WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IP/N/I/MYS/T/3 
23 November 2001 
(01-5961) 
Original: Englishl 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
MALAYSIA 
The present document reproduces the textl of the following Jaws and regulations, as notified by Malaysia under 
Article 63.2 of the Agreement (see document IP/NIlIMYS/J): 
Trade Marks Act 1976 (Act 175) and Regulations 
Trade Marks (Amendment) Act 2000 (Act AI 01.§2 
Trade Marks (Amendment) Regulations 2001 
Conseil des aspects des droits de propriete 
intellectueHe qni touchent an commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA PROPRU!:TE 
INTELLECTUELLE NOTIFIEES AU TITRE DE L'ARTICLE 63:2 DE L'ACCORD 
MALAISIE 2 
154 
167 
Le present document contient le textel des lois et reglementations ci-apn!:s, notifiees par la Malaisie au 
titre de I'article 63:2 de l'Accord (voir le document IP/NIlIMYS/l): 
Loi de 1976 sur les marques (Loi nO 175) et reglementation 
Loi de 2000 sur les marques (modification) (Loi nO AI078) 
Reglementation de 200} sur les marques (modification) 
Cm1.sejo de los Aspectos de los Derechos dePropiedad 
Intelectual relacionados con el Comerdo 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPrEDAD [NTELECTUAL 
NOTIFICADOS EN VIRTUD DEL pARRAFO 2 DEL ARTicULO 63 DEL ACUERDO 
MALASIA 2 
154 
167 
En el presente documento se reproduce el textol de las leyes y reglamentos notificados por Malasia en virtud de 10 
dispuesto en el parrafo 2 del articulo 63 del Acuerdo (v ease el documento IPINII IMYS/l) 
Ley de Marcas de Fabrica 0 de Comercio de 1976 (Ley 175) y Reglamentos 
Ley de Marcas de Fabrica 0 de Comercio de (Modificaci6n) de 2000 (Ley A J 078) 
Reglamento sobre Mat·cas de Fabrica 0 de Comercio (Modificaci6n) de 200] 2 
154 
167 
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 les textes de ces 1018, dans lem 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. fP/N,/l/MYS/T!3 
Page 2 
TRADE RKS 
ACT 1976 (ACT 175) 
REGULATIONS 
(AS AT 5TH FEBRUARY 2001) TRADE MARKS ACT 1976 
(Act 175) 
ARRANGEMENT OF SECTIONS 
PART I 
PRELIMIN AR Y 
1. Short title, commencement and application. 
2. Extent of application. 
3. Interpretation. 
PART U 
ADMINISTRATION 
4. Registrar, Deputy Registrar and Assistant Registrar. 
4A. Protection of officers. 
5. Central and regional trade marks offices. 
PART HI 
THE REGISTER OF TRADE MARKS 
6. The Register. 
7. ~otice of trust. 
8. Inspection of Register. 
9. False entries in Register. 
PART IV 
REGISTRABLE TRADE MARKS 
10. Registrable trade marks. 
11. (Deleted). IP/NI1!MYS/T/3 
Page 3 
12. Use by proposed registered user to be considered for the purpose 
of determining distinctiveness, etc. 
13. Colour of trade mark. 
14. Prohibition on registration. 
14A. Where registration shall not be refused. 
15. Where registration may be refused. 
16. Use of name of another person. IPINIlIMYS/T/3 
Page 4 
17. Registration for particular goods or services. 
18. Disclaimer. 
19. Identical trade marks. 
20. Concurrent use. 
21. Jointly owned trade mark. 
22. Association of trade marks. 
23. Assignment 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 EFFECT OF REGISTRATION 
30. Registration of trade mark. 
31. Time for registration. 
32. Duration of registration. 
33. Words used as name or description of article, substance or service. 
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 
RENEW AL OF REGISTRATION 
41. Renewal of registration. 
42. Status of unrenewed trade mark. PART VIII 
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. 
47. Registration of assignment. 
48. Registered users. PART IX 
REGISTERED USER fPINIIIMYS/T13 
Page 5 
49. Powers to vary, extend or cancel registration of a registered user. 
50. (Deleted). 
51. Infringement proceeding. 
52. Registered user not to assign. 
53. (Deleted). 
54. (Deleted). 
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 well known trade marks. 
58. Defensive trade mark deemed to be associated trade mark. 
59. Rectification of Register. 
60. Application of Act. 1 P/NIlIMYSIT13 
Page 6 
PART XIII 
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. Minister may declare documents of foreign state pertaining to 
trade marks to be admissible. 
67. Discretionary power. 
68. (Deleted). 
69. Appeal from Registrar. 
PART XIV 
CONVENTIONS AND INTERNATIONAL ARRANGEMENTS 
70. Right of priority under Convention, etc. 
70A. Temporary protection of trade marks in respect of goods or services 
which are the subject matters of international exhibitions. 
70B. Protection of well-known trade marks. 
70c. Interpretation. PART XIVA 
BORDER MEASURES 
70D. Restriction on importation of counterfeit trade mark goods. 
70E. Security. 
70F. Secure storage of seized goods. 
70G. Notice. 
70H. Inspection, release, etc., of seized goods. 
701. Forfeiture of seized goods by consent. 
701. Compulsory release of seized goods to importer. 
70K. Compensation for failure to take action. 
70L. Actions for infringement of registered trade mark. 
70M. Disposal of seized goods ordered to be forfeited. 
70N. Insufficient security. 
700. Ex-officio action. 
70p. Regulations relating to border measures. Section 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. Powers 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. IMYS/T/3 
Page 7 [PINI] IMYS/T/3 
Page 8 
TRADE MARKS ACT 1976* 
(Act 175) 
An Act to make better provisions in the law relating to trade 
marks and for other matters connected therewith. 
[1st Sept. 1983] 
BE IT ENACTED by the Duli Yang Maha Mulia Seri 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: 
PART I 
PRELIMINARY 
1. Short title, commencement and application. 
(1) This Act may be cited as the Trade Marks Ad 1976, 
and shall come into force on such date as the Minister may, by 
notification in the Gazette, appoint. 
(2) This Act shall apply throughout Malaysia. 
2. Extent of application. 
(1) This Act shall apply to applications for trade marks made 
after the commencement of this Act and to the registrations of 
trade marks made on such applications. 
(2) Subject to subsection (4) of section 6, this Act shall also [Subs. Act 
apply to trade marks registered under the respective repealed A88l] 
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. Interpretation. 
(1) In this Act, unless the context otherwise requires-
'As amended by Act AS8], AJ078. [Ins, Act 
A881] 
[Ins, Act 
A1078] 
[Ins, Act 
A88I] 
[Am, Act 
;1881] 
[fns, Act 
AI078] "assignment" means assignment by act of the parties 
concerned; 
"component regions of Malaysia" means the regions of West 
Malaysia, Sabah and Sarawak; 
"Convention country" means a country which is a party to 
any multilateral treaty relating to trade marks to which Malaysia 
is also a party; 
"Court" means the High Court; 
"geographical indication" means an indication which identi­
fies any goods as originating in a country or tenitory or a region 
or locality in that country or tenitory, where a given quality, 
reputation or other characteristic of the goods is essentially 
attributable to their geographical origin; 
"in the course of trade", in relation to the provISIOn of 
services, means in the course of business; 
"limitations" means limitations of the right to the exclusive 
use of a trade mark given by the registration of the trade mark 
induding limitations of that right as to-
(a) mode of use; 
(b) use within a tenitorial area within Malaysia; or 
(c) use in relation to goods to be exported to a market 
outside Malaysia or use in relation to services to be 
provided in a place outside Malaysia; 
"mark" includes adevice, brand, heading, label, ticket, name, 
signature, word, letter, numeral or any combination thereof; 
"Paris Convention" means the Paris Convention for the 
Protection of Industrial Property of 20 March, 1883 as revised 
at Stockholm on 14 July 1967; 
"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 or services 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 com­
plies with any conditions or restrictions to which his registra­
tion 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 constituted 
under the Courts of Judicature Act 1964, and in other cases, 
prescribed by this Act or any regulations made thereunder; IP/N/1/MYS/T/3 
Page 9 IPIN/1/MYS/T/3 
Page J 0 
[Ins, Act 
A1078} "prescribed foreign country" means a country declared by the [Ins. Aa 
Minister, by order published in the Gazette, as having made A88l J 
anangements with Malaysia for the reciprocal protection of 
trade marks; 
"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 the Register as proprietor 
of the trade marks; 
"registered trade mark" means a trade mark which is actually 
upon the Register; 
"registered user" 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 Registrar" 
mean respectively the Registrar of Trade Marks, the Deputy 
Registrar of Trade Marks and the Assistant Registrar of Trade 
Marks appointed under section 4; 
"repealed Ordinances" means the Trade Marks Ordinance 
1950, the Trade Marks Ordinance of Sabah and the Trade 
Marks Ordinance of Sarawak; 
"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; 
"trade mark" means, except in relation to Part XI, a mark llsed 
or proposed to be used in relation to goods or services for the 
purpose of indicating or so as to indicate a connection in the 
course of trade between the goods or services and a person having 
the right either as proprietor or as registered user to use the 
mark whether with 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 transfer not being assignment; 
"TRIPS Agreement" means the Agreement on Trade-Related 
Aspects of Intellectual Property Rights 1994 which constitutes 
Annex 1 C to the Agreement Establishing the World Trade 
Organization; 
"word" includes an abbreviation of a word. [Ins. Act 
A8S]} [Ins. Act 
A881] 
lAm. Act 
A88l J (2) In this Act-
(a) references to the use of a mark shaH be construed as 
references to the use of a printed or other visual repre­
sentation of the mark; 
Cb) 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 other relation to, goods; and 
Cc) 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 avail­
ability or performance of services. 
PART II 
ADMINISTRATION 
4. Registrar, Depu.ty Regist.rar and Assistant Registrar. 
(1) The Minister may appoint a person to be the Registrar 
of Trade Marks who shall, in addition to the powers and func­
tions conferred by this Act, have superintendence over all 
matters relating to trade marks. 
(2) The Minister may appoint such number of Deputy Regis­
trars 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 subsection (4). 
(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 delega­
tion, to an Assistant Registrar so that the delegated powers and 
functions may be exercised by the Assistant Registrar so dele­
gated 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 Registrar shall have a seal of such device as may 
be approved by the Minister and the impressions of such seal 
shall be judicially noticed and admitted in evidence. 
4A. Protection of officers. 
No action or prosecution shall be brought, instituted or main­
tained in any Court against-
(a) the Registrar of Trade Marks; IPINIIIMYS/T 13 
Page 11 
[ll1s. Act 
AW78] IP /NIl 11\1 Y S/TI3 
Page 12 
[/ns. ACI 
ASS!} 
[Am. Acl 
A88]] 
{Act 1'11078] 
[Am. Act 
A1078} (b) a Deputy Registrar of Trade Marks; or 
(c) an Assistant Registrar of Trade Marks, 
for any act or omission done in good faith in the performance 
of his functions and the exercise of his powers under this Act. 
5. Central and regional trade marks offices. 
(1) For the 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. 
(2A) In addition to the regional trade marks office established 
in the States of Sabah and Sarawak, there may be established 
such number of trade marks offices as may be necessary for 
the purposes of this Act. 
(3) A document required or permitted by this Act to be sub­
mitted at the Central Trade Marks Office may be submitted at 
any trade marks office and reference in this Act to the submis­
sion at the Central Trade Marks Office includes reference to 
the submission at a trade marks office. 
PART HI 
THE REGISTER OF TRADE MARKS 
6. The Register. 
(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, the 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) (Deleted). 
(3) The previous registers of trade marks kept under the 
repealed Ordinances shall be incorporated with and form part 
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: Ca) 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 has 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 incorporation 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 re­
spect 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 
component 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 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 or, where it has been made, 
it is subsequently refused, abandoned or success­
fully opposed; IP/NIlIMYS/T/3 
Page 13 IPIN/1/MYS/T/3 
Page 14 
(c) 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 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-mentioned trade mark in 
their incorporation into the Register shall be deemed to 
be registered trade marks in the names of the respecti ve 
proprietors under this Act subject to concurrent use of 
the trade marks by their respective proprietors in ac­
cordance with subsection (1) of section 20; 
(d) 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 successfully 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. 
7. Notice of trust. 
Notice of a trust express, implied or constructive shall not 
be entered in the Register or be received by the Registrar. TP/NIl/MYS/T/3 
Page 15 
8. Inspection of Register. 
(1) The Register shall be open to the inspection of the public 
at such times as the Minister may by regulations 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 
trade marks office for the purpose of facilitating any search to 
be made by the public at such times as the 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. False entries in Register. 
Every person who-
(a) makes or causes to be made a false entry in the Register; 
(b) makes or causes to be made a false entry in any certified 
copy of the Register deposited in a trade marks office; 
Cc) makes or causes to be made a false document purport­
ing to be a copy of an entry in the Register; 
(d) 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. Registrable trade marks. 
( 1) In order for a trade mark (other than a certification trade 
mark) to be registrable, it shall contain or consist of at least 
one of the fonowing particulars: 
(a) the name of an individual, company or firm represented 
in a special or particular manner; [Am. Act 
A881] 
[Am. Act 
A881] 
[Am. Acts 
A8Sl. 
AlO7S} IP/NI1 IMYS/T/3 
Page 16 
[Am. Act 
AI078] 
[Ins. Act 
A88]; 
Am. Act 
A1078J 
{Subs. Act 
A 1078] (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 or services not being, according 
to its ordinary meaning, a geographical name or sur­
name; or 
(e) any other distinctive mark. 
(2) A name, signature or word which is not described in 
paragraph (a), (b), (c) or (d) of subsection (1) is not registrable 
unless it is by evidence shown to be distinctive. 
(2A) For the purposes of this section, "distinctive", in rela­
tion to the trade mark registered or proposed to be registered 
in respect of goods or services, means the trade mark must be 
capable 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. 
(2B) In determining whether a trade mark is capable of dis­
tinguishing 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. 
[Subs. Act (3) A trade mark may be registered in the Register in respect 
AJ078] of any goods or services. 
[Act AI078] 110 (Deleted). [Subs. Act 
ASS]] I PlNll IMYS/T/3 
Page 17 
12. Use by proposed registered user to be considered for the 
purpose of determining distinctiveness, etc. 
(1) 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 person 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 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 regis­
tration 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. 
13. Coiour of trade mark. 
(1) A trade mark may be limited in whole or in part to one 
or more specified colours and, in any such case, the fact that 
the trade mark is so limited shall be taken into consideration 
for the purpose of determining whether the trade mark is 
distincti ve. 
(2) Where a trade mark is registered without limitations as 
to colour, it shall be deemed to be registered for all colours. 
14. Prohibition on registration. 
(1) A mark or part of a mark shall not be registered as a 
trade mark-
(a) if the use of which is likely to deceive or cause con­
fusion to the public or would be contrary to law; IP/N/1/MYS/T/3 
Page ]8 
[Ins. Act 
A88]} 
[Ins. Act 
AJ078] 
[Ins. Act 
AJ07S} 
[Ins. Act 
A1078] 
[ins. Act 
AlO78! 
[Ins. Act 
AJ078] 
(Ins. Act 
AI078] (b) if it contains or comprises any scandalous or offensive 
matter or would otherwise not be entitled to protection 
by any court of law; 
Cc) if it contains a matter which in the opinion of the Regis­
trar is or might be prejudicial to the interest or security 
of the nation; 
(d) if it is identical with or so nearly resembles a mark 
which is well-known in Malaysia for the same goods 
or services of another proprietor; 
(e) lflt is well-known and registered in Malaysia for goods 
or services not the same as to those in respect of which 
registration is applied for: 
Provided that the use of the mark in relation to those 
goods or services would indicate a connection between 
those goods or services and the proprietor of the well­
known mark, and the interests of the proprietor of the 
well-known mark are likely to be damaged by such 
use; 
(j) if it contains or consists of a geographical indication 
with respect to goods not originating in the territory 
indicated, if use of the indication in the mark for such 
goods in Malaysia is of such a nature as to mislead the 
public as to the true place of origin of the goods; or 
(g) if it is a mark for wines which contains or consists of 
a geographical indication identifying wines, or is a 
mark for spirits which contains or consists of a geo­
graphical indication identifying spirits, not originating 
in the place indicated by the geographical indication 
in question. 
(2) Article 6bis of the Paris Convention and Article 16 of 
the TRIPS Agreement shall apply for the purpose of deter­
mining whether a trade mark is a well-known trade mark. 
14A.. 'Where registration shall not be refused. 
(1) A trade mark shall not be refused registration by virtue 
of paragraphs (j) and (g) of section 14 if the application for 
its registration had been made in good faith, or if it had been 
used continuously in good faith in the course of trade by the 
applicant for its registration or his predecessor in title, either-
(a) before the commencement of the Geographical Indi­
cations Act 2000; or IPINI1IMYS/T/3 
Page 19 
(b) before the geographical indication in question is pro­
tected in its country of origin. 
(2) A trade mark shall not be refused registration by virtue 
of paragraphs if) and (g) of section 14 if the geographical indi­
cation in question-
(a) has ceased to be protected; or 
(b) has fallen into disuse, 
in its country of origin. 
15. Where registration may be refused. 
The Registrar shan 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 resembling any of 
those marks as is likely to be taken for that mark: 
Ca) 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. Use of name of another person. 
Where a person makes an application to register a trade mark [Am. Act 
which consists of or includes the name or representation of A88J] 
another person whether living or dead 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 representation to be used as a 
trade mark. IPIN11/MYS/T/3 
Page 20 
[Subs. Act 
A88l} 
[Subs. Act 
A881} 17. Registration for particular goods or services. 
(1) A trade mark may be registered in respect of any or all 
of the goods comprised in a prescribed class of goods or in 
respect of any or all of the services comprised in a prescri beel 
class of services. 
(2) If any question arises as to the class in \vhich goods or 
services are comprised that question shall be decided by the 
Registrar whose decision shall be final. 
18. Disclaimer. 
(1) If a trade mark-
Ca) contains any part-
(i) which is not the subject of a separate application 
by the proprietor for registration as a trade mark; 
or 
(ii) which is not separately registered by the proprietor 
as a trade mark; or 
(b) contains matter which is common to the trade or busi­
ness or is not distinctive, 
the Registrar or the Court, in deciding whether the trade mark 
shall 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 Register shall affect any right of 
the proprietor of a trade mark except a right arising out of the 
registration of the trade mark in respect of which the disclaimer 
is made. 
19. Identical trade marks. 
(1) No trade mark shall be registered in respect of any goods 
or description of goods-fPIN/1/MYS/T/3 
Page 21 
Ca) 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 
Cb) that so nearly resembles such a trade mark as is likely 
to deceive or cause confusion. 
(2) No trade mark shall be registered in respect of any services 
or description of services-
Ca) that is identical with a trade mark belonging to a diffe­
rent 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. IPIN/1/MYS/T/3 
Page 22 
20. Concurrent use. 
[Subs. Act (1) Notwithstanding subsection (1) of section 19, in the case 
A88lj 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 "vhere the registration 
of the different proprietors-
{Ins. Act 
A881J (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 limi­
tations, if any, as the Court or the Registrar, as the case may 
be, may think right to impose. 
(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 limita-
tions, 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 resembling another trade mark in the 
Register if the applicant of the first-mentioned trade mark or his 
predecessor in business has continuously used that trade mark 
from a date before-
(a) the use of that other trade mark by the registered pro­
prietor or his predecessor in business or by a registered 
user; or [Ins. Act 
A88}] fP/N/]/MYS/TI3 
Page 23 
(b) the registration of that other trade mark by the registered 
proprietor or his predecessor in business, 
whichever is the earlier. 
21. Jointly owned trade mark. 
(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 or services with which both or all 
of them are connected in the course of trade, 
both or all of them may be registered as joint proprietors 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 
independently, or propose so to use it, as joint proprietors of 
the trade mark. 
22. Association of trade marks. 
(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 
(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. 
(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 require that the trade marks be 
entered on Register as associated trade marks. [Subs. Act 
A88]] IP/NI11MYS/T/3 
Page 24 
(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 respects any of them 
if he is satisfied that there would be no likelihood of deception 
or confusion being caused if that trade mark were used by another 
person in relation to any of the goods or services in respect of 
which it is registered and may amend the Register accordingly. 
(3) A decision of the Registrar under subsection (2) is subject 
to appeal to the Court. 
23. Assignment of associated trade marks. 
(1) Associated trade marks shall be assignable or 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. Series of trade marks. 
(1) Where several trade marks in respect of the same goods 
or description of goods in a single class or in respect of the same 
services or description of services in a single class resemble 
each other in material particulars but differ in respect of-
(a) statements or representations as to the goods or services 
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 
Cd) colour, 
and a person who claims to be the proprietor thereof seeks to 
register the trade marks, the trade marks may be registered as 
a series in one registration. [Am. ACt 
ASS1] [Am. Act 
A88l] JPINI11MYS/T/3 
Page 2S 
(2) All trade marks registered in a series shall be deemed 
to be and shall be registered as associated trade marks. 
