; 
(c) in subsection (4) by inserting after the word 
"market/' the words "in relation to services to 
be provided in a place"; 
(d) in subsection (5)-
(i) by inserting after the words "obliterated 
if' a semicolon and deleting the words 
"or the registered proprietor has at any 
time expressly or impliedly consented to 
the use of the trade mark; or" in 
paragraph (a); 
(ii) by inserting after paragraph (a) the 
following: 
"( aa) where the registered proprietor 
has at any time expressly or 
impliedly consented to the use of 
the trade mark; or;" and 
(iii) by inserting after the word "goods" 
wherever it appears in paragraph (b) the 
words "or services"; 
(e) by substituting for the number "(3)" In 
subsection (8) the number "(2)"; IPlNlllMYS/T/l 
Page 83 
(/) by inserting after the word "goods" wherever it 
appears in subsection (10) the words "or 
services'" , 
(g) by inserting after the word "goods" in paragraph 
(11)( a) the words "or services"; 
(h) by inserting after the word "goods" wherever it 
appears in paragraph (15)( a) the words "or 
services"; and 
(i) by inserting after the word "goods" In 
subsection (17) the words "or services", 
Amendment 43. Section 57 of the principal Act is amended by 
of section 57. inserting after the word "goods" wherever it appears the 
words "or services", 
Amendment 44. Section 58 of the principal Act is amended by 
of section 58. inserting after the word "goods" the words "or services". 
Amendment 
of section 64. 
Amendment 
of section 65. 
Amendment 
of section 66. 45. Section 64 of the principal Act is amended by 
substituting for subsection (3) the following: 
"(3) In any action or proceedings relating to a 
trade mark or trade name, the Registrar or the 
Court, as the case may be, shall admit evidence of 
the usages of the trade concerned or evidence of 
business usages in the provision of the services in 
question, and evidence of any relevant trade marks 
or trade name or business name or get-up 
legitimately used by other persons.". 
46. Section 65 of the English text of the principal Act 
is amended by substituting for the words "from the 
Registrar" in subsection (1) the words "from the 
Register" . 
47. Section 66 of the principal Act is amended-
(a) by substituting for the words "Yang di-Pertuan 
Agong" in the marginal note and in subsection 
(1) the word "Minister"; and IPfNl I IMYS/T/l 
Page 84 
(b) by inserting after the word "goods" wherever it 
appears in the definition of "trade marks" m 
subsection (2) the words "or services", 
48. The principal Act is amended by deleting section Deletion of 
68. section 68. 
49. The principal Act is amended by substituting for Amendment 
the heading of Part XIV the following: of heading 
of Pan XIV. 
"CONVENTIONS AND INTERNATIONAL 
ARRANGEMENTS". 
50. The principal Act is amended by substituting for 
section 70 the following: 
"Right of 70. (1) Where any person has applied for 
pnonty protection of any trade mark in a Convention 
under . b d f' . h Convention country or prescn e orelgn country, suc 
etc. ' person or his legal representative or assignee, 
after furnishing a declaration within the 
prescribed time indicating the date of the 
application and the country which it was 
made, shall in respect of the application for 
registration of his trade mark, be entitled to a 
right of priority and such application in 
Malaysia shall have the same date as the date 
of the application for protection in the 
Convention country or prescribed foreign 
country concerned, as the case may be, subject 
to the following: 
(a) that the application for registration is 
made within six months from the date 
of application for protection in the 
Convention country or prescribed 
foreign country concerned, as the case 
may be; and where an application for 
protection is made in more than one 
Convention country or prescribed 
foreign country, the period of six 
months referred to herein shall be 
reckoned from the date on which the 
earlier or earliest of those applications 
is made; Substitution 
of section 70. (b) that the applicant shall be either a 
national or resident of, or a body 
corporate incorporated under the laws 
of, the Convention country or 
prescribed foreign country concerned, 
as the case may be; and 
(c) that nothing in this section shall entitle 
the proprietor of a trade mark to recover 
damages for infringements or any 
happening prior to the date on which 
the application for protection of the 
trade mark is made in Malaysia. 
(2) Notwithstanding any other provision of 
this Act, the registration of a trade mark in 
respect of which a right of priority exists shall 
not be refused or revoked by reason only of 
the use of the trade mark by some other pers9n 
in Malaysia during the said period of six 
months. 
(3) The application for the registration of a 
trade mark in respect of which a right of 
priority exists-
(a) shall be made and dealt with in the 
same manner as an ordinary application 
for registration under this Act; and 
(b) shall specify the Convention country or 
prescribed foreign country, as the cas~ 
may be, which the application for 
protection, or the first such application, 
was made and the date on which such 
application for protection was made. 
(4) As regards prescribed foreign countries, 
this section shall apply only for the duration 
of the period the order continues in force in 
respect of that country. 
(5) For the purposes of this Act, the 
Minister may, by order published in the 
Gazette, declare a country as having made 
arrangements with Malaysia for the reciprocal 
protection of trade marks.". IPINIlIMYS/TIl 
Page 85 IPIN/1IMYS/T/1 
Page 86 
51. The principal Act is amended by inserting after New section 
section 70 the following: 70A. 
