Trademarks Act 2019
TRADEMARKS ACT 2019
AKTA CAP DAGANGAN 2019
Act 815 · consolidated to 18 Mar 2022 · 159 pp
Intellectual property rights
This copy of the Act is 4 years old. Any amendment made since 18 March 2022 is not in this text. Check the AGC record for later amendments.
What this does to artists
Brand names, logos, band names, label names, festival names, clothing labels. Registration gives a monopoly in the registered classes; without it you are left with passing off, which is slower and harder to prove. The 2019 Act also brought Malaysia into the Madrid Protocol, so a Malaysian mark can be extended abroad from one filing.
Watch this
Replaced the Trade Marks Act 1976 (Act 175) from 27 December 2019. Non-use for three years exposes a registration to revocation.
What to read first
Section numbers read out of the AGC text itself
s.54Acts amounting to infringement of registered trademark
s.23Absolute grounds for refusal of registration
s.24Relative grounds for refusal of registration
s.48Rights conferred by registered trademark
s.56Action for infringement
s.64Assignment, etc., of registered trademark
s.69Licensing of registered trademark
s.72Collective marks
s.73Certification marks
Where this one bites
Scenario
Release and distribute a track
Ownership, registration and the two separate rights in every recording.…
ScenarioLicence a song for an ad, film or game
Two permissions, usually from two different owners, and a blanket licence is neither of them.…
ScenarioSell merch, prints or downloads online
The moment you take money online you are a seller, and there is a disclosure rule almost no artist store compl…
ScenarioTake a brand deal as a creator
Advertising standards reach you personally, and the brand's terms usually take the copyright in what you made.…
ScenarioSomeone used your work without asking
Before anything else, check that you own it. Most of these come apart on ownership rather than on the copying,…
Full arrangement of sections 179 sections · show / hide
Extracted from the AGC PDF on this page.
s.1Short title and commencement
s.3Definition of “trademark”
s.4Definition of “well-known trademark”
s.5Definition of “earlier trademark”
s.6Definition of “infringing goods”, “infringing material”, “infringing articles”, “counterfeit goods” and “counterfeit trademarks”
s.7References to use of trademark
s.8Use of trademark for export trade or where form of trade changes
s.9Determination of likelihood of confusion
s.10Registrar, Deputy Registrars and Assistant Registrars
s.11Protection of Registrar, Deputy Registrars, Assistant Registrars and other officers
s.12Trademarks Office and other branch offices
s.13Preliminary advice and search by Registrar
s.14Register of Trademarks
s.15Inspection of Register
s.16Registered trademark Application for registration of trademark
s.17Application for registration of trademark
s.18Application in multiple classes
s.19Classification of goods or services
s.20Colour of trademark
s.21Series of trademarks
s.22Date of filing
s.23Absolute grounds for refusal of registration
s.24Relative grounds for refusal of registration
s.25Honest concurrent use, etc
s.26Claim to priority of Convention application
s.27Claim to priority from other relevant overseas application
s.28Claim to priority from temporary protection of trademark which is the subject matters of international exhibition given under Article 11 of Paris Convention
s.29Examination of application
s.30Voluntary disclaimer, condition or limitation
s.31Publication of acceptance
s.32Withdrawal or restriction of application for registration of trademark
s.33Amendment of application for registration of trademark
s.34Grounds of opposition
s.35Opposition proceedings
s.36Registration
s.37Application for division
s.38Application for merger
s.39Duration and renewal of registration
s.40Status of unrenewed trademark
s.41Cessation of registration
s.42Alteration of registered trademark
s.43Correction of Register
s.44Voluntary cancellation of registered trademark
s.45Revocation of registration by Registrar
s.46Revocation of registration by Court as to non-use of trademark
s.47Invalidation of registration by Court
s.48Rights conferred by registered trademark
s.49Limitation on rights if similar trademarks, etc., registered by different persons
s.50Trademark consisting of sign that becomes accepted as sign describing article, etc
s.51Trademark relating to article, etc., formerly manufactured under patent
s.52Registration prima facie evidence
s.53Registration conclusive Infringement of trademarks
s.54Acts amounting to infringement of registered trademark
s.55Acts not amounting to infringement
s.56Action for infringement
s.57Circumstances in which action may not be instituted
s.58Order for erasure, etc., of offending sign
s.59Order for delivery up of infringing goods, material or articles
s.60Order for disposal of infringing goods, material or articles
s.61Remedy for groundless threats of infringement proceedings
s.62Nature of registered trademark as property
s.63Co-proprietorship of registered trademark
s.64Assignment, etc., of registered trademark
s.65Registration of transaction affecting registered trademark
s.66Trust and equities
s.67Application for registration trademark as an object of property
s.68Interpretation
s.69Licensing of registered trademark
s.70Rights of licensees in case of infringement