PART V 
APPLICA TION FOR REGISTRATION 
25. Registration. 
(1) Any person claiming to be the proprietor of a trade mark 
used or proposed to be used by him may make application to 
the Registrar for the registration of that mark in the Register 
in the prescribed manner. 
(2) An application shall not be made in respect of goods or 
services comprised in more than one class. 
(3) Subject to the provisions of this Act, the Registrar may 
refuse the 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 Regis­
trar 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) An 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 
subject to what conditions, amendments, modifications or limi­
tations, if any, the application 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 acceptance 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 permi.t the 
applicant to amend his application upon such terms as he or it 
ma y think fit. [Am. Act 
AJ078] IP/N/1/MYS/T/3 
Page 26 
(10) Any application submitted and accepted under this sec­
tion shall notwithstanding any correction or amendment permit­
ted by the Registrar or the Court to be made in such application 
be deemed to have been made on the date of its original sub­
mlSSlOn. 
(11) (Deleted). 
(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 satis­
fied-
(a) that the application has been accepted in error; or 
Cb) that in the special circumstances of the case the trade 
mark shall not be registered or shall be registered subject 
to additional or different conditions or limitations, [Act AI078] 
the Registrar may withdraw the acceptance and proceed as if [Am. Act 
the application had not been accepted or, in respect only of a A88]} 
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. 
26. Application may be accepted where trade mark is to be 
used by assignee or registered user. 
(1) An application for the registration of a trade mark in 
respect of any goods or services shall not be refused nor shall 
permission for such registration be withheld on the ground that 
it appears that the applicant does not use or propose to use the 
trade mark-
Ca) if the Registrar is satisfied that a body corporate is 
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 
Cb) if an application has been made for the registration of [Am. Act 
a person as a registered user of the trade mark, and the A88l] 
Registrar is satisfied that the proprietor intends it to be 
used by that person in relation to those goods or services 
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. IPlNllIMYS/T13 
Page 27 
(3) Where a trade mark is registered in respect of any goods 
or services under the power conferred by subsection (1), then 
unless the corporation has been registered as the proprietor of 
the trade mark in respect of those goods or services within a 
period of six months, the registration shall cease to have effect 
in respect thereof at the expiration of that period and the Regis­
trar shall amend the Register accordingly. 
27. Advertisement of acceptance of application. 
(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 acceptance, cause the application as 
accepted to be advertised in the prescribed manner. 
[Subs. Act (2) The advertisement shall set forth all conditions, amend-
A88]} ments, modifications and limitations subject to which the appli­
cation has been accepted except that the Registrar may cause 
an application for registration of a trade mark to be advertised 
before acceptance thereof if the considerations in subsection 
(28) of section 10 or subsection (lA) of section 11 apply 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 sub­
section (2) the Registrar may, if he thinks fit, advertise it again 
when it has been accepted but he shall not be bound to do so. 
28. Opposition to registration. 
(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 and applicant 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 oppo­
sition. 
(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. [Subs. Act 
A881] IP!NllIMYS/T/3 
Page 28 
(3A) If the applicant submits a counter-statement under sub­
section (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 applica-
tion, as the case may be, shall be treated as abandoned. 
(3B) If the applicant files evidence and exhibits under sub­
section (3A), the opponent may, within the prescribed time, send 
to the Registrar and applicant evidence in reply to be adduced 
in the prescribed manner. [Ins. Act 
A881] 
[Ins. Act 
AS8]] 
(4) After considering the evidence and exhibits and after [Subs. Act 
giving the applicant and the opponent an opportunity of making AS81} 
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. 
(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 determining whether, and 
subject to what conditions, amendments, modifications or limi­
tations, 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 further 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 pre­
scribed. lAm. Act 
A881J 
[Am. Act 
A88J} 
[Am. Act 
A881] I P/NIIIMYS/T/3 
Page 29 
(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 substantially 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) If a person giving notice of opposition or an applicant 
sending a counter-statement after receipt of such a notice, or an 
appellant, neither resides nor carries on business in Malaysia, 
the Registrar or the Court may require him to give security for 
costs of the proceedings relative to the opposition, application 
or appeal, as the case may be, and in default of such security 
being duly given, may treat the opposition, application, or appeal, 
as the case may be, as abandoned. 
29. Non~completion of registration. 
(1) When an application for registration of a trade mark is 
not completed within twelve months from the date of the 
application by reason of default on the part of the applicant, 
the Registrar may, after giving notice in writing of the 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
completion 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. Registration of trade mark. 
(1) When an application for registration of a trade mark in [Am. Act 
the Register has been accepted and either- A1078J 
(a) the application has not been opposed and the time for 
opposition has expired; or 
(b) the application has been opposed and the opposition 
has been decided favour of the applicant, JP/Nil 
Page 30 
[Am. Act 
A881] the Registrar shall, unless the application has been accepted in 
error, register the trade mark in the Register on payment of the 
prescribed fees in the name of the proprietor, 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. Time for registration. 
(1) Subject to subsection (2) a trade mark shall not be regis­
tered after twelve months from the date of the advertisement of 
the acceptance of the application for registration of the trade 
mark. 
(2) Where the registration of a trade mark is delayed by­
(a) opposition to the registration of the trade mark; 
Cb) any appeal made to the Court; or 
(c) an action on the part of the Central Trade Marks office [IllS. Act 
or any trade marks office, A88J] 
that trade mark may be registered within such time as directed 
by the Registrar or the Court respectively. 
(3) Where a trade mark has not been registered within the 
time applicable to it the application shall lapse. 
32. Duration of registration. 
(1) The registration of a trade mark shall be for a period of 
ten years but may be renewed from time to time 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 
under 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 VU. [Subs. ACT 
A881] 
[Ins. Act 
ASS!] fP/N/lIMYS/T/3 
Page 31 
33. Words used as name or description of article, substance 
or service. 
Cl) The registration of a trade mark shall not be deemed to 
have become invalid by reason only of any use after the date 
of the registration of a word or words which the trade mark 
contains or of which it consists as the name or description of 
an article, a substance or a service. 
(2) If it is proved either-
Ca) 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 on, in the case of a certification 
trade mark, goods certified by the proprietor; 
Cb) 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; or 
Cc) 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 being 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, 
subsection (3) shall have effect. 
(3) When the facts mentioned in paragraph Ca), Cb) or (c) of 
subsection (2) are proved \vith respect to any word or words 
then-
(a) if the trade mark consists solely of that word or those 
words, the registration ofthe trade mark, so far as regards 
registration in respect of the article, substance or service 
in question or of any goods or service of the same 
description, shall be deemed for the purpose of section 
45 to be an entry wrongly remaining in the Register; IP/N/I/MYS/T/3 
Page 32 
(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, 
substance or service in question or of any goods or 
service 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, 
substance or service in question or any goods or service 
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 \vhich the disclaimer 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, substance or service in question or 
to any goods or service of the same description; 
or 
(ii) if the trade mark contains that word or those words 
and other matter, all rights of the registered propri-
etor to the exclusive use of the word or those words, 
in such relation as in subparagraph (1), 
shall be deemed to have ceased on the date at which 
the use mentioned in paragraph (a) or (c) 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). 
(4) No word which is the commonly used and accepted name 
of any single chemical element or single chemical 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 distinguished from the element or compound 
as made by others and in association with a suitable name or 
description open to the public use. [Am. Act 
AJ078} IPINIlIMYS/T/3 
Page 33 
34. Powers of registered proprietor. 
Subject to the provisions of this Act,-
(a) the person for the time being entered in the Register 
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 for 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 pro­
perty. 
35. Rights given by registration. 
(1) Subject to the provisions of this Act, the registration of 
a person as registered proprietor of a trade mark (other than a 
certification trade mark) in respect of any goods or services 
shall, ifvalid, 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 or services subject to any conditions, amendments, 
modifications or limitations entered in the Register. 
(2) Where two or more persons are proprietors of registered [Am. Act 
trade marks which are identical or nearly resembling each other A88l] 
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 persons have the same rights as against 
other persons (not being registered users) as he would if he were 
the sole registered proprietor. 
36. Registration prima facie evidence of validity. 
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 facie 
evidence of the validity of the original registration of the trade 
mark and of all subsequent assignments and transmissions 
thereof. 
37. Registration conclusive. 
In all legal proceedings relating to a trade mark registered in 
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-[Am. Act 
A. 1078] IP/N/1/MYS/TI3 
Page 34 
[Ins. Act 
A88I} 
[Act A1078] (a) 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 or services 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. 
38. Infringement of a trade mark. 
(1) A registered trade mark is infringed by a person who, not 
being the registered proprietor of the trade mark or registered 
user of the trade 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 confusion in the course of trade in 
relation to goods or services 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; 
(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 the right either as reg­
istered proprietor or as registered user to use the trade 
mark or to goods with which the person is connected 
in the course of trade; or 
(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 pro­
vision of which the person is connected in the course 
of trade. 
(2) (Deleted). [Am. Act 
A1078] IPlN/] IMYS/T/3 
Page 35 
39. Infringement of trade mark by breach of certain restric­
tion. 
e 1) Where, by notice upon goods or upon the container of 
goods, the registered proprietor or a registered user of a trade 
mark registered in the Register makes a statement prohibiting 
the doing of an act to which 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 unless-
(a) at the time when he agreed to buy the goods he acted 
in good faith without notice that the statement appeared 
on the goods; 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 upon goods after they 
have suffered alteration to their state, conditions, get­
up or packing; 
Cb) in a case in which the trade mark is upon the goods the 
alteration, partial removal or partial obliteration 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 repu­
tation 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. 
(3) this section references in relation to goods to the 
registered proprietor, to a registered user, and to the registration 
of a trade mark shall 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 expression "upon" includes, 
in relation to goods, a reference to physical relation to the goods. IP/N/1/MYS/T/3 
Page 36 
[Am. Act 
A881] 
[Am. Act 
AS81] 
[Ins. Act 
A881] 40. Acts not constituting infringement. 
(l) Notwithstanding anything contained in this Act, the 
following acts do not constitute an infringement of a trade 
mark-
Ca) 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; 
(b) the use in good faith by a person of a description of 
the character or quality of his goods or services, and 
in the case of goods not being a description that would 
be likely to be taken as importing any reference as is 
mentioned in paragraph (b) of subsection (l) of section 
38 or paragraph (b) of subsection (3) of section 56; 
(c) the use by a person of a trade mark in relation to goods 
or services in respect of which he has by himself or his 
predecessors in business, continuously used the trade 
mark from a date before-
0) the use of the registered trade mark by the regis­
tered proprietor, by his predecessors in business 
or by a registered user of the trade mark; or 
Oi) 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 registered user of the 
trade mark if, as to those goods 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; 
(dd)the use by a person of a trade mark in relation to goods 
or services to which the registered proprietor or regis­
tered user has at any time expressly or impliedly con­
sented to; 
(e) the use of the trade mark by a person in relation to goods 
or services adapted to form part of, or to be accessory 
to, other goods or services in relation to which the trade 
mark hc.s 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 or services 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 or services; and fPIN/1/MYS/T/J 
Page 37 
(j) 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 is registered subject to conditions, [Am. Act 
amendments, modifications or limitations, the trade mark is not A88I} 
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 relation to services 
to be provided in a place or in any other circumstances to which 
having regard to those conditions, amendments, modifications 
or limitations the registration does not extend. 
PART VII 
RENEW AL OF REGISTRATION 
41. Renewal of registration. 
(1) The Registrar shall, on application made by the registered 
proprietor of a trade mark in the prescribed manner and within 
the prescribed period, renew the registration of the trade mark 
for a period of ten 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". [Am. Act 
A88]} 
(2) At the prescribed time before the date of expiration of [Am. Act 
the last registration of a trade mark the Registrar shall send A88] J 
notice in the 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 registra-
tion 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 upon payment of fees for 
restoration. 
(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. [Ills. Act 
A88]] iP/N/1/MYS/T/3 
Page 38 
[Am. Act 
A88]} 42. Status of unrenewed trade mark. 
Where a trade mark has been removed from the Register 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 expiration of the last registration 
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-
(a) 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 by reason of any previous 
use of the trade mark which has been removed. 
PART VIn 
CORRECTION AND RECTIFICATION OF REGISTER 
43. Correction of Register. 
(1) The Registrar may, on request made in the prescribed 
manner by the registered proprietor of a trade 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 goods or services 
in respect of which the trade mark is registered or 
entering a disclaimer or memorandum relating to the 
trade mark without extending in any way the rights 
given by the existing registration of the trade mark, 
and may make any consequential amendment or alteration in 
the certificate of registration and for that purpose may require 
the certificate of registration to be submitted to him. 
(2) The Registrar may on the request made in the prescribed 
manner by a registered user of a trade mark correct an error or 
enter any change in the name, address or description of that 
registered user. 
(3) A decision of the Registrar under this section is subject 
to appeal to the Court. 44. Alterations of registered t.rade mark. IPINII/MYS/T/3 
Page 39 
(1) The registered proprietor of a trade mark may apply in 
the prescribed manner to the Registrar for leave to add to or 
alter the trade mark in any manner not substantially 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 prescribed 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 oppo­
sition 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, shall 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. Rectification of the Register. 
(1) Subject to the provisions of this Act-
Ca) the Court may on the application in the prescribed 
manner of 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 wrongfully remaining in the Register, or 
by any error or defect in any entry in the Register, make 
such order for making, expunging or varying such entry 
as it thinks fit; IPINIl/MYS/T/3 
Page 40 
[Act AlO78] 
[Am. Act 
A88l] (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 rectification of the 
Register; 
(c) in case of fraud in the registration, assignment or transmis­
sion 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; 
(d) an order of the Court rectifying the Register shall direct 
that notice I)f 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) (Deleted). 
46. Provisions as to non~use of trade mark. 
(1) Subject to this section and to section 57, the Court may, 
on application by a person aggrieved, order a trade mark to be 
removed from the Register in respect of any of the goods or 
services in respect of which it is registered on the ground-
(a) 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 registered user 
concerned, to use the trade mark in relation to those 
goods or services and that there has in fact been no use 
in good faith of the trade mark in relation to those goods 
or services 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 application 
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 or 
services by the registered proprietor or registered user 
of the trade mark for the time being. IPINIlIMYS/T/3 
Page 41 
(2) Except where an applicant has been permitted under [Subs. Act 
section 20 to register an identical or a nearly resembling trade A881} 
mark in respect of the goods or services to which the applica-
tion 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 regis­
tered 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 
Cb) 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 regis­
tered 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. 
(3) Where in relation to goods 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 goods to be sold or otherwise traded 
in in a particular place in Malaysia (otherwise than for 
export from Malaysia) or in relation to goods to be 
exported to a particular market outside Malaysia; and 
Cb) a person has been permitted under section 20 to register [Am. Act 
an identical or nearly resembling trade mark in respect A88] J 
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 is of the opinion that that person might 
properly be permitted to register the trade mark, 
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 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. [Am. Act 
A88]] INN/1/MYS/T/3 
Page 42 
[ Ins. Act 
ASSl] (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 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 that person migl:lt properly 
be permitted to register the trade mark, 
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. 
(4) An applicant is not entitled to rely for the purpose of 
paragraph (b) of subsection 0) or for the purpose of subsection 
(3) or (3A) 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 rela­
tion to the goods to which the application relates. 
47. Registration of assignment. 
(l) Where a person becomes entitled by assignment or trans­
mission to a registered trade mark he shall make 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 
g~o~s or services in respect of which the assignment or trans­
mISSIOn has effect and cause particulars of the assi anment or 
. . b transmISSIOn to be entered the Register. 
(2) A decision of the Registrar under subsection Cl) is subject 
to appeal to the Court. 
(3) Except in the case of an appeal under this section or of 
an application under section 45 a document or instrument in 
respect of which no entry has been made in the Register in 
accordance with subsection (1) shall not, unless the Court 
otherwise directs, be admissible in evidence in Court to prove 
title to a registered trade mark. PART IX 
REGISTERED USER 
48. Registered u.sers. iPINII/MYS/T/3 
Page 43 
(1) Subject to the prOVlSIOns of this section, where the [Subs. Act 
registered proprietor of a trade mark grants, by lawful contract, A88] ] 
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 it 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; 
(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. TP/NI1 IMYS/T/3 
Page 44 
(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-
Ca) 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 con­
cerned 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 
re2:istered 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 may 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 proceed­
ings under subsection (7) that might lead to any alteration or 
rectification of the Register. [Subs. Ac/ 
A881 ] IPft'-I/J/MYS/T/3 
Page 45 
49. Powers to vary, extend or cancel registration of a regis~ 
tered user. 
(1) Without prejudice to section 45, the registration of a 
person as a registered user- v 
(a) may be varied by the Registrar on the written appli­
cation in the prescribed manner of the registered pro­
prietor with respect to the goods or services for which 
or with respect to any conditions or restrictions subject 
to which the registration has effect; 
(b) may be extended by the Registrar on the application in 
writing of the registered proprietor for such period as 
the Registrar thinks fit· '-' , 
(c) may be cancelled by the Registrar on the application 
of the registered proprietor. 
(2) The Registrar may at any time cancel the registration of 
a person as a registered user of a trade mark for any goods or 
services in respect of which the trade mark is no longer 
registered. 
[Ins. Act (3) Any decision of the Registrar under subsection (1) or (2) 
A881} is subject to appeal to the Court. 
[Act A881] 50. (Deleted). 
51. Infringement proceeding. 
(1) Subject to any agreement subsisting between the registered 
user of a trade mark and the registered proprietor of the trade 
mark, the registered user is entitled to can upon the registered 
proprietor to take proceedings for infringement 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 infringement in his own name as if he 
were the registered proprietor and shall make the registered 
proprietor a defendant. 
(2) A registered proprietor so added as a defendant is not 
liable for costs unless he enters an appearance and takes part 
in the proceedings. 
52. Registered use:r not to assign. 
This Part does not confer on the registered user of a trade 
mark an assignable or transmissible right to the use of that trade 
mark. 
[Act A88] ] 53. (Deleted). 
[Act A88] j 54. (Deleted). IPIN11/MYS/T/3 
Page 46 
PART X 
ASSIGNMENT OF TRADE MARKS 
55. Assignment and transmission of trade marks. 
(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 or services in respect of which 
the trade mark is registered or in part of the goods or services. 
(1A) Subsection (1) shall have effect in the case of an un-[Ins. Act 
registered trade mark used in relation to any goods or services A88J] 
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 assign-
ment 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. 
(2) Notwithstanding subsection (1), an assignment of a regis­
tered 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 where-
(a) the tra.de mark was registered with the intention that it 
shall be assignable to a body corporate yet to be formed 
and the trade mark has been assigned; 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 regis­
tration of the trade mark and has used that trade mark 
within that period. 
(3) Notwithstanding subsections (1) 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. [Subs. Act 
A88]] IPINIlIMYS/T/3 
Page 47 
(4) Where an application is made in the prescribed manner 
by the registered proprietor of a trade mark who proposes to 
assign it or by a person who claims that a trade mark 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 an 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 assign­
ment 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 before that date. 
[Subs. Act (5) Where an assignment in respect of any goods or services 
A88!} 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 effect unless the assignment 
has been advertised in the prescribed manner and the application 
for the assignment without goodwill, accompanied by the ad­
vertisement, has been sent to the Registrar. 
[Act A88!] (6) (Deleted). 
[Am. /le: 
AlO78} (7) A decision of the Registrar under this section is subject 
to appeal to the Court. 
PART XI 
CERTIFICATION TRADE MARKS 
56. Certification trade marks. 
(1) A mark must be capable, in relation to any goods or 
services, of distinguishing in the course of trade goods or services 
certified by any person in respect of origin, material, mode of 
manufacture, quality, accuracy, or other characteristic, from 
goods or services not so certified shall be registrable as a cer­
tification trade mark in the Register in respect of those goods 
or services in the name of that person as proprietor thereof 
except that a mark shall not be so registrable in the name of 
a person who carries on a trade in goods or services of the kind 
certified. 
(2) In determining whether a mark is capable of distinguish- {Subs. Act 
ing, the Registrar may have regard to the extent to which- A 1078] 
(a) the mark is inherently capable of distinguishing m 
relation to the goods or services in question~ and IPlNI1 IMYS/T/3 
Page 48 
(b) by reason of the use of the mark or any other ch-cum­
stances, the mark is in fact capable of distinguishing 
in relation to the goods or services in question. 
(3) Subject to paragraphs (a) and Cb) 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 goods, and without prejudice to the generality of the 
foregoing words, that right shaH be deemed to be infringed by 
any person who, not being the registered proprietor of the trade 
mark or a person authorised by him under 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 bty taken either-
(a) as being use as a trade mark; 
Cb) in the case in which the use is use upon the goods or 
services or in physical relation thereto or in an adver­
tising circular, or other advertisement issued to the public, 
as importing a reference to some person having the right 
either as registered proprietor or by his authorisation 
under the relevant rules to use the trade mark or to goods 
or services certified by the registered proprietor; or 
Cc) 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. [Ins. Act 
A88!] 