"Tempo:ary 70A. (1) Notwithstanding anything in this 
protectIOn Act temporary protection shall be granted to of trade ' 
marks in a trade mark in respect of goods or services 
~~sg:~~~f which are the subject matters of an exhibition 
services at an official or officially recognised 
:~i~~e international exhibition held in Malaysia or in 
subject any Convention country or prescribed foreign 
matters 
of interna-country. 
tional 
exhibitions. (2) The temporary protection granted under 
subsection (l) shall not extend any period of 
priority claimed by an applicant and where a 
right of priority is claimed by an applicant 
subsequent to the temporary protection, the 
period of priority shall remain six months but 
the period shall commence from the date of 
the introduction of the goods or services into 
the exhibition. 
(3) An applicant for registration of a trade 
mark whose goods or services are the subject 
matters of an exhibition at an official or 
officially recognised international exhibition 
in Malaysia or in any Convention country or 
prescribed foreign country and who applies for 
registration of that mark in Malaysia within 
six months from the date on which the goods 
or services first became the subject matters of 
the exhibition shall, on his request, be deemed 
to have applied for registration on the date on 
which the goods or services first became the 
subject matters of the exhibition. 
(4) Evidence that the goods or services 
bearing the trade mark are the subject matters 
of an exhibition at an official or officially 
recognised international exhibition shall be by 
a certificate issued by the competent 
authorities of the exhibition.". Amendment 
of section 72. 
Amendment 
of section 75. 
Amendment 
of section 77. 
Amendment 
of section 78. 
Amendment 
of section 79. 
Substitution 
of section 80. JP /Nil /MYS/T 11 
Page 87 
52. Section 72 of the principal Act is amended by 
inserting after the word "goods" wherever it appears the 
words "or services". 
53. Paragraph 75(1)(d) of the principal Act is amended 
by substituting for the word "amend" the word "award". 
54. The principal Act is amended by substituting for 
section 77 the following: 
"Extension 
of time. 77. (1) Where by this Act or any regulations 
made thereunder, a time is specified within 
which an act or thing is to be done, the 
Registrar may, unless otherwise expressly 
provided. or directed by the Court, upon 
application in the prescribed manner, extend 
the tjme either before or after its expiration 
upon payment of the prescribed fee. 
(2) Subsection (1) shall not apply to section 
29, subsection (3) of section 31, section 70 and 
section 70A except where the circumstances 
mentioned in section 78 apply.". 
55. Section 78 of the principal Act is amended by 
deleting the word "regional". 
56. Section 79 of the principal Act is amended by 
substituting for subsection (1) the following: 
"(1) Where an applicant for the registration of a 
trade mark does not reside or carry on business in 
Malaysia, he shall give to the Registrar an address 
for service in Malaysia which shall be the address 
of his agent, and if he fails to do so, the Registrar 
may refuse to proceed with the application.". 
57. The principal Act is amended by substituting for 
section 80 the following: 
" Agent. 80. (1) Where an applicant for registration of 
a trade mark does not reside or carry on 
business in Malaysia, he shall appoint an agent 
to act for him. IPINIl/MYS/TIl 
Page 88 
(2) Where by this Act any act has to be 
done by or to any person in connection 'with 
a trade mark or proposed trade mark or any 
procedure relating thereto, the act may, under 
and in accordance with this Act and' any 
regulations made thereunder or in particular 
cases by special leave of the Registrar, be done 
by or to an agent of that person duly authorised 
in the prescribed manner. . 
(3) No person, firm or company shall be 
authorised to act as an agent for the purposes 
of this Act unless that person is domiciled or 
resident in Malaysia or the firm or company is 
constituted under the laws of Malaysia and 
such person, firm or company c~rries on 
business or practice principally in Malaysia.". 
58. Section 81 of the principal Act is amended by Amendment. 
inserting after the word "goods" in paragraph (l)(c) the of section 81. 
words "or servicesH
• 
59. Section 82 of the principal Act is amended by Amendment 
inserting after the word "goods" in subsection (2) the of section 82. 
words "or services". 
60. Section 83 of the principal Act is amended-
(a) by inserting after the word "goods" in paragraph 
(2)(b) the words "and services"; 
(b) by substituting for paragraph (2)( e) the 
following: 
H( e) to prescribe the fees to be paid in respect 
of any matter or thing required for the 
purposes of this Act;"; 
(c) by inserting after paragraph (2)( e) the 
following: 
H( ea) to provide for the registration and 
qualifications of agents;"; and 
(d) by deleting subsection (3), Amendment 
of section 83. IPINIIIMYS/TIl 
Page 89 
Saving 61. (1) The amendments to section 11, section 14, 
provisions. subsections 19(1) and 19(3), subsection 20(1). 
subsection 22(1), subsection 26(1), section 27, section 
28, section 42, subsections 46(1), 46(2), 46(3) and 
46(5), section 48, paragraphs 49(l)(c) and 49(l)(d), 
section 50, section 53, section 54, subsections 55(5) and 
55(6), section 68, section 70, slJbsection' 77(1) and 
subsection 79(1) of the. principal Act shall not affect 
any application for registration of a trade mark or for 
registration as a registered user or the registration of a 
trade mark or a registered user, as the case may be, 
made under the principal Act before the commencement 
of this Act and those provisions shall apply to that 
application or registration, as the case may be, as if they 
had not been so amended. 
(2) Paragraph 24( c), section 25, section 31, 
paragraph 37(c) and section 51 of this Act shall apply 
only to an application for registration of a trade mark 
or for renewal of a trade mark or for registration as a 
registered user or to any trade mark registered, as the 
case may be, on or after the commencement of this Act. 