s.71Exclusive licensee having rights and remedies of assignee
s.72Collective marks
s.73Certification marks
s.74Interpretation
s.75Regulations relating to Madrid Protocol Conventions and international arrangements
s.76Protection of well-known trademarks
s.77Permitted use of well-known trademarks
s.78National emblems, etc., of Convention countries under Article 6ter of Paris Convention
s.79Emblems, etc., of certain international intergovernmental organization under Article 6ter of Paris Convention
s.80Notification under Article 6ter of the Paris Convention
s.82Restriction on importation of infringing goods
s.83Security
s.84Secure storage of seized goods
s.85Notice
s.86Inspection, release, etc., of seized goods
s.87Forfeiture of seized goods by consent
s.88Compulsory release of seized goods to importer
s.89Compensation for failure to take action
s.90Actions for infringement of registered trademark
s.91Disposal of seized goods ordered to be forfeited
s.92Insufficient security
s.93Ex-officio action
s.94De Minimis Imports
s.95Recognition of registered trademark agents and circumstances in which a registered trademark agent shall be required
s.96Register of Trademark Agents
s.97Registration of trademark agent
s.98Privileged for communications with registered trademark agent
s.99Counterfeiting a trademark
s.100Falsely applying a registered trademark to goods or services
s.101Making or possessing of article for committing offence
s.102Importing or selling, etc., goods with falsely applied trademark
s.103False entries to Trademarks Office or in Register
s.104Falsely representing trademark as registered
s.105Offence relating to disobedience to summons or refusal to give evidence
s.106Falsely representing trademark as a protected international registration designating Malaysia
s.107Misuse of title “Trademarks Office”
s.108Unregistered persons practising, etc., as a registered trademark agent
s.110Power of Controller, Deputy Controllers or Assistant Controllers
s.111Power of investigation
s.112Complaints to the Assistant Controller Information gathering powers
s.113Power of the Assistant Controller to require provision of information
s.114Assistant Controller may retain documents
s.115Confidentiality
s.116Privileged communication
s.117Giving false or misleading information, evidence or document
s.118Destruction, concealment, mutilation and alteration of records
s.119Power of arrest
s.120Power to enter premises, inspect and seize goods, etc
s.121Magistrate may issue search warrant
s.122Search may be made without warrant
s.123Access to recorded information or computerized data, etc
s.124Tipping-off
s.125Warrant admissible notwithstanding defects
s.126List of seized goods, etc
s.127Forfeiture of seized goods, etc
s.128Release of seized goods, etc
s.129Seizure of perishable goods
s.130No cost or damages arising from seizure to be recoverable
s.131Obstruction
s.132Evidence of agent provocateur is admissible
s.133Taking of samples
s.134Jurisdiction to try offences
s.135Institution of prosecution
s.136Compounding of offences
s.137Principal liable for acts of servant or agent
s.138Offences committed by body corporate
s.139Protection of Controller, Deputy Controllers, Assistant Controllers or other persons
s.140Service of applications to Court on the Registrar
s.141Registrar’s appearance in proceedings involving the Register
s.142Costs of proceedings before Court
s.143Certificate of validity
s.144Evidentiary value of copies certified by the Registrar
s.145Sealed copies of document to be evidence
s.146Electronic information, etc., certified by the Registrar admissible in evidence
s.147Minister may declare documents of foreign state pertaining to trademarks to be admissible as evidence
s.148Intellectual Property Official Journal
s.149Electronic filing
s.150Issuing document electronically
s.151Address for service
s.152Power of Registrar to allow amendments of documents
s.153Power of Registrar to allow extension of time
s.154Mode of giving evidence
s.155Exercise of discretionary power
s.156Power of the Registrar to treat documents as confidential
s.157Adaptation of entries to new classification
s.158Costs awarded by Registrar
s.159Unregistered trademarks
s.160Guidelines or practice directions by Registrar
s.161Power to amend Schedules
s.162Power to make regulations
s.163Appeal from Registrar
s.164Repeal and savings Transitional provisions for trademarks
s.166Existing registered marks
s.167Effects of registration in relation to infringement
s.168Infringing goods, material or articles
s.169Rights and remedies of licensee or authorized user
s.170Co-proprietorship of registered mark
s.171Assignment, etc., of registered mark
s.172Licensing of registered mark
s.173Pending applications for registration
s.174Conversion of pending application
s.175Trademarks registered according to old classification
s.176Claim to priority of Convention application
s.177Duration and renewal of registration
s.178Pending application for alteration of registered mark
s.179Revocation for non-use
s.180Application for rectification, etc
s.181Rules as to use of certification mark
s.182Agents
s.183Guidelines, etc., on transitional matters
Who this reaches
Fashion & craftVisual artsMusicDigital & mediaContent creationEverything else
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