[Am. Act 
A88!] (4) The right to the use of a certification trade mark given 
by registration shall be subject to any conditions, amendments, 
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, 
in relation to services to be provided in a place or in any cir­
cumstances to which having regard to any such conditions, 
amendments, modifications or limitations, the registration does 
not extend. 
(5) The right to the use of a certification trade mark given 
by registration shall not be deemed to be infringed by the use 
of any such mark by a person-[fns. Act 
A8S!] IP INlllMY SIT /3 
Page 49 
(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 part, the proprietor or another in accordance 
with his authorisation under the relevant rules has applied 
the trade mark and has not subsequently removed or 
obliterated it; 
(aa) where the registered proprietor has at any time expressly 
or impliedly consented to the use of the trade mark; or 
(b) in relation to goods or services adapted to form part of, 
or to be accessory to, other goods or services in relation 
to which the trade mark has been used without infringe­
ment 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 or services are so 
adapted and neither the purpose nor the effect of the 
use of the mark is to indicate otherwise than in accor­
dance with the fact that the goods or services are certified 
by the registered 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 
or services notwithstanding that they are such goods or services 
as are mentioned in that paragraph, if such application is contrary 
to the relevant rules. 
(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 (2) to (8) and subsection 
(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. 
(9) In dealing with an application under this section the Registrar 
shall have regard to the like considerations, 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. [Am. Act 
A881] lP/Nil IMYS/T/3 
Page 50 
(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 or services 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 conferring a right of appeal to the 
Registrar against any refusal of the proprietor to certify goods 
or services or to authorise the use of the trade mark in accordance 
with the rules) and such rules, if approved, shall be deposited 
with the Registrar and shall be open to inspection in like manner 
as the Register. 
(11) The Registrar shall consider the application with regard 
to the following matters, that is to say-
(a) whether the applicant is competent to certify the goods 
or services 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-
0) refuse to accept the application; or 
(ii) accept the application and approve the rules, either 
without modification and unconditionally or sub­
ject 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 opportunity of being 
heard and the Registrar may, at the request of the applicant, 
consider the application before authorisation 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. 
(12) Where an application has been accepted the Registrar 
shall, as soon as may be after such acceptance, cause the ap­
plication 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 application had been an application under 
section 25 except that, in deciding under section 28, the Registrar 
shall have regard only to the consideration referred to in sub­
section (9), and a decision under section 28 in favour of the 
applicant shall be conditional on the determination in his favour 
by Registrar under subsection (13) of any opposition relating 
to any of the matters referred to in subsection (1). IP/N/1/MYS/T/3 
Page 51 
(13) When notice of opposition 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) (a) The rules deposited in respect of a certification trade 
mark may, on the application of the registered proprietor, 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 applica­
tion to be advertised, if within the prescribed 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) The 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 certification trade 
mark, or for varying the deposited rules, on the ground-
(a) that the registered proprietor is no longer competent, in 
the case of any of the goods or services in respect of 
which the trade mark is registered, to certify the goods 
or serVIces; 
(b) that the registered proprietor has failed to observe a 
provision of the deposited rules to be observed on his 
part; 
(c) that it is no longer to the public advantage that the trade 
mark should be registered; or 
(d) that it is requisite for the public advantage that, if the 
trade mark remains registered, the rules 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 
rules in such manner as may be requisite for giving effect to 
an order made under subsection (15). 
(17) 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 services or to authorise use of the trade mark. IP/NIl/MYS/T/3 
Page 52 
[Act AI078} (18) (Deleted). 
(19) The provisions of this Part shall be construed subject to 
section 19 of the Standards Act 1966. 
PART XII 
DEFENSIVE TRADE MARKS 
57. Defensive registration of wen known trade marks. 
(1) Where a trade mark consisting of an invented word or 
words has become so well known as regards any goods or services 
in respect of which it is registered and, in relation to which it 
has been used, that the use thereof in relation to other goods 
or services would likely to be taken as indicating a connection 
in the course of trade between the other goods or services and 
a person entitled to use the trade mark in relation to the first­
mentioned goods or services, then, notwithstanding that the 
proprietor registered in respect of the first-mentioned goods or 
services does not use or propose to use the trade mark in relation 
to the other goods or services 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 first-men­
tioned goods or services, be registered in his name in respect 
of the other goods or services as a defensive trade mark and while 
so registered, shall not be liable to be taken off the Register in 
respect of other goods or services under section 46. 
(2) The registered proprietor of a trade mark may apply for 
the registration thereof in respect of any goods or services as 
a defensive trade mark notwithstanding that it is already 
registered in his name in respect of the goods or services otherwise 
than as a defensive trade mark, or may apply for the registration 
thereof in respect of any goods or services otherwise than as 
a defensive trade mark notwithstanding that it is already 
registered in his name in respect of the goods or services as a 
defensive trade mark, in lieu in each case of the existing reg­
istration. TP/NllIMYS/T/3 
Page 53 
58. Defensive trade mark deemed to be associated trade 
mark. 
A trade mark registered as a defensive trade mark and that 
trade mark as otherwise registered in the name of the same 
proprietor shall notwithstanding that the respective registrations 
are in respect of different goods or services be deemed to be, 
and shall be registered as, associated trade marks. 
59. Rectification of Register. 
The Registrar may at any time cancel the registration of a 
defensive trade mark of which there is no longer any registration 
in the name of the same proprietor otherwise than as a defensive 
trade mark. 
60. Application of Act. 
Subject to this Part, this Act applies in relation to the reg­
istration of a trade mark as a defensive trade mark and 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 XIII 
LEGAL PROCEEDINGS, COST AND EVIDENCE 
61. Certificate of validity. 
In any legal proceedings in which the validity of a registered 
trade mark comes into question and is decided 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 obtaining 
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 proceedings the Court certifies that he ought not 
to have them. IP/N/1/MYS/T/3 
Page 54 
62, Hearing of Registrar. 
(1) In any legal proceedings in which the relief sought includes 
alteration or rectification of the Register, the Registrar shall have 
the right to appear and be heard, and shall appear if so directed 
by the Court. 
(2) Unless otherwise directed by the Court, the Registrar, in 
lieu of appearing and being heard, may submit to the Court a 
statement in writing signed by him, giving particulars of the 
proceedings before 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. Costs. 
(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 reasonable 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. 
(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. Mode of giving evidence. 
(1) In all proceedings before the Registrar under this Act, the 
evide nce shall be given by statutory declaration in the absence 
of directions to the contrary, but, in any case in v.rhich 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 appeal, IP/NII IMYS/TJ3 
Page 55 
be used before the Court in lieu of evidence by affidavit, but 
if so used, shall have an the incidents and consequences of 
evidence by affidavit. 
(3) In any action or proceedings relating to a trade mark or [Subs. Act 
trade name, the Registrar or the Court, as the case may be, shall A88l] 
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. 
65. Sealed copies to be evidence. 
(1) Printed or written copies or extracts of or from the Register 
purporting to be certified by the Registrar and sealed with his 
seal shall be admissible as evidence in any proceedings before 
any court of law without further proof or production of the 
originals. 
(2) A certificate purporting to be underthe hand of the Registrar 
as to any act which he is authorised under this Act to perform 
and which he has or has not 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. Minister may declare documents of foreign state pertain~ [Am. Aa 
ing to trade marks to be admissible. A881} 
(1) The Yang di-Pertuan Agong may by order published in 
the Gazette declare any documents or class of documents of a 
foreign state to be admissible as evidence in any proceedings 
before a Court if-
(a) the document is sealed with the seal of the authorised 
officer or the government of the foreign state and the 
seal pertains to the trade marks registered in or other­
wise 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 
Cb) the foreign state or part thereof has entered into recip­
rocal arrangements with the Government of Malaysia 
in respect of the admissibility of the documents. LP IN! I IMYS/T 13 
Page 56 
(2) For the purpose of this section-
"authorised officer" means a person or authority authorised 
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 
Cb) 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; 
"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 or 
services for the purpose of indicating or so as to indicate a 
connection in the course of trade between the goods or services 
and a person having the right either as proprietor or as registered 
user to use the trade mark (in the foreign state) whether 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 confer 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 admissibility of evidence in any 
proceedings before a Court of the documents of the foreign state. 
67. Discretionary power. 
In any appeal from the decision of the Registrar under this 
Act the Court shall have and exercise the same discretionary 
powers as are conferred upon the Registrar under this Act. IP/N/lIMYS/T/3 
Page 57 
68. (Deleted). 
69. Appeal from Registrar. 
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 ap­
plications under section 45), shall have power to review any 
decision of the Registrar relating to the entry in question or the 
conection sought to be made. 
PART XIV 
CONVENTIONS AND INTERNATIONAL 
ARRANGEMENTS 
70. Right of priority under Convention, etc. 
(1) Where any person has applied for protection of any trade 
mark in a Convention country or prescribed foreign country, such 
person or his legal representative or assignee, after furnishing 
a declaration within the prescribed time indicating the date of 
the application and the country in 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: 
Ca) 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 refened to herein shall be reckoned from the 
date on which the earlier or earliest of those applications 
is made; 
Cb) 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 [ActA881] 
[Am. Act 
A88]] 
[Subs. Act 
A88}} rPiNIlIMYS/T/3 
Page 58 
[Ins. Act 
A881] (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 appli­
cation 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 use of 
the trade mark by some other person 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 case may be, in 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. 
70A. Temporary protection of trade marks in respect of 
goods or services which are the subject matters of in­
ternational exhibitions. 
(1) Notwithstanding anything in this Act. temporary protec­
tion shall be granted to a trade mark in respect of goods or services 
which are the subject matters of an exhibition at an official or 
officially recognised international exhibition held in Malaysia 
or in any Convention country or prescribed foreign country. IP/N/l/MYS/T/3 
Page 59 
(2) The temporary protection granted under subsection 0) 
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 offi­
cially recognised international exhibition shall be by a certificate 
issued by the competent authorities of the exhibition. 
70B. Protection of wen-known trade marks. 
(1) The proprietor of a trade mark which is entitled to pro­
tection under the Paris Convention or the TRIPS Agreement 
as a well-known trade mark is entitled to restrain by injunction 
the use in Malaysia in the course of trade and without the pro­
prietor's consent of the trade mark which, or the essential part 
of which, is identical with or nearly resembles the proprietor's 
mark, in respect of the same goods or services, where the use 
is likely to deceive or cause confusion. 
(2) Nothing in subsection (l) shall affect the continuation of 
any bona fide use of a trade mark begun before the commence­
ment of this Act. 
(3) In this section, references to a trade mark which is entitled 
to protection under Article 6bis of the Paris Convention or Article 
16 of the TRIPS Agreement as a well-known trade mark are to 
a mark which is well-known in Malaysia as being the mark of 
a person whether or not that person carries on business, or has 
any goodwill, in Malaysia, and references to the proprietor of 
such a mark shall be construed accordingly. [Ins. Act 
AI078] lP/Nil IMYS/T/3 
Page 60 
[Ins. Act 
AJ07Sj 
[Ins. Act 
AJ07S] 70c. Interpretation. PART XIVA 
BORDER MEASURES 
In this Part, unless the context otherwise requires­
"authorised officer" means-
(a) a proper officer of customs as defined under the Customs 
Act 1967; or 
Cb) any officer appointed by the Minister by notification 
in the Gazette to exercise the powers and perform the 
duties conferred and imposed on an authorised officer 
by this Part; 
"counterfeit trade mark goods" means any goods, including 
packaging, bearing without authorisation a trade mark which 
is identical with or so nearly resembles the trade mark validly 
registered in respect of such goods, or whi.ch cannot be dis­
tinguished in its essential aspects from such a trade mark, and 
which infringes the rights of the proprietor of the trade mark 
under this Act; 
"goods in transit" means goods imported, whether or not 
landed or transshipped within Malaysia, which are to be can-ied 
to another country either by the same or another conveyance; 
"import" means to bring or cause to be brought into Malaysia 
by whatever means; 
"retention period", in relation to seized goods, means­
(a) the period specified in a notice given under section 70G 
in respect of the goods; or 
(b) if the period has been extended under section 70G, that 
period so extended; 
"security" means any sum of money in cash; 
"seized goods" means goods seized under section 70D. 
70D. Restriction on importation of counterfeit trade mark f 111s. An 
goods. Al07S] 
(1) Any person may submit an application to the Registrar 
stating-
(a) that he is the proprietor of a registered trade mark or 
an agent of the proprietor having the power to submit 
such application; [Ins. Act 
A1078] IPIN/I/MYS/T/3 
Page 61 
Cb) that, at a time and place specified in the application, 
goods which, in relation to the registered trade mark, 
are counterfeit trade mark goods are expected to be 
imported for the purpose of trade; and 
Cc) that he objects to such importation. 
(2) An application under subsection Cl) shall be supported 
by such documents and information relating to the goods as to 
enable them to be identified by the authorised officer, and 
accompanied by such fee as may be prescribed. 
(3) Upon receipt of the application under subsection (1), the 
Registrar shall determine the application, and the Registrar 
shall within a reasonable period inform the applicant whether 
the applicant has been approved. 
(4) In determining the reasonable period under subsection (3), 
the Registrar shall take into consideration all relevant circum­
stances of the case. 
(5) An approval under subsection (3) shall remain in force 
until the end of the period of sixty days commencing on the day 
on which the approval was given, unless it is withdrawn before 
the end of that period by the applicant by giving a notice in writing 
to the Registrar. 
(6) Where an approval has been given under this section and 
has not lapsed or been withdrawn, the importation of any coun­
terfeit trade mark goods into Malaysia for the duration of the 
period specified in the approval shall be prohibited. 
(7) Upon giving his approval under subsection (3) the Registrar 
shall immediately take the necessary measures to notify the 
authorised officer. 
(8) Where an authorised officer has been notified by the 
Registrar, he shall take the necessary action to prohibit any person 
from importing goods identified in the notice, not being goods 
in transit, and shall seize and detain the identified goods. 
70Eo Securityo 
The Registrar shall, upon giving his approval under section 
70D, require the applicant to deposit \vith the Registrar a security 
which in the opinion of the Registrar is sufficient to-
(a) reimburse the Government for any liability or expense 
it is likely to incur as a result of the seizure of the (loods' D , 
(b) prevent abuse and to protect the importer; or 
(c) pay such compensation as may be ordered by the Court 
under this Part. IP/N/1/MYS/T/3 
Page 62 
[Ins. Act 
A1078] 
[Ins. Act 
A 1078] 70F. Secure storage of seized goods. 
(1) Seized goods shall be taken to such secure place as the 
Registrar may direct or as the authorised officer deems fit. 
(2) If it is stored on the direction of the authorised officer, 
the authorised officer shall inform the Registrar of the where­
abouts of the seized goods. 
70G. Notice. 
(1) As soon as is reasonably practicable after goods are 
seized under section 70D, the authorised officer shall give to the 
Registrar, importer and the applicant, either personally or by 
registered post, a written notice identifying the goods, stating 
that they have been seized and the whereabout of the goods. 
(2) A notice under subsection (1) shall also state that the goods 
will be released to the importer unless an action for infringement 
in respect of the goods is instituted by the applicant within a 
specified period from the date of the notice. 
(3) If at the time of the receipt of the notice an action for 
infringement has been instituted by the applicant, the applicant 
shall notify the Registrar of that fact. 
(4) The applicant may, by written notice given to the Registrar 
before the end of the period specified in the notice (the initial 
period), request that the period be extended. 
(5) Subject to subsection (6), if-
(a) a request is made in accordance with subsection (4); and 
Cb) the Registrar is satisfied that it is reasonable that the 
request be granted, 
the Registrar may extend the initial period. 
(6) A decision on a request made in accordance with subsection 
(4) shall be made within two working days after the request is 
made, but such a decision cannot be made after the end of the 
initial period to which the request relates. 
70Ho Inspection, releasc9 etc., of seized goods. 
(1) The Registrar may permit the applicant or the importer 
to inspect the seized goods if he agrees to give the requisite 
undertakings. 
(2) The requisite undertakings mentioned subsection (1) are 
undertakings in writing that the person giving the undertakings 
will-[Ills. Act 
AI078] [1110'. Act 
A 1078/ 
[Ins. Act 
AlO78} TP/N/J/MYS/T/3 
Page 63 
Ca) return the sample of the seized goods to the Registrar 
at a specified time that is satisfactory to the Registrar; 
and 
Cb) take reasonable care to prevent damage to the sample. 
(3) If the applicant gives the requisite undertakings, the Regis­
trar may permit the applicant to remove a sample of the seized 
goods from the custody of the Registrar for inspection by the 
applicant. 
(4) If the importer gives the requisite undertakings, the Regis­
trar may permit the importer to remove a sample of the seized 
goods from the custody of the Registrar for inspection by the 
importer. 
(5) If the Registrar permits inspection of the seized goods, 
or the removal of a sample of the seized goods. by the applicant 
in accordance with this section, the Registrar is not liable to the 
importer for any loss or damage suffered by the importer arising 
out of-
(a) damage to any of the seized goods incLlrred during that 
inspection; or 
Cb) anything done by the applicant or any other person to, 
or in relation to, a sample removed from the custody 
of the Registrar or any use made by the applicant or 
any other person of such a sample. 
70I. Forfeiture of seized goods by consent. 
(1) Subject to subsection (2), the importer may, by written 
notice to the Registrar, consent to the seized goods being for­
feited to the Government. 
(2) The notice shall be given before any action for infringe­
ment in relation to the seized goods is instituted. 
(3) If the importer gi ves sLlch a notice, the seized goods 
are forfeited to the Government and shall be disposed of in the 
manner prescribed by regulations made under this Part. 
70J. Compulsory release of seized goods to importer. 
(1) The Registrar shall release the seized goods to the importer 
on the expiration of the retention period for the goods if the 
applicant-
(a) has not instituted an action for infringement in relation 
to the goods; and 
(b) has not given written notice to the Registrar stating that 
the action for infringement has been instituted. WIN/] 
Page 64 
(2) If-
Ca) an action for infringement has been instituted in relation 
to the seized goods; and 
(b) at the end of a period of thirty days commencing on 
the day on which the action for infringement was in­
stituted, there is not in force an order of the Court in 
which the action was instituted preventing the release 
of the goods, 
the Registrar shaH release the goods to the importer. 
(3) If the applicant gives written notice to the Registrar stating 
that he consents to the release of the seized goods, the Registrar 
shall release the goods to the importer. 
70K. Compensation for failure to take action. 
(1) Where goods have been seized pursuant to a notice given 
under section 70D and the applicant fails to take action for 
infringement within the retention period, a person aggrieved by 
such seizure may apply to the Court for an order of compensation 
against the applicant. 
(2) Where the Court is satisfied that the person aggrieved had 
suffered loss or damage as a result of the seizure of the goods, 
the Court may order the applicant to pay compensation in such 
amount as the Court thinks fit to the aggrieved person. 
70L. Actions for infringement of registered trade mark. 
(1) If an action for infringement has been instituted by the 
applicant, the Court may in addition to any relief that may be 
granted-
Ca) order that the seized goods be released to the importer 
subject to such conditions, if any, as the Court thinks 
fit; 
(b) order that the seized goods be not released to the importer 
before the end of a specified period; or 
Cc) order that the seized goods be forfeited to the Govern­
ment, 
depending on the circumstances of the case. 
(2) The Registrar or the authorised officer is entitled to be 
heard on the hearing of an action for infringement. [Ins. Act 
A1078J 
[Ins. Act 
A1078J [Ins. Act 
A1078J 
[Ins. Act 
A1078J 
[Ins. Act 
A1078j r PINIl/MYS/T/3 
65 
(3) A Court may not make an order under paragraph (l)(a) 
if it is satisfied that the Government or any statutory authority 
is required or permitted under any other law to retain control 
of the seized goods. 
(4) The Registrar shall comply with an order made under 
subsection Cl). 
(5) If-
(a) the action is dismissed or discontinued, or if the Court 
decides that the relevant registered trade mark was not 
infringed by the importation of the seized goods; and 
Cb) a defendant to the action for infringement satisfies the 
Court that he has suffered loss or damage as a result 
of the seizure of the goods, 
the Court may order the applicant to pay compensation in such 
amount as the Court thinks fit to that defendant. 
70M.Disposal of seized goods ordered to be forfeited. 
If the Court orders that seized goods are to be forfeited to 
the Government, the goods shall be disposed of in the manner 
as directed by the Court. 
70N. Insufficient security. 
(1) If the reasonable expenses incurred by the Registrar in 
relation to any action taken by the Registrar under this Part, or 
taken in accordance with an order of Court under this Part, exceed 
the amount of security deposited under section 70E, the amount 
of the excess is a debt due to the Government. 
(2) The debt created by subsection (1) is due by the applicant, 
or, if there are two or more applicants, by the applicants jointly 
and severally. 
700. EXQofficio action. 
(1) Any authorised officer may detain or suspend the release 
of goods which, based on prima facie evidence that he has 
acquired, are counterfeit trade mark goods. IPfN/l/MYS/Tl3 
Page 66 
(2) Where such goods have been detained, the authorised 
officer-
(a) shall inform the Registrar, the importer and the propri­
etor of the trade mark; and 
(b) may at any time seek from the proprietor of the trade 
mark any information that may assist him to exercise 
his powers. 
(3) Subject to section 70J, an importer may lodge an appeal 
against the detention of goods or suspension of the release of 
goods under subsection (1). 
(4) The authorised officer shall only be exempted from liabi­
lity if his actions under subsection (1) are done in good faith. 
70r. Regulations relating to border measures. [Ins. Act 
AI07B] 
(1) The Minister may make such regulations as may be neces-
sary or expedient for the purpose of this Part. 
(2) Without prejudice to the generality of subsection (1), 
regulations may be made for-
(a) prescribing and imposing fees and providing for the 
manner for collecting such fees; 
Cb) prescribing forms and notices; 
Cc) providing for the manner for depositing security; 
Cd) prescribing anything required to be prescribed under 
this Part. 
PART XV 
MISCELLANEOUS 
71. Use of trade mark for export trade. 
(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 which if done in relation to goods to 
be sold or otherwise traded in in Malaysia would constitute use 
of a trade mark in Malaysia shall for the purpose of this Act 
be deemed to constitute use of the trade mark in relation to those 
goods. [Am. Act 
A I078j 
[Am. Act 
AI078] IP/N/l/MYS/T/3 
Page 67 
(2) Subsection (1) shall be deemed to have had effect in 
relation to an act done before the date of the commencement 
of this Act as it has effect in relation to an act done after that 
date, but does not affect a determination of a Court which has 
been made before that date or the determination of an appeal 
from a determination so made. 
72. Use of trade mark where form of trade changes. 
The use of a registered trade mark in relation to goods or 
services where a form of connection in the course of trade subsists 
between the goods and the person using the trade mark shall 
not be deemed to be likely to cause deception or confusion only 
on the ground that the trade mark has been or is used in relation 
to goods or services where a different form of connection in the 
course oftrade subsisted or subsists between the goods or services 
and that person or a predecessor in title of that person. 
73. Preliminary advice by Registrar. 
(1) The power to give to a person who proposes to apply 
for the registration of a trade mark in the Register advice as 
to whether the trade mark appears to the Registrar prima facie 
to be capable of distinguishing shall be a function of the Regis­
trar under 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 application for the registration of a trade mark 
is made within three months after the Registrar has given advice 
in the affirmative and the Registrar, after further investigation 
or consideration, gives notice to the applicant of objection on 
the ground that the trade mark is not capable of distinguishing 
the applicant shall be entitled, on giving notice of withdrawal 
of the application within the prescribed period, to have any fee 
paid on the filing of the application repaid to him. 
74, Powers of Registrar to amend document. 
(1) The Registrar may on such terms as to costs as he thinks 
just whether for the purpose of correcting a clerical error or an 
obvious mistake, permit the correction of an application for the 
registration of a trade mark or notice of opposition or other 
document submitted at any trade marks office. JPIN/I/MYS/T/3 
Page 68 
[Subs. Act 
A88!} (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. 
75. Other powers of Registrar. 
(1) 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) award costs as against a party to proceedings before [Am. Act 
h· A88]] lm. 
(2) Any person who without any lawful excuse fails to 
comply with any summons, order or direction made by the 
Registrar under paragraphs Ca), (b) and (c) of subsection (1) is 
deemed to have committed an offence and is liable, on convic­
tion, 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. 
76. Exercise of discretionary power. 
Where any discretionary power is given to the Registrar by 
this Act or by any regulations made thereunder, he shall not 
exercise that power adversely to the applicant for registration 
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. 
77. Extension of time. 
(1) Where by this Act or any regulations made thereunder, 
a time is specified within which an act or thino-is to be done I;;> , 
the Registrar may, unless otherwise expressly provided or di-
rected by the Court, upon application in the prescribed manner, 
extend the time either before or after its expiration upon payment 
of the prescribed fee. 
(2) Subsection 0) 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. [Am. Act 
AS8! ] 
[Subs. Act 
A881] IPlN/I/MYS/T/3 
Page 69 
78. Extension of time by reason of error in trade marks 
office etc. 
(1) Where by reason of-
(a) circumstances beyond the control of the person con­
cerned; or 
(b) an error or action on the part of the Central Trade Marks 
Office or any 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 proceedings 
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. Address for service. 
(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 Regis­
trar may refuse to proceed with the application. 
(2) An address for service stated in the application or a 
notice of opposition shall, for the purposes of the application 
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 0), 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. fP/N/1/MYS/T/3 
Page 70 
80. Agent. 
(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. 
(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 carries on business or practice principally in 
Malaysia. 
81. Falsely representing a trade mark as registered. 
(1) A person who makes a representation-
Ca) with respect to a mark, not being a registered trade 
mark, to the effect that it is a registered trade mark; 
(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 or services 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 cir­
cumstances in which, having regard to conditions or 
limitations entered on the Register, the registration does 
not give that right, 
is guilty of an offence and is liable, on conviction, to a fine not 
exceeding five hundred ringgit or to a term of imprisonment 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-[Subs. Act 
A88] ] lP/Nil IMYS/T/3 
Page 71 
(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 
Cc) 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 or services to be 
exported to that country. 
82. Unregistered trade ma.rks. 
(1) No person shall be entitled to initiate any action to 
prevent or to recover damages for the infringement of an un­
registered 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 or services as those of another person or the 
remedies in respect thereof. 
83. Regulations. 
(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: 
Ca) to regulate the practice (other than that relating to 
proceedings before the Court or connected therewith) 
under this Act including service of documents; 
(b) to classify goods or services for the purpose of regis­
tration 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 to be paid in respect of any matter [Subs. Act 
or thing required for the purposes of this Act; ASSl} IP/N/l/MYS/T/3 
Page 72 
(ea) to provide for the registration and qualifications of [Ills. Act 
A88lj agents; 
if) to regulate generally on matters pertaining to the busi­
ness 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) (Deleted). 
(4) Subject to the provisions of this Act, the Rules Commi-[Act A881] 
ttee constituted under the Courts of Judicature Act 1964, may 
make rules of court regulating the practice and procedure in 
relation to proceedings before the Court or connected there­
with and the costs of the proceedings. 
84. Repeal and saving. 
(1) The Trade Marks Ordinance 1950, the Trade Marks 
Ordinance of Sabah and the Trade Marks Ordinance of Sarawak 
are hereby repealed. 
(2) Notwithstanding the repeal of the Ordinances specified 
in subsection (1): 
(a) any subsidiary legislation made under any ofthe repealed 
laws shall insofar as such subsidiary legislation is not 
inconsistent with the provisions of this Act continue in 
force and have effect as if it had been made under this 
Act and may be repealed, extended, varied or amended 
accordingly; 
(b) any appointment made under the repealed laws or 
subsidiary legislation made thereunder shall continue 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, conditions 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 
provisions of this Act relating thereto. TRADE l\!!ARKS REGULATIONS 1997 IPlN/1/MYS/T/J 
Page 73 IPINIlIMYS!T/3 
Page 74 
TRADE MARKS REGULATIONS 1997 
ARRANGEMENT OF REGULATIONS 
PART I 
PRELIMINARY 
Regulation 
1. Citation and commencement. 
2. Interpretation. 
3. Fees. 
4. Forms. 
5. Classification. 
PART H 
DOCUMENTS 
6. Size, etc. of documents. 
7. Signature of documents. 
8. Service of documents. 
9. Address. 
10. Address for service. 
PART In 
AGENTS 
11. Agency. 
12. Registration of agents. 
PART IV 
REGISTRABLE TRADE MARKS 
13. Marks subject to statutory restriction. 
14. Royal arms, ete. 
15. Arms of city, etc. Regulation 
16. Goods or services described on a mark. 
17. Preliminary advice. 
PART V 
APPLICATION FOR REGISTRATION 
18. Form of application. 
19. Representation of mark. 
20. Representations to be satisfactory. 
21. Cases of difficulty. 
22. Series of trade marks. 
23. Transliteration and translation. 
24. Amendment of application. 
PART VI 
PROCEDURE ON RECEIPT OF AN APPLICATION 
FOR REGISTRATION OF TRADE MARK 
25. Search. 
26. Registrar's acceptance. 
27. Registrar's objection. 
28. Conditional acceptance. 
29. Decision of Registrar. 
PART VU 
CERTIFICATION TRADE MARK 
30. Application for registration of certification trade mark. 
31. Case and draft rules. 
PART vm 
DEFENSIVE TRADE MARK 
32. Application for registration of defei'isive trade mark. IPINIlIMYS/T/3 
Page 75 IP/N/J/MYS/T/3 
Page 76 
PART IX 
ADVERTISEMENT OF APPUCA nON 
Regulation 
33. Application for registration. 
34. Representation for advertisement. 
35. Advertisement of series of trade marks. 
36. Advertisement in other cases. 
PART X 
OPPOSITION TO REGISTRATION 
37. Opposition. 
38. Contents of notice. 
39. Counter-statement. 
40. Evidence in support of opposition. 
41. Evidence in support of application. 
42. Evidence in reply. 
43. Further evidence. 
44. Exhibits. 
45. Extension of time. 
46. Written submission. 
47. Registrar's decision. 
48. Security for costs. 
49. Costs in uncontested cases. 
50. Opposition to a certification trade mark. 
51. Opposition to alteration of rules of a registered certification 
trade mark. 
PART XI 
REGISTRATION AND RENEWAL 
52. Entry in the Register. 
53. Registration not completed within twelve months. 
54. Associated marks. 
55. Death of applicant before registration. 
56. Certificate of registration. 
S7. Renewal of registration. Regulation 
58. Reminder of renewal. 
59. Late renewaL 
60. Removal and restoration. 
61. Record of removal. 
62. Notice and advertisement of renewal and restoration. 
PART XII 
ASSIGNMENTS AND TRANSMISSIONS 
63. Application for entry of subsequent proprietor. 
64. Particulars to be providyd. 
65. Proof of title. 
66. Assignment without goodwill. 
67. Entry of assignment in Register. 
68. Partial assignment. 
69. Proposed assignment or transmission. 
PART XIII 
ALTERATION OF THE REGISTER 
70. Alteration of address. IP/N/1/MYS!TIJ 
Page 77 
71. Application for making, cancelling or varying an entry by 
a rtgistered proprietor or registered user. 
72. Evidence for alteration. 
73. Advertisement in certain cases. 
74. Application to the court. 
75. Order of court. 
76. Certificate of validity. 
77. Alteration of registered mark. 
78. Advertisement before decision. 
79. Advertisement of altered mark. IP/NIl/MYS/T/3 
Page 78 
PART XIV 
REGISTERE!) USER 
Regulation 
80. Application for entry of registered user. 
IH. Entry of registered user. 
82. Variation or cancellation of entry of registered User. 
83. Expiry or striking out. 
SUPPLEMENTARY 
84. Extension of time. 
8S. E%duded days. 
86. Application for hearing. 
81. Power to dispense wiah evidence. 
88. Amendment of documents. 
89. Certificate by Registrar. 
90. Statutory declarations. 
REVOCATION AN!) TRANsmONAL PROVISIONS 
91. Revocation. 
92. Saving. 
FiRST SCHEDULE 
SECOND SCHEDULE 
THIRD ScHEDULE TRADE MARKS REGULATIONS 1997* IPINIl/TvIYS/T/3 
Page 79 
IN exercise of the powers conferred by section 83 of the Trade Marks 
Act 1976, the Minister makes the following regulations: 
PART I 
PRELIMINARY 
1. Citation and commencement. 
These regulations may be cited as the Trade Marks Regulations 
1991 and shall come into force on 1 December 1997. 
2. Interpretation. 
In these Regulations, unless the context otherwise requires-
"agent" means an agent duly authorised to the satisfaction of the 
Registrar; 
"Office" means the Central Trade Marks Office or any other trade 
marks office established under section 5 of the Act. 
3. Fees. 
The fees to be paid in pursuance of the Act and these Regulations 
shaH be as specified in the First Schedule. 
4. Forms. 
(1) The forms referred to in these Regulations are those contained 
in the Second Schedule. 
(2) The forms shaH be used in aB cases in which they are applicable. 
5. Classification. 
For the purposes of the registration of trade marks and of the 
registration of registered users, goods and services are classified in 
the manner prescribed in the Third Schedule. 
6. Size, etc. of documents. PART n 
DOCUMENTS 
Subject to any other directions that may be given by the Registrar. 
all applications, notices, counter-statements, papers having 
representation affixed, and other documents required by the Act or 
by these Regulations to be left with or sent to the Registrar shall 
be in ISO A4 size which shaH have on the left hand part thereof a 
margin of not less than four centimetres. 
*Published as P.U. (A) 460197. fP/N/llMYS/T/3 
Page 80 
1. Signature of documents. 
(1) Subject to subregulation 10(3) and regulation 11 documents 
and forms filed at the Office and which require a signature shaH be 
signed-
(a) in the case of an individual, by that person; 
(b) in the case of a partnership, by an the partners, or by the 
principal acting partner stating that he signs on behalf of 
aB the partners; 
(c) in the case of an association of persons other than a 
partnership, by the secretary or by any other person who 
satisfies the Registrar that he is authorised to sign on 
behalf of the association; 
(d) in the case of a body corporate, by the secretary, or by a 
director or by any authorised signatory. 
(2) A document filed on behalf of a partnership shall contain the 
names of all the partners in full and in default the Registrar may 
require the deficiency to be rectified and may decline to take any 
further step in the matter to which the document in question relates 
until the deficiency has been rectified to his satisfaction. 
8. Service of documents. 
(1) All applications, notices, statements, papers having 
representations affixed, and other documents authorised or required 
by the Act or these Regulations to be made, left or sent, at or to the 
Office, may be sent by post. 
(2) Any application or any document so sent shall be deemed to 
have been received at the time when it is received at the Office. 
9. Address. 
Where any person is, by the Act or these Regulations, bound to 
furnish the Registrar with an address, the address given shall in all 
cases be as full as possible for the purpose of enabling the place of 
trade or business of such person to be found easily. 
10. Address for service. 
(1) An applicant, opponent, registered proprietor or registered 
user of a trade mark who does not reside or carry on business in 
Malaysia shall file Form TMl giving an address for service in 
Malaysia and such address may be treated as the actual address of 
the person for aU purposes connected with the matter in question. 
(2) Any other applkant, opponent, registered proprietor or registered 
user of a trade mark may, if he so desires; file Form TM 1 giving 
an address for service in Malaysia. IP/N/I/MYS/T/3 
Page 81 
(3) Subject to regulation 7, Form TM 1 filed under these Regulations 
may be signed by an authorised agent and in any case in which the 
Registrar so requires shaH obe signed by the applicant, o.pponent, 
registered proprietor or registered user, as the case may be .. 
(4) In any case in which no address for service is filed at the 
Office, the Registrar may treat the business address in Malaysia, if 
any. of the person concerned as his address for service for an purposes 
connected with the matter in question. 
(5) Any written communication addressed to a person at an address 
given by him or treated by the Registrar as his address for service 
shall be deemed to be properly addressed. 
(6) The Registrar may, at any time that a doubt arises as to the 
continued availability of an address-for service entered in the Register, 
request the person for whom it is entered, by letter addressed to his 
business address in the Register, to confirm the address for service 
or to provide another by filing Form TM 1, and if within two months 
of making such a request the Registrar receives no confirmation or 
substitution of that address, he may strike the address off the Register. 
11. Agency. Pf.RT HI 
AGENTS 
(1) Except as otherwise required by the Act or these Regulations-
(a) any application, request or notice which is required or 
permitted to be made or given to the Registrar; 
( b) all other communications between an applicant or a person 
making such request or giving such a notice and the Registrar; 
and 
(c) all other communications between the registered proprietor 
or the registered user of a trade mark and the Registrar or 
any other person, 
may be signed; made or given by or through an agent and the 
Registrar may-
(aa) in any particular case, require the personal signature or 
presence of the applicant, opponent, registered proprietor, 
registered user or other person; 
(bb) by notice in writing sent to an agent, require him to produce 
evidence of his authority. 
(2) Where a party to proceedings before tl1e Registrar appoints 
an agent for the first time or appoints one agent in substitution for 
another, the agent appointed shaH file Form TM 1 with the Registrar 
on or before the first occasion on which he acts as an agent for that 
party in the proceedings. IPIN!l/MYS/T/3 
Page 82 
(3) No person may appoint more than one agent to act for him 
concurrently in respect of the same mark. whether in respect of the 
same or different transactions; and where more than one agent is on 
record, the Registrar shall recognise only the latest agent duly appointed. 
(4) The Registrar shaH decline to recognise as an agent any 
person who is not currently on the Register of Trade Marks Agents 
of Malaysia compiled and maintained under regulation 12. 
12. Registration of agents. 
(1) The Registrar shall maintain a Register of Trade Marks 
Agents. 
(2) An application to be registered as a trade marks agent shall 
be made to the Registrar on Form TM 2 accompanied with payment 
of the prescribed fee. 
(3) In order to be registered in the Register of Trade Marks 
Agents, the applicant shall satisfy the Registrar that he is either 
domiciled or resident in Malaysia or has a principal place of business 
in Malaysia, and-
(a) is on the Register of Patents Agents maintained in pursuance 
of regulations made under the Patents Act 1983; or 
( b) is an advocate and solicitor practising solely in Malaysia; 
or 
(c) holds a recognised degree in any field of studies and has 
had at least three years experience in the field of industrial 
property. 
(4) The Registrar shall not register any person who has been 
convicted of any registrable offence or any criminal offence involving 
fraud or dishonesty. 
(5) The Registrar, upon being satisfied that the applicant qualifies 
to be registered in the Register of Trade Marks Agent, shaH register 
the applicant for a term expiring on the 31st December of that year. 
(6) An agent shaH be removed from the Register of Trade Marks 
Agent if he-
(a) is no longer domiciled or resident in Malaysia or no longer 
has a principal place of business in Malaysia; or 
(b) is convicted of a registrable offence or any criminal offence 
involving fraud or dishonesty; or 
( c) is an undischarged bankrupt; or 
(d) has been struck off and not restored to the Register of 
Patents Agents or the RoU of Advocates and Solicitors or 
is suspended for the time being from that Register or that 
Roll. IP/N/l/MYS/T/3 
Page 83 
(7) An application for the renewal of registration as a trade mark 
agent shaH be made to the Registrar on Form TM 3 together with 
payment of the prescribed fee by 31 January of each year. 
(8) The Registrar, shaH upon being satisfied that the conditions 
specified in subregulations (3) and (4) continue to be satisfied, 
renew the registration of the trade marks agent for a term expiring 
on 31 December of that year. 
PART IV 
REGISTRABLE TRADE MARKS 
13. Marks subject to statutory restriction. 
(1). The Registrar shall refuse to accept any application for the 
registration of a mark upon which any of the following appears: 
(a) the words "To counterfeit this is a forgery", "Registered 
Trade Mark", "Registered Service Mark", or any words to 
the like effect in any language; 
(b) the words "Bunga Raya" and the representations of the 
hibiscus or any colourable imitation thereof; 
(c) representations of or words referring to Seri Paduka Baginda 
Yang di-Pertuan Agong, Ruler of a State or any colourable 
imitation thereof; 
(d) the representations of any of the royal palaces or of any 
building owned by the Federal Government or State 
Government or any other government or any colourable 
imitation thereof; 
(e) the word "ASEAN" and the representation of the ASEAN 
logotype or any colourable imitation thereof; 
(f) the words "Red Crescent" or "Geneva Cross" and 
representations of the Red Crescent, the Geneva Cross and 
other crosses in red, or of the Swiss Federal Cross in white 
or silver on a red ground, or such representations in a 
similar colour or colours. 
(2) Where there appears in a trade mark, the registration of which 
is applied for, a representation of a crescent or a cross in any colour, 
not being one oHhose mentioned in paragraph (1 )(1), the Registrar 
may require the applicant, as a condition of acceptance, to undertake 
not to use the crescent or cross device in red, or in white or sHver 
on a red ground. or in any similar colour or colours. 
14. Royal arms, etc. 
The following devices shall not appear on a trade mark the 
registration of which is applied for: 
(a) representations of. or mottoes of or words referring to, the 
royal or imperial rums, crest, rumorial bearings or insignia 
or devices so nearly resembling any of them as to be likely 
to be mistaken for them; IP/N/l/MYS/T/3 
Page 84 
(b) representations of, or mottoes of or words referring to, the 
royal or imperial crowns, or of the royal, imperial or national 
flags; 
( c) representations of, or mottoes of or words referring to, the 
crests, armorial bearings or insignia of the Malaysian Army, 
Royal Malaysian Navy, Royal Malaysian Air Force and of 
the Royal Malaysia Police, or devices so nearly resembling 
any of the foregoing as to be likely to be mistaken for 
them. 
15. Arms of dty, etc. 
Where a representation of the name, initials, armorial bearings, 
insignia, orders of chivalry, decorations or flags of any international 
organisation, state, city, borough, town, place, society, body corporate, 
institution or person appears on a mark, the Registrar shaH consider 
whether to refuse to accept an application for the registration of the 
mark unless the consent of such official or other person as appears 
to the Registrar to be entitled to give consent is filed. 
16. Goods or services described on a mark. 
(1) Where the name or description of any goods appears on a 
trade mark for any goods or the name or description of any service 
appears on a trade mark for any services, the Registrar may refuse 
to register such mark in respect of any goods or services, as the case 
may be, other than the goods or services so named or described. 
(2) Where the name or description of any goods appears on a 
trade mark for any goods or the name or description of any service 
appears on a trade mark for any services and in either case the name 
or description in use varies, the Registrar shall consider whether to 
refuse to permit the registration of the mark for those and other 
goods or services, as the case may be, unless the applicant states in 
his application that the name or description will be varied when the 
mark is used upon goods or services covered by the specification 
other than the named or described goods or services. 
17. Preliminary advice. 
(1) Any person who proposes to apply for the registration of a 
mark in respect of any goods or services may apply to the Registrar 
on Form TM 4 for advice as to whether the mark, of which duplicate 
representations shall accompany the form, appears to the Registrar 
primafacie to be inherently adapted to distinguish within the meaning 
of section 10 or inherently capable of distinguishing within the 
meaning of section 11 in relation to those goods or services. 
(2) Separate applications shaH be made in relation to goods or 
services comprised within different classes in the Third Schedule. I P/NI 1 IMYS/T/3 
Page 85 
(3) For the purpose of obtaining repayment of any fee paid on 
the filing of an application for registration to which the Registrar 
objects, notice of withdrawal of the application under subsection 
73(3) of the Act shall be given in writing within one month from 
the date of roceipt of the notice of the Registrar's objection. 
PART V 
APPLICA nON FOR REGISTRATION 
18. Form of application. 
(1) An application for the registration of a trade mark, certification 
trade mark or defensive trade mark shaH be made on Form TM 5 
accompanied by the prescribed fee and five copies of the application. 
(2) Each application shall be in respect of goods or services in 
only one class in the Third Schedule and applications for the registration 
of the same mark in different classes shall be treated as separate and 
distinct applications. 
(3) In the case of an application for registration in respect of all 
the goods or services included in one class, or of a large variety of 
goods or services, the Registrar may refuse to accept the application 
unless he is satisfied that the specification is justified by the use of 
the mark which the applicant has made, or which he intends to make 
if and when it is registered. 
19. Representation of mark. 
(1) A representation of the trade mark shall be affixed to the 
form of application in the space provided for that purpose but if the 
representation of the mark exceeds that space in size it shall be 
mounted upon durable material and be annexed to the form of 
application. 
(2) The Registrar may, if he considers that a representation of a 
trade mark is mounted on a material which will not in the course 
of time preserve the features of the trade mark, require the applicant 
to furnish a further representation of the trade mark mounted on a 
material specified by the Registrar. 
20. Representations to be satisfactory. 
The representation of a mark shall be dear and durable and if 
he is dissatisfied with any representation the Registrar may at any 
time require another representation satisfactory to him to be substituted 
before proceeding with the application. 
21. Cases of difficulty, 
(1) Where a representation cannot be filed in accordance with 
regulation 19, a specimen or copy of the mark, either of full size 
or on a reduced scale, may, subject to the consent of the Registrar, 
be filed in any convenient form. lP/NI l/MYS/T /3 
Page 86 
(2) Each specimen or copy filed under subregulation 0) shaH be 
retained by the Registrar for inspection by the public, and the Registrar· 
may refer thereto in the Register in such manner as he may think 
fit. 
22. Series of trade marks. 
When application is made for the registration of a series of 
trade marks under section 24 of the Act, a representation of each 
mark of the series shall be affixed to the application form in accordance 
with regulation 19. 
23. Transliteration and translation. 
Cl) Where a trade mark contains a word or words in characters 
other than Roman there shall, unless the Registrar otherwise directs, 
be endorsed on the application form for its registration, a certified 
transliteration and translation of each of such words, and every such 
endorsement shaH state the language to which the words belong. 
(2) Where a certified transliteration and translation accompanies 
the application a sufficient reference to it must be endorsed on the 
form of application. 
(3) Where a trade mark contains a word or words in a language 
other than the national language or English language, the form of 
application shall be endorsed with an exact translation of the word 
or words and the name of the language. 
24. Amendment of application. 
Any request to amend an application for registration, whether 
or not the amendment is made to overcome an objection by the 
Registrar, shall be made on Form TM 26 accompanied by the prescribed 
fee. 
PART VI 
PROCEDURE ON RECEIPT OF AN APPLICA nON FOR 
REGISTRA TION OF TRADE MARK 
25. Search. 
(1) Upon receipt of an application for the registration of a trade 
mark the Registrar shall, for the appropriate purpose specified in 
subregulation (2) or (3), cause a search to be made amongst registered 
marks and pending applications and the Registrar may cause the 
search to be renewed at any time before the acceptance of the 
application, but shall not be bound to do so. 
(2) In the case of an application for the registration of a trade 
mark in respect of any goods, the appropriate purpose mentioned in 
subregulation (1) is that of ascertaining whether, for the same goods, 
for the same description of goods, or for services closely related to 
those goods, there are on record any marks identical with the mark 
applied for, or so nearly resembling it as to render use of the mark 
applied for likely to deceive or cause confusion. {PIN/] IMYS/T/3 
Page 87 
(3) In the case of an application for the registration of a trade 
mark in respect of any services, the appropriate purpose mentioned 
in subregulation (1) is that of ascertaining whether, for the same 
services, for the same description of services, or for goods that are 
closely related to those services, there are on record any marks 
identical with the mark applied for, or so nearly resembling it as to 
render use of the mark applied for likely to deceive or cause confusion. 
26. Registrae s acceptance. 
After a search conducted as provided for in regulation 25, and 
after consideration of the application and of any evidence of use or 
distinctiveness or any other matter which the applicant may, or may 
be required to furnish, the Registrar may accept the application 
absolutely, or he may object to it, or he may express his willingness 
to accept it subject to such conditions, amendments, modifications, 
or limitations as he may think right to impose. 
27. Registrar's objection. 
(1) If the Registrar objects to the application, he shaH inform 
the applicant of his objections in writing, and unless within two 
months from the date of receipt of those objections, the applicant 
makes a considered reply in writing, he shaH be deemed to have 
abandoned his application. 
(2) Any considered reply in writing filed in accordance with 
subregulation (1) may contain proposals, conditions, amendments, 
modifications or limitations designed to overcome the Registrar's 
objections. 
(3) Where, after taking into account any considered reply in 
writing provided in accordance with subregulations (1) and (2). the 
Registrar maintains his objections to the application, he shall so 
inform the applicant and if the applicant does not apply for a hearing 
within two months from the date of receipt of the Registrar's decision 
he shaH be deemed to have abandoned his application. 
28. Conditional acceptance. 
(1) If the Registrar is willing to accept the application subject 
to any condition, amendment, modification or limitation, he shaH 
inform the applicant in writing of such willingness. 
(2) If the applicant does not respond to the information sent in 
accordance with subregulation (1) within two months of its receipt 
he shaH be deemed to have abandoned his application. IPIN/1/MYS/T/3 
Page 88 
(3) If the applicant objects to any condition, amendment, 
modification or limitation contained in the communication sent in 
accordance with subregulation (1) he may submit his considered 
reply In writing within two months of its receipt and if he does not 
do so he shall be deemed to have abandoned his application. 
(4) Where, after taking into account any considered reply in 
writing provided in accordance with subregulation (3), the Registrar 
maintains his objections to the application. he shall so inform the 
applicant and if the applicant does not apply for a hearing within 
two months from the date of receipt of the Registrar's decision he 
shaH be deemed to have abandoned his application. 
29. Decision of Registrar. 
(1) The decision of the Registrar fonowing a hearing as provided 
in subregulation27(3) or 28(4) shaH be communicated to the applicant 
in writing, and if the applicant objects to such decision he may, 
within two months from the date of its receipt, require, on Form TM 
6, the Registrar to state in writing the grounds of, and the materials 
used by him in arriving at, his decision, 
(2) In a case where the Registrar makes any requirements to 
which the applicant does not object, the applicant shall comply with 
the requirements before the Registrar issues the statement setting out 
the grounds of his decision. 
(3) The date when a statement is sent to the applicant under this 
regulation shaH be deemed to be the date of the Registrar's decision 
for the purpose of appeal. 
PART VII 
CERTIFICA TION TRADE MARK 
30. Application for registration of certification trade mark. 
(1) These Regulations shaH apply to an application to register 
a certification trade mark as they apply to an application to register 
an ordinary trade mark, except that for references to acceptance of 
an application there shaH be substituted references to authorisation 
to proceed with the application under regulation 31. 
(2) The address of an applicant to register a certification trade 
mark shaH be deemed to be a business address for an the purpose 
for which such an address is required by these Regulations, 
31. Case and draft rules. 
(1) The applicant for the registration of a certification trade 
mark shall send to the Registrar together with his application and 
the draft rules for governing use of the mark a statement of case 
setting out the grounds on which he'relies in support of his application, I P/N/lIMYS/T/3 
Page 89 
(2) The Registrar may communicate to the applicant any 
observations he may have to make on the sufficiency of the case or 
the suitability of the draft rules and the applicant may modify either 
of those documents. 
(3) The Registrar may at any time, call for such evidence as he 
thinks fit before deciding on the application. 
PART VIII 
DEFENSIVE TRADE MARK 
32. Application for registration of defensive trade mark. 
(1) An application to register a defensive trade mark under 
section 57 of the Act shall be accompanied by a statement of case 
setting out full particulars of the facts on which the applicant relies 
in support of his application, verified by a statutory declaration 
made by the applicant or by some other person approved for the 
purpose by the Registrar. 
(2) The applicant may send with the statutory declaration or 
within such time as the Registrar may allow, such other evidence 
as he may desire, whether after request made by the Registrar or 
otherwise, and the Registrar shall consider the whole of the evidence 
before deciding on the application. 
(3) Subject to subregulations (1) and (2), these Regulations shall, 
except to the extent that they are inappropriate or it is otherwise 
provided, apply to applications to register defensive trade marks as 
they apply to applications to register ordinary trade marks. 
PART IX 
ADVERTISEMENT OF APPLICATION 
33. Application for registration. 
"p (1) Every application for the registration of a trade mark required 
or permitted to be advertised by section 27 of the Act, shall be 
adyertised in the Gazette during such times and in such manner as 
the Registrar may direct and regulation 34 shall apply. 
(2) Before advertising any application in accordance wi.th 
subregulation (1), the Registrar shall notify the applicant and request 
payment of the appropriate fee by way of filing Form TM 29; and 
if the applicant does not pay the fee within two months of receipt 
of the Registrar's request he shall be deemed to have abandoned his 
application. 
(3) In the case of an application which will be proceeded with 
by the Registrar only after the applicant has lodged the written 
jf the registered proprietor of another mark to the proposed 
cm of the applicant's mark, the words "By Consent" shaH 
the advertisement. IP/NIl/MYS/T/3 
Page 90 
34. Representation for advertisement. 
The applicant shall, for the purposes of advertisement, file a 
representation of the mark in a form approved or directed by the 
Registrar or in a manner which he thinks fit and such a representation 
shaH be of such dimensions as the Registrar may require or permit 
for the purpose. 
35. Advertisement of series of trade marks. 
When an application relates to a series of trade marks differing 
from one another in respect of the particulars mentioned in section 
24 of the Act, the Registrar may, if he thinks fit, insert with the 
advertisement of the application a statement of the manner in which 
the marks differ from one another. 
36. Advertisement in order cases. 
Advertisement under subsections 28(9), 44(2) and 44(4) oUhe 
Act shall be made in the same manner, mutatis mutandis, as 
advertisements relating to an application for registration. 
PART X 
OPPOSITION TO REGISTRATION 
37. Opposition. 
Any person. may, within two months from the date of any 
advertisement in the Gazette of an application for registration of a-
(a) trade mark; 
(b) certification trade mark; or 
(e) defensive trade mark, 
give notice in writing to the Registrar on Form TM 7 accompanied 
by the prescribed fee of opposition to the registration, and in any 
such case shaH at the same time send a copy of the notice to the 
applicant. 
38. Contents of notice. 
(1) A notice of opposition shall include a statement of the 
grounds upon which the opponent objects to the registration of the 
applicant's mark. 
(2) If registration is opposed on the ground that the mark resembles 
another mark already on the Register, or the registration of which 
is the subject of a current application, the number and class of that 
other mark and, except in the case of an application not yet advertised, 
the number of the Gazette in which it has been advertised shall be 
set out in the notice. 39. Counter-statement. IP/NIlIMYS/T/3 
Page 91 
(1) Within two months of the receipt of a notice of opposition 
filed in accordance with regulation 38, the applicant may file a 
counter-statement on Form TM 8 setting out the grounds on which 
he relies as supporting his application and the facts, if any, alleged 
in the notice of opposition which he admits, and shaH at the same 
time send a copy of the counter-statement to the opponent 
(2) If no counter-statement is filed in accordance with subregulation 
(1), the application shall be deemed abandoned. 
40. Evidence in support of opposition. 
(1) Within two months of the receipt of the counter-statement, 
the opponent shall file with the Registrar such evidence by way of 
statutory declaration as he desires to adduce in support of his opposition, 
and shaH at the same time send a copy of that evidence to the 
applicant. 
(2) If no evidence is filed in accordance with subregulation (1), 
the opposition shaH be deemed abandoned. 
41. Evidence in support of application. 
(1) Within two months ofthe receipt ofthe opponent's evidence, 
the applicant shall file with the Registrar such evidence by way of 
statutory declaration as he desires to adduce in support of his application 
and shall at the same time send a copy of that evidence to the 
opponent. 
(2) If no evidence is filed in accordance with subregulation (1), 
the application shall be deemed abandoned. 
42. Evidence in reply. 
(1) Within two months from the receipt by the opponent of the 
copies of the applicant's evidence filed in accordance with regulation 
41, the opponent may file evidence in reply by way of statutory 
declaration and shall, at the same time, send a copy of that evidence 
to the applicant. 
(2) Evidence in reply shaH be confined to matters strictly in reply 
to the applicant's evidence. 
43. Further evidence. 
No further evidence may be filed by either side, except that 
in any proceedings before him, the Registrar may at any time if he 
thinks fit give leaw. to either party to file such further evidence upon 
such terms as to costs or otherwise as he may think fit IP/N/I/MYS/T/3 
Page 92 
44, Exhibits. 
(1) Where there are exhibits to any statutory declaration filed 
as evidence in an opposition, the party filing them shall, on the 
request and at the cost of the other party, send to him' a copy or 
impression of each exhibit. 
(2) In an cases, the original exhibits filed with the Registrar shall 
be opened for inspection at the Office by the other side. 
45. Extension of time. 
Where in opposition proceedings any extension of time is 
granted to any party, the Registrar may thereafter, if he thinks fit, 
without giving that party a hearing, grant to the other party. on 
payment by him of the prescribed fee, any reasonable extension of 
time in which to take any subsequent step. 
46. Written submission. 
(1) Upon completion of the evidence the Registrar shall give 
notice to the parties of a date by which they may send to him any 
arguments or submissions in writing. 
(2) The date mentioned in subregulation (1) shall be at least one 
month after the date of receipt by the parties of the notice given by 
the Registrar. 
47. Registrar's decision. . 
As soon as may be after the expiration of the period notified 
in accordance with regulation 46, the Registrar shall consider the 
evidence and any written submissions or arguments and shaH within 
two months communicate to the parties in writing his decision in the 
matter and the grounds of his decision. 
48. Security for costs. 
(1) Where a party giving notice of opposition under regulation 
37 or a counter-statement under regulation 39 neither resides nor 
<::ames on business in Malaysia, the Registrar may require him to 
give security, in such form as the Registrar may deem sufficient, for 
the costs or expenses of the proceedings before him, for such amount 
as the Registrar may deem fit, and at any stage in the opposition 
proceedings he may require further security to be given at any time 
before giving his decision in the case. 
(2) Where an application under subsection 26(1) of the Act is 
subject to opposition, the Registrar may require the applicant to give 
security for the costs of any proceedings in relation to the opposition. 
(3) In default of such security as mentioned in subregulation (1) 
being duly given, the Registrar may treat the application or the 
opposition, as the case may be. as abandoned. 49. Costs in uncontested cases. IP/NIlIMYS/T/3 
Page 93 
In the event of an opposition being uncontested by the applicant, 
the Registrar in deciding whether costs should be awarded to the 
opponent shaH consider whether proceedings might have been avoided 
if reasonable notice had been given by the opponent to the applicant 
before the notice of opposition was lodged. 
50. Opposition to a certification trade mark. 
(1) Within two months from the date of any advertisement in 
the Gazette of an application for the registration of a certification 
trade mark, any person may give notice of opposition to the Registrar 
by filing Form TM 7, accompanied by the prescribed fee, and regulations 
37 to 45, 48 and 49 shaH apply to the proceedings thereon. 
(2) Where the opposition is lodged under subsection 56(12) of 
the Act, regulations 46 and 47 shaH also apply. 
(3) Where the opposition is lodged under subsection 56(13) of 
the Act, subregulations (4), (5) and (6) shaH apply. 
(4) Upon completion of the evidence the Registrar shall give 
notice to the parties of a date by which they may either apply for 
a hearing or send to him any submissions or arguments in writing. 
If the parties desire to be heard they shall file with the Registrar 
Form TM 9 accompanied by the prescribed fee. 
(5) The date mentioned in subregulation (4) shall be at least one 
month after the date of receipt by the parties of the notice given by 
the Registrar. 
(6) As soon as may be after the expiration of the period notified 
in accordance with subregulations (4) and (5), and after hearing the 
parties if that option has been exercised, the Registrar shaH consider 
the evidence and any written or oral submissions or arguments, and 
shall within two months communicate in writing to the parties his 
decision in the matter and the grounds of his decision. 
51. Opposition to alteration of rules of a registered certification trade 
mark. 
(1) Within two months from the date of any advertisement in 
the Gazette under subsection 56(14) of the Act of an alteration to 
the rules deposited in respect of a registered certification trade mark, 
any person may give notice to the Registrar of opposition to the 
proposed alteration by filing Form TM 7 accompanied by the prescribed 
fee. 
(2) The subsequent proceedings shaH be in accordance with 
regulations 37 to 45, 48 and 49 and subregulations 50(4) to 50(6). lP/NI J IMYS/T/3 
Page 94 
PART XI 
REGISTRATION AND RENEWAL 
52. Entry in the Register. 
(1) As soon as may be after the expiration of two months from 
the date of the advertisement in the Gazette of any application for 
the registration of a trade mark, the Registrar shall, subject to any 
opposition and the determination thereof and subject to subsection 
30( 1) of the Act, enter the mark in the Register. 
(2) Except where the mark consists of a letter, letters, word or 
words in plain type, or where the Registrar has retained a specimen 
or copy under subregulation 21 (2), the applicant shaH if required me 
a representation of the mark agreeing in all respects with the 
representation then appearing on the form of application and, subject 
to subregulation 21 (l), complying with regulation 20. 
(3) The entry of a trade mark in the Register shaH give the 
following particulars: 
(a) the date of the registration; 
(b) the goods or services in respect of which it is registered; 
(c) the name and the trade or business of the proprietor, including 
the names of an the partners where the proprietor is a 
partnership; 
Cd) any approved address for service filed under regulation 
10; 
(e) particulars of any undertakings given by the proprietor; 
(f) particulars affecting the scope of the registration or the 
rights conferred by it; and 
(g) any other particulars as the Registrar may determine from 
time to time. 
(4) In the case of an application which the Registrar accepts only 
after the applicant has lodged the written consent to the proposed 
registration of the registered proprietor of another trade mark or 
another applicant for registration, the entry in the Register shall state 
that it is "B y Consent" and shaH give the number of the registration 
of the other trade mark or the other application for registration. 
53. Registration not completed within twelve months. 
(1) Subject to subregulation (2), where a trade mark has not 
been registered after six months from the date of the advertisement 
in the Gazette of the application for registration of the mark, the 
Registrar may give notice in writing to the applicant at his address 
for service of the non-completion, and if after twelve months from 
the date of the advertisement the registration is not completed by 
reason of default on the part of the applicant, the application shall 
lapse and shall be removed from the record. IPlN/l/MYS/T/3 
Page 95 
(2) Where the registration of a trade mark is delayed by an 
opposition to its registration and no appeal to the court is made in 
the matter, the mark may be registered within such time as may be 
directed by the Registrar and if the mark has not been registered 
within that time the application shall lapse and shall be removed 
from the record. 
(3) For the purposes of this regulation the requirements for 
completion are satisfied when the Registrar has received the prescribed 
fee and, where required, the representation referred to in subregulation 
52(2). 
54. Associated marks. 
(1) Where a mark is registered as associated with any other 
mark or marks the Registrar shall note in the Register in connection 
with the first mentioned mark the registration numbers of the marks 
with which it is associated and shall also note in the Register in 
connection with each of the associated marks the number of the first 
mentioned mark as being a mark associated therewith. 
(2) An application by a registered {5roprietor under subsection 
22(2) of the Act requesting the Registrar to dissolve the association 
between two or more registered marks shaH be made by filing Form 
TM 11 accompanied by the prescribed fee and a statement of the 
grounds of the application. 
55. Death of applicant before registration. 
(1) If an applicant for the registration of trade mark dies-
(aJ after his application has been made and before the mark 
has been entered on the Register; and 
Cb J another person proves to the satisfaction of the Registrar 
that he enjoys the same rights in, or in respect of, the mark 
that the applicant enjoyed, 
the application shall, subject to subregulation (2), proceed in that 
other person's name and regulations 52 and 53 shall apply as if that 
other person were the applicant. 
(2) Before a person may be substituted on an application for 
registration under subregulation (1), he shaH file Form TM 26 
accompanied by the prescribed fee and regulation 26 shall apply. 
56. Certificate of registration, 
Upon the registration of a trade mark, the Registrar shaH issue 
to the applicant a certificate of registration on Form TM 10 and shaH 
affix thereto representation of the mark, if any. 
57, Renewal of registration. 
(1) At any time not less than three months before the expiration 
of the last registration of a trade mark, the registered proprietor or 
his authorised agent may submit Form TM 12 together with the 
prescribed fee for the renewal of the mark. IP/N/l/MYS/T/3 
Page 96 
(2) If the person filing Form TM 12 is other than the registered 
proprietor or his authorised agent, he shaH enter on the form his 
name and address and shaH attach a letter 'of authority from the 
registered proprietor, authorising him to renew the registration of 
the mark. 
58. Reminder of renewal. 
(1) If on a date not less than one month and not more than two 
months before the expiration of the last registration of a trade mark, 
Form TM 12 accompanied by the appropriate fee has not been 
received, the Registrar shaH notify the registered proprietor in writing 
of the impending expiration. 
(2) Any such notification may be sent in accordance with 
subregulation 10(5). 
59. Late renewal. 
If on the expiration of the last registration of a trade mark the 
renewal fee has not been paid, the Registrar shaH forthwith advertise 
that fact in the Gazette, and if, within one month from the date of 
the advertisement, Form TM 13 is filed, accompanied by the late 
renewal fee, he shaH renew the registration without removing the 
mark from the Register. 
60. Removal and restoration. 
(1) If the late renewal fee have not been paid by the end of the 
period of one month referred to in regulation 59, the Registrar shall 
remove the mark from the Register as of the expiration of the last 
registration. 
(2) If, within one year from the expiry of the last registration, 
Form TM 14 is filed, accompanied by the restoration and renewal 
of registration fee, the Registrar may restore the mark to the Register 
and renew its registration if he is satisfied that it is just to do so, 
upon such condition as he may think fit. 
61. Record of removal. 
Where a trade mark has been removed from the Register for 
non-payment of the renewal fee the Registrar shaH enter in the 
Register a record of such removal and of the cause thereof and shall 
advertise the fact of the removal in the Gazette. 
62. Notice and advertisement of renewal and restoration. 
Upon the renewal or restoration and renewal of registration, 
a notice to that effect shaH be sent to the registered proprietor and 
the renewal or restoration and renewal of registration shall be advertised 
in the Gazette. PART Xn 
ASSIGNMENTS AND TRANSMISSIONS 
63. Application for entry of subsequent proprietor. IP/NIlIMYS/T/3 
Page 97 
(1) Where a person becomes entitled by assignment or 
transmission to a registered trade mark he shall make application to 
register his title by filing Form TM 15 accompanied by the prescribed 
fe,: 
(2) An application under subregulation 0) may be made jointly 
with the registered proprietor. 
64. Particulars to be pr~vided. 
(1) An application under subregulation 63(1) shaH contain the 
full name and trade or business address of the applicant and, if the 
applicant is a partnership, the full names of all the partners. 
(2) There shaH be filed with the application for retention by the 
Registrar, an attested copy of the instrument, if any, under which 
the applicant claims his entitlement. 
(3) The Registrar may at any time, by notice in writing sent to 
the applicant, require him to produce for inspection any instrument 
of which an attested copy has been filed. 
(4)· An instrument or attested copy of the instrument furnished 
in accordance with this regulation shall not be opened for public 
inspection. 
(5) Where an applicant does not claim under any instrument 
which is capable in itself of furnishing documentary proof of his tide 
he shaH file with the application a statement of case setting forth 
the fun particulars of the facts upon which his claim to be the 
proprietor of the mark in question is based and showing that it has 
been assigned or transmitted to him, and if the Registrar so requires 
the case shaH be verified by statutory declaration. 
65. Proof of title. 
The Registrar may caU on any person who applies to be registered 
as proprietor of a registered trade mark for such proof or additional 
proof of title as he may require for his satisfaction. 
66. Assignment without goodwill. 
(1) An application under subregulation 63(1) relating to an 
assignment of a trade mark in respect of any goods or services shaH 
state-
(a) whether the mark was, at the time of the assignment, used 
in a business in any of those goods or services, as the case 
may be; and IP/NI1 IMYS/T/3 
Page 98 
(b) whether the assignment was made otherwise than in 
connection with the goodwill of that business, 
and if both circumstances subsist the assignment shall be advertised 
in prominent newspapers or other publications approved by the Registrar 
in any particular case and the advertisement shaH state that the 
assignment was otherwise than in connection with the goodwill of 
the business concerned. 
(2) A copy of the advertisement shaH be filed with the Registrar 
and until this has been done the assignment shall be deemed not to 
have taken effect. 
67. Entry of assignment in Register. 
When the Registrar is satisfied as to the title of an applicant 
under subregulation 63(1), he shaH cause the applicant to be registered 
as proprietor of the trade mark in respect of the relevant goods or 
services and shaH enter in the Register-
(a) the name and the trade or business address of the new 
proprietor, including the names of all the partners where 
the new proprietor is a partnership; 
Cb) any address for service filed under regulation 10; and 
(c) particulars of the assignment or transmission. 
68. Partial assignment. 
Where, pursuant to an application under subregulation 63(1) 
and as a result of a division and separation of the goods or services 
of a registration, or a division and separation of places or markets, 
different persons become registered separately, whether or not under 
different official numbers, as subsequent proprietors of a registered 
trade mark, each of the resultant separate registrations in the names 
of different persons shaH be treated as a separate registration for an 
purposes of the Act 
69. Proposed assignment or transmission. 
(1) Any person wishing to obtain the Registrar'S written approval 
of a proposed assignment or transmission in accordance with subsection 
55(4) of the Act shall file an application on Form TM 15, a statement 
of case in duplicate setting out the circumstances, and a copy of any 
instrument or proposed instrument effecting the assignment or 
transmission in question. 
(2) The Registrar may can for any evidence or further information 
that he may consider necessary, and may require the statement of 
case to be amended to include aB the relevant circumstances or to 
be verified by statutory declaration; and if the statement of case is 
amended, two fair copies in its final form shall be filed. IPlN/I/MYS/T/3 
Page 99 
(3) The Registrar shaH consider whether in aB circumstances use 
of the trade mark in question in exercise of rights conferred or to 
be conferred by the proposed assignment or transmission is in the 
public interest' and shall issue a notification in writing of approval 
or disapproval thereof, as the case may be, and shall seal to the 
notification a copy of the statement of case in its final form. 
PART XIII 
ALTERATION OF THE REGISTER 
70. Alteration of address. 
(1) A registered proprietor or registered user of a trade mark 
whose-
(a) trade or business address is changed; or 
(b) address for service as entered in the Register is no longer 
appropriate, whether by reason of discontinuance of the 
entered address or otherwise, 
and as such the entry in the Register is rendered incorrect shaH 
forthwith, by filing Form TM 16 or TM 1 as appropriate, request 
the Registrar to make the appropriate alteration of the address in the 
Register. 
(2) Upon a request made under subregulation (1), accompanied 
by the prescribed fee, the Registrar shall, if he is satisfied in the 
matter, alter the Register accordingly. 
(3) A registered proprietor or a registered user of a trade mark 
whose registered business address or address for service is altered 
by a public authority but the address as altered designates the same 
premises as before shall make a request for the appropriate alteration 
of the address to the Registrar on Form TM 16 or TM 1 as appropriate 
and if the request is accompanied by a certificate of the alteration 
given by the said authority, the Registrar shall alter the Register 
accordingly if he is satisfied as to the facts of the case, without 
payment of fee. 
(4) If the address of one person is the address for service of more 
than one registered proprietor or registered user, or in respect of 
more than one registered mark, that person may request the Registrar 
to make the appropriate alteration in the Register in respect of each 
entry concerned by filing a single Form TM 1 suitably amended and, 
if the Registrar is satisfied that the altered address is that of the 
applicant and complies with regulation 10, he shaH make the alterations 
in the Register accordingly on payment of the prescribed fee in 
respect of each such entry, unless the application is made under 
subregulation (3). JP/NIlIMYS/T/3 
Page lOO 
71. Application for making, cancelling or varying an entry by a regis­
tered proprietor or registered user. 
(1) Subject to regulation 70, an application to the Registrar 
under section 43 of the Act for making, cancellingor varying an 
entry in the Register shall be made by filing Form TM 17, TM 18 
or TM 19,as the case may be, accompanied by the prescribed fee. 
(2) Every application under subregulation (1) shall be accompanied 
by a statement setting out fully the nature of the applicant's interest, 
the facts on which he bases his case and the relief which he seeks. 
(3) Where the application is made by a person who is not the 
registered proprietor of the mark in question, the applicant shaH 
forthwith send copies of the application and of the statement to the 
registered proprietor at his trade or business address as entered in 
the Register and, if an address for service different therefrom is 
entered in the Register, at that address also. 
(4) In any particular case the Registrar may require a statement 
made under subregulation (2) to be verified by statutory declaration. 
72. Evidence for alteration. 
The Registrar may require an applicant under regulation 71 to 
furnish such evidence by statutory declaration or otherwise as he 
may think fit as to the circumstances in which the application was 
made. 
73. Advertisment in certain cases. 
Before deciding on a request made on Form TM 19 under 
regulation 71 for the entry of a disclaimer or memorandum, the 
Registrar shaH advertise the request in the Gazette to enable any 
person wishing to oppose the request to state in writing, within two 
months from the date of the advertisement, any reasons against the 
making of the entry. 
74. Application to the court. 
A copy of every application to the court under the Act shall 
be filed at the Office by the applicant. 
75. Order of court. 
(1) Where an order is made by the court in any case under the 
Act, the person in whose favour the order is made or, if there is more 
than one, such one of them as the Registrar may direct, shall file 
an office copy of the order with the Registrar and, if rectification 
or alteration of the Register is required, Form TM 28 accompanied 
by the prescribed fee. 
(2) The Register shall, where appropriate, be rectified or altered 
by the Registrar accordingly. 
(3) If the Registrar considers that an order made by the court 
under the Act should be given publicity he may publish it the 
Gazetteo 76. Certificate of validity. I PINIlIMYS/T/3 
Page 101 
(1) Where the court has certified with regard to the validity of 
a registered trade mark as provided in section 61 of the Act, the 
registered proprietor of the mark may, by filing Form TM 20 
accompanied by the prescribed fee and an office copy of the certificate. 
request the Registrar to add to the entry in the Register a note that 
the certificate of validity has been so granted. 
(2) The proceedings in the course of which the certificate was 
granted shall be named in the request. 
(3) On receipt of a request made in accordance with subregulation 
(1), the Registrar shall enter a note the Register as requested and 
publish it in the Gazette. 
77. Alteration of registered mark. 
(1) An application under section 44 of the Act for addition to 
or alteration of a registered trade mark shall be made by filing Form 
TM 21 accompanied by the prescribed fee and a representation of 
the mark as it will appear when added to or altered. 
(~) The representation of the altered mark shaH, subject to regulation 
21, comply with regulation 20. 
78. Advertisement before decision. 
(1) The Registrar shaH consider each application filed in 
accordance with regulation 77 and, if it appears to him expedient 
to do so, shaH advertise it in the Gazette before deciding it. 
(2) Where the Registrar causes an application made under subsection 
44( 1) of the Act to be advertised, then, within two months from the 
date of the advertisement, any person may give notice of opposition 
to the application by filing Form TM 22 accompanied by the prescribed 
fee and a statement of the grounds of the opposition. 
(3) Regulations 37 to 45 and subregulations 50(4), 50(5) and 
50(6) shaH apply to any further proceedings on the application with 
such modifications as may be required to suit the circumstances. 
(4) If, in a case where notice has been given under subregulation 
(2), the Registrar decides to allow the application he shaH add to or 
alter the mark in the Register accordingly. 
79. Advertisement of altered mark. 
Regulation 34 shall apply in respect of all advertisements made 
under regulation 78. IPINII/MYS/T/J 
Page 102 
PART XIV 
REGISTERED USER 
80. Application for entry of registered user. 
(1) An application to the Registrar under section 48 of the Act 
for the registration of a person as a registered user of a registered 
trade mark shaH be made by the registered proprietor by filing Form 
TM 23 accompanied by the prescribed fee. 
(2) A separate application shall be made for each proposed 
registered user of the registered mark. 
(3) Every application under this regulation shall contain a 
representation of the registered mark complying with regulation 34. 
81. Entry of registered user. 
(1) The Registrar shall send to the registered proprietor of the 
mark in respect of which an application under regulation 80 has been 
made and to the registered user a notification in writing of the 
registration of the registered user and may, if he thinks fit, publish 
such notification in the Gazette. 
(2) The date on which the application was duly made under 
regulation 80 shall be deemed to be the date on which the person 
mentioned in the entry in the Register as a registered user was so 
registered. 
82. Variation or cancellation of entry of registered user. 
(1) Application by the registered proprietor of a registered trade 
mark for the variation or cancellation of the registration of a registered 
user of the mark under section 49 of the Act shaH be made by filing 
Form TM 24 accompanied by the prescribed fee. 
(2) A representation of the registered mark in question shaH 
accompany any application made under this regulation and regulation 
34 shall apply to it. 
(3) If the variation or cancellation affects more than one registered 
user of the mark a separate application shaH be made in respect of 
each of them. 
(4) If the Registrar is satisfied in the matter, he shaH cancel or 
vary, as the case may be, the entry on the Register relating to the 
registered user concerned, in accordance with the application. 
(5) The Registrar shall send to the registered proprietor of the 
registered mark in question a notification of the variation or cancellation 
and may, if he thinks fit. publish such notification in the Gazette. 83. Expiry or striking out. 
(1) Where, in accordance with paragraph 48(2)( e) of the Act, 
the registration of a registered user is for a period and the period 
expires before the expiration of the last registration of the trade 
mark, the Registrar may strike out the relevant entry at the end of 
that period. 
(2) If an entry is struck out or varied otherwise than at the 
instance of the registered proprietor, the Registrar shall send written 
notification of the striking out or variation to the registered proprietor 
and to any registered user whose permitted use is affected thereby 
and shall publish such notification in the Gazette. 
PART XV 
SUPPLEMENT AR Y 
84. Extension of time. 
(1) If, in any particular case, the Registrar is satisfied that the 
circumstances are such as to justify an extension of the time for 
doing any act or taking any proceeding under these Regulations, not 
being a time expressly provided in the Act or prescribed by regulation 
53, subregulation 600), or subregulation 86(2), he may extend the 
time upon such notice to other parties, and upon such terms as he 
may direct, and the extension may be granted though the time has 
expired for doing the act or taking the proceeding. 
(2) Every application for an extension of time under subregulation 
(1) shall be made on Form TM 27 stating the circumstances in 
sufficient detail to enable the Registrar to determine whether the 
extension is justified and shaH be accompanied by the prescribed 
fee. 
(3) Where, in an inter-partes proceeding an extension of time is 
sought, the party seeking the extension shall at the same time send 
to every other person who at the time is a party to the proceeding, 
a copy of the request for extension filed with the Registrar. 
(4) Any party may, within fourteen days of receiving a copy of 
a request in accordance with subregulation (3), send to the Registrar 
; observations on the request for an extension and if~no observations 
are so sent he shall be deemed to consent to the extension being 
granted by the Registrar. 
(5) In considering whether to grant an extension of time in a case 
falling within subregulation (3) the Registrar shaH take into account 
the circumstances set out in the request for an extension and of any 
observations submitted by other parties to the proceedings and he 
shaH send a copy of his decision to the party seeking the extension 
and to every other party referred to in subregulation (3). IMYS/T/3 
Page 103 rPlN/! IMYS/T/3 
Page 104 
85. Excluded days. 
(1) The following days shaH be excluded days for all purposes 
under the Act and these Regulations: 
(a) all Sundays; 
(b) any day specified as or proclaimed to be a public holiday; 
(c) any day proclaimed to be an excluded day by notice displayed 
to public view at an Office. 
(2) Whenever the last day fixed by the Act or by these Regulations 
for doing any act or thing at the Office falls on a day which is an 
excluded day, it shall be lawful to do the act or thing on the first 
day following such excluded day which is not an excluded day. 
86. Application for hearing. 
(1) Before exercising adversely to an applicant for registration 
or a registered proprietor any discretionary power given to the Registrar 
by the Act or by these Regulations, the Registrar shaH hear that 
person thereon if so required by that person. 
(2) Any request for a hearing under subregulation (1) shall be 
made to the Registrar within two months from the date the Registrar 
notifies him that he.proposes to exercise a discretionary power. 
(3) The decision of the Registrar in the exercise of any such 
discretionary power shall be notified to the person affected. 
87. Power to dispense with evidence. 
Where, under these Regulations any person is required to do 
any act or thing, or any document or evidence is required to be filed, 
and it is shown to the satisfaction of the Registrar that by any 
reasonable cause that person is unable to do that act or thing or that 
document or evidence cannot be filed, the Registrar may, upon the 
production of such other evidence and subject to such terms as he 
thinks fit, dispense with the doing of any such act or thing, or the 
filing of such document or evidence. 
880 Amendment of documents. 
Any document filed in any proceedings before the Registrar 
and any mistake in a drawing or other representation of a trade mark 
may, if the Registrar thinks fit, be amended, and any irregularity in 
procedure in or before the Office may be rectified, on such terms 
as the Registrar may direct. 89. Certificate by Registrar. I PINIlIMYS/TIJ 
Page 105 
(1) Subject to subregulation (2), any person may, by filing 
Form TM 25 accompanied by the prescribed fee, request the Registrar 
to give a certificate as to any entry, matter or thing which the 
Registrar is authorised or required by the Act or these Regulations 
to make or do, other than a certificate of registration issued under 
subsection 30(2) of the Act. 
(2) Before giving a certificate under subregulation (1), the Registrar 
may, if he thinks fit, require the person making the request to show 
to his satisfaction an interest in the entry, matter or thing in question 
and if he is not so satisfied he may decline to furnish the certificate. 
(3) The Registrar shall not be obliged to include in any certificate 
issued under this regulation a copy of the mark unless the person 
making the request has filed a copy suitable for the purpose. 
90. Statutory declarations. 
(1) Any statutory declaration required under the Act or these 
Regulations, or used in any proceedings thereunder, shaH be made 
and subscribed as follows: 
(a) in Malaysia, in accordance with the provisions of the 
Statutory Declarations Act 1960; 
(b) in any other part of the world before any court, judge, 
justice of the peace, magistrate, notary public or other 
officer authorised by law to administer an oath for the 
purpose of any legal proceedings. 
(2) Any document purporting to have affixed, impressed or 
subscribed thereto or thereon the seal or signature of any person 
authorised by subregulation (1) to take a declaration may be admitted 
without proof of the genuineness of the seal or signature or of the 
official character of the person or his authority.to take the declaration. 
PART XVI 
REVOCATION AND TRANSITIONAL PROVISIONS 
'. 
91. Revocation. 
The Trade Marks Regulations 1983 are hereby revoked. 
92. Saving. 
(1) These Regulations shaH not apply to any application made 
under the revoked Regulations and submitted prior to the coming 
into force of these Regulations and for the purpose of such applications, 
the revocation of the Trade Marks Regulations 1983 shaH be deemed 
to have not been made. IPIN!] IMYS/T/3 
Page J 06 
(2) The Registrar may give directions as he deems fit to ensure 
that the application under subregulation (1) complies with these 
Regulations in so far as it is not prejudicial to the application of the 
revoked Regulations. 
(3) For the avoidance of doubt, the directions of the Registrar in 
respect of 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, made prior to the coming into force 
of these Regulations, shaH not affect paragraph 31 (2)( c). subsection 
32(1), section 41, subsection 49(3) and section 70A of the Act. 
FIRST SCHEDULE 
(Regulation 3) 
FEES 
The following fees shaH be paid in respect of applications, registrations 
and other matters under the Act. Such fees must in an cases be paid 
before or at the time of doing the matter in respect of which they 
are to be paid. 
PART 1 
Form Matters or Proceedings Fee 
TM RM 
Fonn of authorisation and request to enter, 30.00 
alter or substitute an address for service 
2 Application for registration of trade 1000.00 
marks agent 
3 Application for renewal of registration 400.00 
of trade marks agent 
4 Request for Registrar's preliminary advice 100.00 
as to registrability of a mark I PIN I 1 IMYS/TI3 
Page 107 
Form Matters or Proceedings Fee 
TM RM 
5 Application for registration of a mark 250.00 
6 Request for statement of grounds of 500.00 
decision 
7 Notice of opposition 450.00 
8 Counter-statement to a notice of opposition 300.00 
9 Notice to the Registrar of attendance 480.00 
at hearing 
10 Certificate of registration Fee collected 
on Form 
TM.29 
11 Application to dissolve the association 120.00 
between a registered trade mark and 
other registered trade mark(s) 
12 Application for renewal of registration 420.00 
of a trade mark 
13 Application for late renewal of registration 630.00 
of a trade mark 
14 Application for restoration and renewal 670.00 
of registration 
15 Application and declaration of an 180.00 
assignmentla transmission for 
registration as proprietor of a 
trade mark 
16 Request by the registered proprietor! 60.00 
registered user of a registered trade mark 
for entering a change in the description, 
alteration of tradelbusiness address or 
correction of an error in the register 
17 Request by registered proprietor of a 
registered trade mark for 100.00 
making, cancelling or varying of an entry 
in the Register 
18 Request by registered proprietor of a 100.00 
registered trade mark to strike out 
goods or services 
19 Request by registered proprietor of a 120.00 
registered trade mark for entry of a 
disclaimer or memorandum 
20 Request by registered proprietor of a 120.00 
registered trade mark for entry on the 
Register of a note of a certificate Qf 
validity by the court 
21 Application by registered proprietor 120.00 
for an addition to or alteration of a 
registered trade mark fPINIlIMYS/T/3 
Page 108 
Form Matters or Proceedings Fee 
TM RM 
22 Notice of opposition to an application 480.00 
for addition to or alteration of a 
registered trade mark 
23 Application for registration of 180.00 
registered user 
24 Application for variation or cancellation 150.00 
of the registration of a registered user 
25 Request for Registrar's certificate other 100.00 
than certificate of registration 
26 Request for correction of a clerical error 100.00 
in an application or for permission to 
otherwise amend an application 
for registration 
27 Request for extension of time 50.00 
(Per month: 100.00) 
28 Notice of order of court for rectification 100.00 
or alteration of the Register 
29 Advertisement for registration 450.00 
PART n 
OTHER FEES REQUIRED UNDER THE ACT 
1. Request for copy of office document 
and manuscript-
(a) Certified extract from Register 
(b) Non-certified extract from Register 
(c) Computer print-out 
2. Request to conduct public search 
Form 
TM SECOND SCHEDULE 
(Regulation 4) 
FORMS Fee 
RM 
10.00 per page 
5.00 per page 
5.00 per page 
10.00 per hour 
Form of authorisation and request to enter, alter or substitute an address 
for service 
2 Application for registradol1 of trade marks agent Form 
TM 
3 Application for renewal of registration of trade marks agent IP/NI lIMYS/T/3 
Page ]09 
4 Request for Registrar's preliminary advice as to registrability of a mark 
5 Application for registration of a mark 
6 Request for statement of grounds of decision 
7 Notice of opposition 
8 Counter-statement to a notice of opposition 
9 Notice to the Registrar of attendance at hearing 
10 Certificate of registration 
11 Application to dissolve the association between a registered trade mark 
and other registered trade mark(s) 
12 Application for renewal of registration of a trade mark 
13 Application for late renewal of registration of a trade mark 
14 Application for restoration and renewal of registration 
15 Application and declaration of an assignment/a transmission for registration 
as proprietor of a trade mark 
16 Request by the registered proprietorlregistered user of a registered trade 
mark for entering a change in the description, alteration of tradelbusiness 
address or correction of an error in the register 
17 Request by registered proprietor of a registered trade mark for making, 
cancelling or varying of an entry in the Register 
18 Request by registered proprietor of a registered trade mark to strike out 
goods or services 
19 Request by registered proprietor of a registered trade mark for entry of a 
disclaimer or memorandum 
20 Request by registered proprietor of a registered trade mark for entry on 
the Register of a note of a certificate of validity by the court 
2 J Application by registered proprietor for an addition to or alteration of a 
registered trade mark 
22 Notice of opposition to an application for addition to or alteration of a 
registered trade mark 
23 Application for registration of registered user 
2.4 Application for variation or cancellation of the registration of a registered 
user 
25 Request for Registrar's certificate other than certificate of registration 
26 Request for correction of a clerical error in an application or for permission 
to otherwise amend an application for registration 
27 Request for extension of time: (Per month : 
28 Notice of order of court for rectification or alteration of the Register 
29 Advertisement for registration JP/N/1/MYS/T/3 
Page 110 
INTELLECTUAL PROPERTY DIVISON-TRADE MARK 
TRADE MARKS REGISTRY ~ 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
FORM OF AUTHORISATION AND REQUEST TO ENTER, ALTER OR 
SUBSTITUTE AN ADDRESS FOR SERVICE 
This form must be filed whenever an agent is appointed 
or when one agent is substituted for another 
(Subreguiations 10(1), 10(2), 10(3) and 11(2)} 
1. Trade Mark No.: 
2. Class: 
3. FuB name and address of proprietor: 
4. Fun name and address of agent (if any): ........................................... . 
5. Agent's Registration No. (if known): ................................................... . 
6. Agent's own reference: ...................................................................... . 
7. I request that aB communication concerning the above trade mark 
be sent to the address indicated, which is the address for service. 
Note: Enter (3) or (4) as appropriate in the box. I 
An address for service must be in Malaysia. 
The full postal addresses of the parties must 
be given. I 
Signature: ............................................................................................ . 
Name of signatory (in block letter): ................................... ., ........... .. 
D:ate: ................................................................................................... . INTELLECTUAL PROPERTY DIVISION-TRADE MARK lP/NI I IMYS/T13 
Page! J J 
TRADE MARKS REGISTRY rM21 
TRADE MARKS ACT 1976 
TRADE MARKS REGULA nONS 1997 
APPLiCA TION FOR REGISTRATION OF TRADE MARKS AGENT 
(Subregulation 12(2» 
For Official Use 
Application received on: ...................................................................... . 
Fee received on: ................................................................................. .. 
Amollnt: ............................................................................................... . 
* Cheque/Postal OrderIMoney Order/CashlDraft No.: ........................ . 
(* Please tick whichever is applicable) 
I. APPliCANT: 
Name: 
Address: 
Nationality: 
Permanent residence or prinCipal place of business: 
Telephone No.: .......................................................... .. 
Fax No.: IPfN!1!MYS/T!3 
Page 112 
n. QUALIFICATIONS: 
(Please attach copies of qualifications certified by a Commissioner of 
Oath) 
m. EXPERIENCE: 
(Please submit in the form of statutory decIaration) 
IV. DECLARATION: 
I hereby declare that all the information given above is true and correct. 
Signature: ............................................................................................... . 
Date: ...................................................................................................... . lPINl1 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPLICATION FOR RENEWAL OF REGISTRATION OF 
TRADE MARKS AGENT 
(Subregulation 12(7» 
For Official Use 
Application received on: ..................................................................... . 
Fee received on: .................................................................................. . 
Amount: ............................................................................................. .. 
* ChequeIPostaI Order/Money/Cash/Draft No ................................... .. 
(* Please tick whichever is applicable) 
1. APPLICANT: 
Name: ................................................................................................... .. 
Address: ................................................................................................. . 
Nationality: ........................................................................................... .. 
Permanent residence or principal place of business: 
Ip,",h".,,,, No.: ....................................................................................... . 
No.: ................................................................................................. . Page 113 IP /NIl IMYS/T/3 
Page 114 
H. QUALICA TIONS: 
(Please attach copies of qualifications certified by a Commissioner of 
Oath) 
m. ADDITIONAL INFORMATION accompanies this Form: 
Yes No 
IV. DECLARATION: 
I hereby declare that all the information given above is true and correct. 
Signature: ............................................................................................... . 
Date: ...................................................................................................... . INTELLECTUAL PROPERTY DIVISON-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST FOR REGISTRAR'S PRELIMINARY 
ADVICE AS TO REGISTRABILITY OF A MARK 
(Subregulation 17(1)) 
1. Representation of mark: IP/N/1/MYSIT/3 
Page 115 
If the space provided is insufficient, the representation may be made on 
a separate sheet which must be firmly annexed to this firmly annexed 
to this Form. 
The representation must be clear and durable and comply with regulation 
34 of the Trade Marks Regulations 1997. 
2. List of goods or services: 3. Class ..... 1 ______ ---'1 
Goods or services falling within more than one international class must 
be the subject of separate applications. Continue on a separate sheet if 
necessary. 
4. Full name and address of applicant: ...................................................... . 
If the applicant resides abroad, an address for service in Malaysia must 
be provided. 
5. Full name and address of agent (if any): ............................................. .. 
If this is the address for service and is not already on record, Form TM 
1 must be filed with this Form. 
6. Agent's Registration No. (if known): ..................................................... .. 
7. Agent's own reference: ......................................................................... .. 
8. The Registrar is requested to advise whether the mark appears to him 
prima facie to be inherently adapted to distinguish or inherently capable 
of distinguishing the goods or services specified, within the meaning of 
sections 10, 11 and 12 of the Act. 
Signature: ............................................................................................... . 
Name of signatory (in block letter): ..................................................... .. 
Date: .............................................. .. lP/Nil IMYS/T/3 
Page 116 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPLICA TION FOR REGISTRATION OF A MARK 
(Subregulation 18(1)) 
1. Application is hereby made for the registration of a: 
trade mark D defensive trade mark: D 
certification trade mark D 
Note: Please tick the box appropriate to the kind of mark for which 
registration is desired. 
In the case of a trade mark a copy of the oath, sworn statement 
or statutory declaration by the applicant are true must be attached. 
In the case of a certification trade mark a copy of the rules 
governing its use must be attached. 
In the case of a defensive trade mark a copy of the statement 
of case verified by a statutory declaration, must be attached. 
in part ~ of the Register. (Insert, A or B 
as appropriate) 
(Five (5) copies of this Form must be enclosed with the application) 
2. Representation of mark: 
3. Note: If the space provided is insufficient, the representation 
may be made on a separate sheet which must be 
firmly annexed to this Form. 
If the application is for a series of trade marks 
under section 24 a representation of each mark in 
the series must be given. 
Representation must be dear and durable and comply 
with regulation 34. 
If the mark is coloured and is to be limited accordingly, 
please tick this box: 
List of goods or service: 4. Class: 
Goods or services falling within more than one international 
class must be subject of separate applications. Continue on 
a separate sheet if necessary. D 
I I 
D 5. Limitations, etc.: IP/N/I/MYS/T/3 
Page 117 
Insert below any conditions, disclaimers or other limitations to which 
the registration will be subjected to. 
If the mark contains or consists of a word or words in non-Roman 
characters or in a language other than English language or the national 
Janguage a certified transliteration and translation as appropriate must 
be provided. 
6. Full name and address of applicant .................................................. .. 
If the applicant resides abroad, an address for service in Malaysia must 
be provided. 
7. Full name and address of agent (if any): ............................................ . 
If this is the address for service and is not already on record, Form 
TM 1 must be filed with this Form. 
8. Agent's Registration No. (if known): ....................................................... . 
9. Agent's own reference: ............................................................................ . 
10. International Convention priority claim: 
If priority date is claimed under International Convention or a bilateral 
arrangement, please give details below and attach the relevant documents. 
Convention country: ................... Priority date claimed: ...................... .. 
11. Date of first use of the mark in Malaysia (if any): .......................... .. 
12. Declaration: IJW e claim to be the bone fide proprietor of the mark 
whose registration is applied for and, where the mark has not been used 
in MaJaysia, that the application is made in good faith and that IJWe 
am/are entitled to be registered as the proprietor. 
An agent signing this Form on behalf of the applicant must satisfy 
himself as to the truth of the declaration. 
Signature: ................................................................................................ . 
Name of signatory (in block letter): .................................................. .. 
Date: ............................................. . 
If the applicant is a partnership, the full names of all the partners must 
be stated. fP/N/lIMYS/T/3 
Page 118 
INTELLECTUAL PROPERTY DIVISION TRADE MARK 
TRADE MARKS REGISTRY ITM61 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST FOR STATEMENT OF GROUNDS OF DECISION 
(Subregulation 29(1») 
L Application No.: 
2. Class: 
3. Full name and address of the applicant: ........................................................... .. 
If the applicant resides abroad, an address for service in Malaysia must be 
provided. 
4. Fun name and address of agent (if any): ........................................................... . 
If this is the address for service and is not already on record, Form TM 1 
must be filed with this Form. 
5. Agent's Registration No. (if known): .................................................... . 
6. Agent's own reference: ......................................................................... .. 
7. Date of Registrar' s decision: ............................................................................ . 
Please state above the date of the Registrar's letter conveying his refusal 
or conditional acceptance of the application. 
8. The Registrar is requested to state in writing his decision and the grounds. 
Note: The date of the Registrar's decision for the purposes of any appeal 
will be the date that the written grounds are issued in response to 
this request. 
Signature: ............................................................................................... . 
Name of signatory (in block letter): .................................. ., .................... . 
Date: ...................................................................................................... . INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
NOTICE OF OPPOSITION 
(Regulation 37, Subregulations 50(1) and 51 (1)) 
1. Application No.: 
2. Class: 
3. Notice is hereby given to oppose the application for registration of a: IP/N/I/MYSIT/3 
Page 119 
trade mark 
defensive trade mark D 
D 
D certification trade mark D 
alteration of rules of a D 
registered certification trade mark 
Others 
(Please tick whichever is applicable) 
4. Full name and address of the opponent: ........................................................... . 
If the opponent resides abroad, an address for service in Malaysia must be 
provided. 
5. Fun name and address of agent (if any): ........................................................... . 
• " ~ •.• ., ............................ ~ ... ,. ....................... ~ ... ,. •• ~ .......... ~ •.•••... o.. ~ 0 ....... 0 ........ ~ .............. o. ... ~ .......... ~ 
.......... o. ........................ .,~ ....................................... ., ................................. .,o. ..... ., ................................. .. 
If this is the address for service and is not already on recOrd, Form TM 1 must 
be filed with this Form. IP/NIl/MYS/T/3 
Page 120 
6. Agent's Registration No. (if lmown): ..................................................... . 
7. Agent's own reference: .................................................................................... .. 
8. Date and details of Gazette in which the opposed mark was advertised: 
9. Grounds of opposition: 
If registration is opposed 011 the ground that the mark resembles marks 
already on the Register, the number of those marks and the Gazette in 
which they were advertised must also be given. 
If the space provided is in sufficient, please continue on a separate sheet 
which must be firmly annexed to this Form. 
Signature: ........................................................................................................ .. 
Name of signatory (in block letter): ................................................................. . 
Date: ......................................... .. 
Note: -A copy of this Form must be sent to the applicant for registration at 
his address for service. 
opposition INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
COUNTER-STATEMENT TO A NOTICE OF OPPOSmON 
(Subregulations 39(1), 500) and 51(2» 
1. Application No.: 
2. Class: I P 1Nl J IMYS/T 13 
Page 121 
3. Full name and address of the applicant: ....................................... " .................. . 
• RO ..... o ..... ~ ........................ ; •••• " ... ~ .............................................................................................................. .. 
If the applicant resides a broad, an address for service in Malaysia must be 
provjded. 
4. Full name and address of agent (if any): .......................................................... . 
If this is the address for service and is not already on record. Form TM I must 
be filed with this Form. 
5. Agent's Registration No. (ifknown): ................................................................ . 
6. Agent·sownreference: ........................................................................................... . 
7. Grounds in support of application: 
(If the space provided is insufficient. please continue on a separate sheet which 
must be fumly annexed to this Form) 
Signature: ......................................................................................................... . 
Name of signatory (in block letter): ............................................................ ·.· .. · 
Date: ...................................................... . 
Note: A copy of 
service. • a JP/N/1/MYS/T/3 
Page 122 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
NOTICE TO THE REGISTRAR OF ATTENDANCE AT HEARING 
(Subregulations50(4) and 51(2» 
iNSTRUCTION 
Please type or write'in block letters 
1. Application number in respect of which the hearing is held: 
2. Reason for hearing: 
3. Opposition to registration: 
4. Other matters (please specify): 
5. I!W e hereby confirm that by the Registrar's notice to me/us dated the ............ 'daY 
oL ............ the hearing of the arguments in respect of the above matter is fixed 
for: 
Time (hours): 
Date: 
r--------------------------------------------------------4 
6. Will be attended by me/us or, by an agent/agents on my/our behalf: 
Signature 
Name 
Telephone No. 
IJate : INTELLECfUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
CERTIFICATE OF REGISTRATION 
(Regulation 56) 
TRADE MARK NO. 
CLASS IP/N/1/MYS/T/3 
Page 123 
REGISTERED FROM 
NAME OF PROPRIETOR ............................. day of .............................. . 
GOODS/SERVICES 
RegiSi:rar of Trade Marks 
Malaysia 
Date: IP/N/1/MYS/T/3 
Page 124 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY ITM 11 J 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPLICATION TO DISSOLVE THE ASSOCIATION BETWEEN A 
REGISTERED TRADE MARK AND OTHER REGISTERED 
TRADE MARK(S) 
(Subregulation 54(2)) 
Trade Mark No.: .............................. . Class: ............................................ . 
PARTICULARS OF TRADE MARK'S PROPRIETOR 
Name: 
Address: 
Telephone No.: 
Signature: 
Date: 
Note: -If dlis Form is med by an agent, please attach Form TM 1 
together with this Form. 
A statement of gmulI1ds of 'n,l; .:, must accompany this 
application. INTTELECTUAL PROPERTY DIVISION-TRADE MARK IP/N/l/MYS/T13 
Page 125 
TRADE MARKS REGISTRY ITM 12] 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPUCA nON FOR RENEWAL OF REGISTRATION 
OF A TRADE MARK 
(Subregulation 57(1» 
Trade Mark No.: 
Class: 
IfWe/Agent 
of-
hereby apply to renew the above registration. 
Fee is enclosed herewith. 
(Cheque/Cash) 
Signature: 
Date: 
Note: ....................................................... Proprietor 
....................................................... Agent 
If the agent is newly appointed, please file Form TM L 
A letter of authority must be attached if the applicant is other 
than the registered proprietor or the agent. 
A representation of the mark " my IP/N/1/MYS/T/3 
Page 126 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPUCA nON FOR LATE RENEWAL OF REGISTRA nON 
OF A TRADE MARK 
(Regulation 59) 
Trade Mark No.: 
Class: 
IlWe/Agent 
of-
hereby apply to renew the above registration. 
Fee is enclosed herewith. 
(Cheque/Cash) 
Signature: ....................................................... Proprietor 
....................................................... Agent 
Date: 
Note: If the agent is newly appointed, please file Form TM L INTELLETUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 IPIN/1/MYS/T/3 
Page 127 
APPLICA nON FOR RESTORA nON AND RENEWAL OF REGISTRA nON 
(Sl.1bregl.11ation 60(2» 
Trade Mark No.: 
Class: 
YWe/Agent 
of-
hereby apply to restore and renew the above registration. 
Fee is enclosed herewith. 
(Cheque/Cash) 
Signature: ...................................................... ,Proprietor 
....................................................... Agent 
the agent is IPINII/MYS/T/3 
Page 128 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPLICATION AND DECLARATION OF AN ASS[GNMENT/A 
TRANSMISSION FOR REGISTRATION AS PROPRIETOR 
OF A TRADE MARK 
(Subregu!ations 63(1) and 69(0) 
Trade Mark No.:................................. Class: ............................................ . 
Associated No.: ............................................................................................... . 
PARTICULARS OF ASSIGNORlPRESENT/PREVIOUS PROPRIETOR: 
Name: 
Address: 
PARTICULARS OF ASSIGNEEfNEW PROPRIETOR: 
Name: 
Address: 
Telephone No.: ........................................................................................... . 
IfWe hereby apply for the approval of the Registrar to be entered in the 
Register as proprietor of the trade mark for the following: 
[ ] assignment with goodwill 
proposed assignment (with goodwiH) 
transmission [ ] assignment without 
goodwill 
[ ] proposed assignment 
(without goodwill) IfWe am/are entitled to the trade mark by virtue of: 
[ ) "Deed of Assignment" 
[ ] Statement of Case verified by a Statutory Declaration 
[ J Others. (Please specify) IP/N/1/MYS/T/3 
Page 129 
dated ....................................... , a copy/copies which is/are attached together 
with this Form. 
(Please tick \,vhichever is applicable) 
Date: .................................. . 
(Signature of Assignee) 
Note: -If there is any appointment of agent or address for service, 
please attach Form TM 1 together with this Form. 
--If partial assignment is to be made, goods or services assigned 
should be stated clearly in the Deed. 
-One application form for each trade mark. lP/N/l/MYS/T/3 
Page 130 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST BY THE REGISTERED PROPRIETOR/REGISTERED 
USER OF A REGISTERED TRADE MARK FOR ENTERING 
A CHANGE IN THE DESCRIPTION, ALTERATION OF 
TRADE/BUSINESS ADDRESS OR CORRECTION OF AN 
ERROR IN THE REGISTER 
(Subregulation 70(1)) 
Trade Mark No.: ................................. . Class: ...................................... . 
IfWe am/are the: 
Proprietor 
IfW e hereby request for: Registered User of a registered 
mark. 
entering a change in the description in the Register 
alteration of tradefbusiness address in the Register 
correction of an error in the Register 
(Please tick whichever is applicable) 
PREVIOUS PARTICULARS: 
Name: 
Address: 
NEW PARTICULARS: 
Name: 
Address: 
date of change of: 
0) name: 
(ii) address: Addrus for 8eln"ke: IPINIlIMYS/T/3 
Page ]31 
(If there is a change of agent or address for service, please file Form TM i) 
(Signature of registered 
proprietor or registered user) Date: ................................. .. 
Note: A registered proprietor or a registered user whose address has beef! 
altered by a public aut~ority, while the change of address designates 
the same premises as before, shaH attached the supporting statement 
together with this Form to avoid payment of fee. TP/N/lIMYS/T/3 
Page 132 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST BY REGISTERED PROPRIETOR OF A REGISTERED 
TRADE MARK FOR MAKING, CANCELLING OR VARYING 
OF AN ENTRY IN THE REGISTER 
(Subregulation 71(1») 
Trade Mark No.: I I 
Class: 
Name and address of registered proprietor: 
hereby request that an entry in the Register 
be made; 
be cancelled; or 
be varied 
in the following manner: 
(If the space provided is insufficient, please continue on a separate sheet which 
must be firmly annexed to this form) 
..... <>~., .... ~ .. <> ___ ~ .. G .. "o. ~ 0""," ..... " ... "" • .,,, ",." ~"""."""""o.""""""""."""". ~",. ... ". ~ .............. " .... " ..... " "' ... " 0 ."0 'H' .. " ~" ............ " ........... ""., ........ ~ 
Signature: ....................................... . Date: .................................. . 
If this form is filed by an agent, please attach Form TM 
together with this form. IPINIlIMYS/T/3 
Page 133 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY ITM 181 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST BY REGISTERED PROPRIETOR OF A REGISTERED 
TRADE MARK TO STRIKE OUT GOODS OR SERVICES 
(Subregulation 71(1» 
L Trade Mark No.: 
2. Class: 
3. Full name and address of the registered proprietor: ............................. . 
If the proprietor resides abroad. an address for service in Malaysia 
must be provided. 
4. Full name and address of agent (if any): 
If this is the address for service and is not already on record, Form· 
TM 1 must be filed with this Form. 
5. Agent's Regiskation No. (if known): .................................................. .. 
6. Agent's own reference: ........................................................................ .. 
7. The Registrar is requested to strike out the following goods or services 
from the registered specification: 
(If the space provided is insufficient, please continue on a separate sheet 
which must be firmly annexed to this Form) 
Signature: ........................................... .. 
Name of signatory (in block letters): ........................................................... .. 
Date: ............................................... .. 
Note: A copy of this Form must be sent to the opponent at his address 
for service. lP/NI] IMYS/T/3 
Page] 34 
INTELLECTUAL PROPERTY DIVISION -TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST BY REGISTERED PROPRIETOR OF A REGISTERED 
TRADE MARK FOR ENTRY OF A DISCLAIMER 
OR MEMORANDUM 
(Subregulation 71 (1)) 
1. Trade Mark No.: 
2. Class: 
3. Full name and address of the registered proprietor: ............................. . 
If the proprietor resides abroad, an address for service in Malaysia 
must be provided. 
4. Full name and address of agent (if any): ........................................... .. 
If this is the address for service and is not already on record, Form 
TMl must be filed with this Form. 
5. Agent's Registration No. (if known): ................................................... . 
6. Agent's own reference: ........................................................................ .. 
7. The Registrar is requested to enter the following disclainer or ITIemo­
randum in the Register: 
(If the space provided is insufficient, please continue on a separate 
sheet which must be firmly annexed to this Form) 
Signature: ............................................... .. 
Name of signatory (in block letter): ............................................................ .. 
Date: .............................................................. . JP IN/liMY SIT 13 
Page 135 
INTELLECTUAL PROPERTY DIVISION -TRADE MARK 
TRADE MARKS REGISTRY I TM 201 
TRADE MARKS ACT 1976 
TRADE MARKS REGULA nONS 1997 
REQUEST BY REGISTERED PROPRIETOR OF A REGISTERED 
TRADE MARK FOR ENTRY ON THE REGISTER OF A NOTE 
OF A CERTffiCA TB OF V ALlDITY BY THE COURT 
(Subregulation 760» 
Trade Mark No.: I 
Class: I 
Details of court proceedings. I 
I 
Please state on a separate sheet of paper, fun details of the nature of the court 
proceedings and the names of the parties in which the certificate was given. 
(An office copy of the certificate must be attached) 
Name and address of registered proprietor: 
Signature: ............................................ . 
Date: .................................................. .. 
Note: Ifthis Form is med by an agena, please ataach Form TMl together with 
this Form. IP/Nll/MYSIT/3 
Page 136 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE' MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPLICATION BY REGISTERED PROPRIETOR 
FOR AN ADDITION TO OR ALTERATION OF 
A REGISTERED TRADE MARK . 
(Subregulatio!1 77(1» 
Trade Mark No.: 
Class: 
Details of addition or alteration. 
Please submit 4 copies of the mark on bromide paper as it will appear when 
added or altered. 
~ ..... ~ ........ ~ ........................................... ~" ~ ................................. ~ .... " .................. " .... ., ...... " .. 0 ~ ..... ~"""''''''''''''.'''' 0."'" "' ... "" .... 0 ................. . 
Name and address for service 
of registered proprietor: ........................................................................... . 
Signature: ................................................. . 
Date: ........................................................ . 
Note: If this Form is filed by an agent, please attach Form TMl together with 
this Form. INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARK REGISTRY 
TRADE MAEK ACT 1976 
TRADE MARKS REGULATIONS 1997 fPINI11MYS/T/3 
Page 137 
NOTICE OF OPPOSITION TO AN APPUCA TION FOR ADDITION 
TO OR ALTERATION OF A REGISTERED TRADE MARK 
INSTRUCTION 
Please type or write 
in block letters 
1. Trade Mark No.: (Subregulation 78(2)) 
2. Name of applicant: ............................................................................... . 
3. Address for 
service of 
applicant: 
4. Class: 
5. Date of advertisement: .............................................. . 
6. Page: ............................................. . 
7. Name and address of the opponent: ........................................................ .. 
If the opponent resides abroad, an address for service in Malaysia must 
be provided. 
8. Grounds of opposition: 
(Please attach) 
Signature: ................. ............................. . 
Name: ........................................................................................................... : 
Telephone No.: ...................................... . 
Date: ...................................................... . 
Note: A copy of this Form must be sent to the applicant at his address for 
service. IPlNI1 IMYStf/3 
Page 138 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPUCA nON FOR REGISTRATION OF REGISTERED USER 
(Subregulation· SO( 1») 
Trade Mark No.: .................................................. . Class: ..................... . 
PARTICULARS OF REGISTERED PROPRIETOR 
FuB name: .................................................................................................... . 
Address: 
... 6 .................................................................................................. ~ ........... ~ .................... . 
Telephone No.: ................. . 
PARTICULARS OF REGISTERED USER: 
Fun name: .................................................................................................... . 
Address: 
Telephone No.: ..................................... . 
Note: Please state the fuB names of each of the partners, if the registered 
user i.s a partnership. [ ) 
[ ] 
[ ] 
[ ] 
[ J Effective from: ~ .. ~'''' ...... " ................. ,," ........ ~ ............. ~ ............. -" .... 
Without limit of period. 
With limit Please state the expiry date: .. 00·.·.· ............. 00 .......... 
Exclusive/Sole registered user. 
Non exclusive/Not sole registered user. IPfN/l/MYS/T/3 
Page 139 
[ ] To use all goods or services registered under the proprietor. 
[ ] To use parts of the goods or services registered under the proprietor. 
Please state below: 
(if the space provided is insufficient, please continue on a separate 
sheet which ml.lst be firmly annexed to this Form) 
(please tick whichever is applicable) 
Representation of the registered mark: 
(If the space provided is insufficient, the representation may be made on a 
separate sheet which must be firmly annexed to this Form) 
Date: ....................... .. 
(Signature of registered proprietor) 
Note: --If there is any appointment of agent or address for service, please 
file Form TM 1. 
-One application form for each trade mark. IP!NI1!MYS/T/3 
Page 140 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK. 
TRADE MARK REGISTRY 
TRADE MARK ACT 1976 
TRADE MARKS REGULA nONS 1997 
APPLICATION FOR VARIATION OR CANCELLATION OF THE 
REGISTRA TION OF A REGISTERED USER 
(Subregulation 82( 1) 
Trade Mark No.: ............................................. . Class: ......................... .. 
PARTICULARS OF REGISTERED PROPRIETOR: 
Name: 
Address: 
Telephone No.: .............................................................................................. . 
PARTICULARS OF REGISTERED USER: 
Name: 
Address: 
Telephone No.: .............................................................................................. . 
State the goods or service registered under the registered user: 
(If the space provided is insufficient, please continue on a separate sheet 
which must be firmly annexed to this Form) This application is for:. cancellation lP/N!1IMYS/T/3 
Page 141 
variation 
Effective date of cancellation of registered user: .............................. . 
Effective date of variation of registered user: .................................. .. 
State the goods in respect of which the registered user is to be altered. 
(If the space provided is insufficient, please continue on a separate sheet 
which must be firmly annexed to this Form) 
(Please tick whichever is applicable) 
Date: ....................... .. 
(Signature of registered proprietor) 
Note: -Please attach a representation of the registered mark together 
with this Form. 
If there is any appointment of agent or address for service, please 
file Form TM 1. 
One application form for each trade mark. IP/N/1/MYS/T/3 
Page 142 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST FOR REGISTRAR'S CERTIFICATE OTHER 
THAN CERTIFICATE OF REGISTRATION 
(Subregulatiori 89(1» 
L Number of the mark in respect of which a 
certificate is required: 
2. Class (if known): 
3. Certificate requirements: 
Set out below the particulars in which the Registrar is requested 
to certify. 
Note: A representation of the mark will not be included in any certificate 
issued in response to this request unless one suitable for the 
purpose is supplied to the Registrar. 
4. Name and address to which the certificate is to be sent: 
Signature: ............................................................................................. . 
Name of signatory (in block letter): ............................................ " ...... . 
Date: ...................................................... . INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST FOR CORRECTION OF A CLERICAL ERROR IPINIl IMYS/T/3 
Page] 43 
IN AN APPLICATION OR FOR PERMISSION TO OTHERWISE 
AMEND AN APPLICATION FOR REGISTRATION 
(Regulation 24) 
1. Application No.: 
2. Class: 
3. Fun name and address of applicant: ..................................................... . 
If the applicant resides abroad. an address for service in Malaysia must 
be provided. 
4. Fun name and address of agent (if any): ................................................ . 
If this is the address for service and is not already on record, Form 
TM 1 must be filed with this Form. 
5. Agent's Registration No. (if Known): ............ ,. .................................... . 
6. Agent's own reference: ........................ , ................... , ............................ .. TP/N/J/MYS/T/3 
Page 144 
7. Details to be amended or corrected: 
Here state the nature and full details or the alteration required, e.g. revised 
specification, transfer to Part B, change of address, change of class number, 
entry of a disclaimer, translation etc. Where the mark itself is amended, 
six copies of an amended representation complying with regulation 34 
must be provided. Where the applicant's name has been changed, a copy 
of the certificate or other evidence must be attached. 
(If the space provided is insufficient, please continue on a separate sheet 
which must be firmly annexed to this Form) . 
•• '" •••••• , .......................................... ~ •••••••••••••• + ................. '" ............................... . 
of signatory (in block letter): ....................................................... . INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARK REGISTRY 
TRADE MARK ACT 1976 
TRADE MARKS REGULATIONS 1997 
APPUCA TION FOR EXTENSION OF TIME 
(Subregulation 84(2)) 
Trade Mark No.: I 
Class: I 
Extension of time: 
Number of month(s) requested I 
Please state the circumstances justifying the application: IP/N/I/MYS/T/J 
Page 145 
I 
J 
I 
(If the space provided is insufficient, please continue on a separate sheet 
which must be firmly annexed to this Form) 
Signature of proprietor/agent: 
Name/Firm: 
Telephone No.: 
Date: 
For Official Use Only: 
Decision: (a) Your request for extension of time is approved for ................... . 
month (s) from ......................... untiL ..................... upon payment of 
RM ................................. . 
Authorised signature: ................................................... . 
Name: ........................................................................... . 
Date: ............................................................................ .. 
(b) Your request for extension is rejected. I P/N/1 !MYS/T/3 
Page 146 
INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACT 1976 
TRADE MARKS REGULATIONS 1997 
NOTICE OF ORDER OF COURT FOR RECTIFICATION OR 
ALTERA nON OF THE REGISTER 
(Subregulation 75(1)) 
1. Trade Mark No.: 
2. Class: 
3. Full name and address of the registered proprietor: ............................ . 
If the proprietor resides abroad, an address for service in Malaysia must 
be provided. 
4. Full name and address of agent (if any): ............................................ .. 
If this is the address for service and is not already on record, Form 
TM 1 must be filed with this Form. 
5. Details of the amendment required to be made: 
(An office copy of the order of court must be attached) 
Signature: 
Name of signatory (in block letter): 
Date: ........ ., ........... ., .................. . Date: INTELLECTUAL PROPERTY DIVISION-TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKSACT 1976 
TRADE MARKS REGULATIONS 1997 
ADVERTISEMENT FOR REGISTRATION 
(Subreguiatiol1 33(2») 
Your Reference No.: 
To: 
Application No.: 
Class: 
INSTRUCTIONS FOR ADVERTISING TRADE MARKS IN THE 
GAZETTE 
L Please send in four (4) copies of black/white artworks and a copy of 
coloured artwork (if relevant) as in the attached Form TM 5. 
2. Artwork must be on bromide paper, clear and measuring not more than 
7cm X 7cm and not less than 2cm X 2cm. 
3. Artwork received are not returnabJe. 
4. Please make sure that aB details on the second page are correct and notify 
the Registrar if there is any error and/or objection. 
5. Any alteration to the details 011 the second page must be filed on Form 
TM 26. 
6. Please return this Form together with the prescribed fee. 
7. Y Olir trade mark application will be abandoned if there is no repiy within 
two (2) months from the above date. 
8. Certificate of registratiora will be issued subject to opposition or any 
other matU::n relllted thereto, Page 147 lP/Nil IMYS/T/3 
Page J48 
Application No. 
Class 
Applicant's name/address 
Agent's namel 
address f~r service 
Associated with 
Condition (s) 
Goods or service 
Note: If the agent is newly appointed, please file Form TM 1. 
Signature and designation: 
IJate: .. H ....................................... . THIRD SCHEDULE 
(Regulation 5) 
CLASSIFICATION OF GOODS AND SERVICES 
PART 1 
CLASSES OF GOODS 
CLASS 1 iP/N/I/MYS/T/3 
Page 149 
Chemicals used in industry, science and photography, as well as in 
agriculture, horticulture and forestry; unprocessed artificial resins, 
unprocessed plastics; manures; fire extinguishing compositions; 
tempering and soldering preparations; chemical substances for 
preserving foodstuffs; tanning substances; adhesives used in industry. 
CLASS 2 
Paints, varnishes, lacquers; preservatives against rust and against 
deterioration of wood; colorants; mordants; raw natural resins; metals 
in foil and powder form for painters, decorators, printers and artists. 
CLASS 3 
Bleaching preparations and other substances for laundry use; cleaning, 
polishing, scouring and abrasive preparations; soap; perfumery, essential 
oils, cosmetics, hair lotions; dentifrices. 
CLASS 4 
Industrial oils and greases; lubricants; dust absorbing, wetting and 
binding compositions; fuels (including motor spirit) and illuminants; 
candles, wicks. 
CLASS 5 
Pharmaceutical, veterinary and sanitary preparations; dietetic substances 
adapted for medical use, food for babies; plasters, material for dressings; 
material for stopping teeth, dental wax; disinfectants; preparations 
for destroying vermin; fungicides, herbicides. 
CLASS 6 
Common metals and their alloys; metal building materials; transportable 
buildings of metal; materials of metal for railway tracks; non-electric 
cables and wires of common metal; ironmongery, sman items of 
metal hardware; pipes and tubes of metal; safes; goods of common 
metal not included other classes; ores. lP/NI I IMYS/T/3 
Page 150 
CLASS 7 
Machines and machines tools; motors and engines (except for land 
vehicles); machine coupling and transmission components (except 
for land vehicles); agricultural implements; incubators for eggs. 
CLASS 8 
Hand tools and implements (hand operated); cutlery; side arms; 
razors. 
CLASS 9 
Scientific, nautical, surveying, electric, photographic, cinematographic, 
optical, weighing, measuring, signalling, checking (supervision), life­
saving and teaching apparatus and instruments; apparatus for recording, 
transmission or reproduction of sound or images; magnetic data 
carriers, recording discs; automatic vending machines and mechanisms 
for coin operated apparatus; cash registers, calculating machines, 
data processing equipment and computers; fire-extinguishing apparatus. 
CLASS 10 
Surgical, medical, dental and veterinary apparatus and instruments, 
artificial limbs, eyes and teeth; orthopaedic articles; suture materials. 
CLASS 11 
Apparatus for lighting, heating, steam generating, cooking, refrigerating, 
drying, ventilating, water supply and sanitary purposes. 
CLASS 12 
Vehicles; apparatus for locomotion by land, air or water. 
CLASS 13 
Firearms, ammunition and projectiles; explosives; fireworks. 
CLASS 14 
Precious metals and their alloys and goods in precious metals or 
coated therewith, not included in other classes; jewellery, precious 
stones; horological and chronometric instruments. 
CLASS 15 
Musical instruments. 
CLASS 16 
Paper, cardboard and goods made from these materials, not included 
in other classes; printed matter; bookbinding material; photographs; 
stationery; adhesives for stationery or household purposes; artists' 
materials; paint brushes; typewriters and office requisites (except 
furniture); instructional and teaching material (except apparatus); 
plastic materials for packaging (not included in other classes); playing 
cards; printers' type; printing blocks. CLASS 11 IPINIl/MYS/T/3 
Page 151 
Rubber~ gutta-percha, gum, asbestQs, mica and gQQds made frQm 
these materials and nQt included in 10th er classes; plastics in extruded 
fQrm fQr use in manufacture; packing, stQPping and insulating materials; 
flexible pipes, nQt Qf metal. 
CLASS 18 
Leather and imitatiQns Qf leather, and gOQds made Qf these materials 
and nQt included in other classes; animal skins, hides; trunks and 
travelling bags; umbrellas, parasols and walking sticks; whips, harness 
and saddlery. 
CLASS 19 
Building materials (non-metallic); non-metallic rigid pipes for building; 
asphalt, pitch and bitumen; non-metallic transportable buildings; 
monuments, not of metal. 
CLASS 20 
Furniture, mirrors, picture frames; goods (not included in other classes) 
of wood, cork, reed, cane, wicker, horn, bone, ivory. whalebone. 
shell, amber, mother-of-pearl, meerschaum and substitutes for an 
these materials, or Qf plastics. 
CLASS 21 
Household or kitchen utensils and containers (not of precious metal 
or coated therewith); combs and sponges; brushes (except paint 
brushes); brush-making materials; articles for cleaning purposes; 
steel wool; unworked or semi-worked glass (except glass used in 
building); glassware, porcelain and earthenware not included in other 
classes. 
CLASS 22 
Ropes, string, nets, tents, awnings, tarpaulins. sails. sacks and bags 
(not included in other classes); padding and stuffing material (except 
of rubber or plastics); raw fibrous textile materials. 
CLASS 23 
Yarns and threads; for textile use. 
CLASS 24 
Textiles and textile goods, not included in other classes; bed and 
table covers. 
CLASS 25 
Clothing, footwear. headgear. 
CLASS 26 
Lace and embroidery. ribbons ~'1d braid; buttons, hooks and eyes, 
pins and needles; artificial flowers. IP IN/IlMYS/T/3 
Page 152 
CLASS 21 
Carpets, rugs, mats and matting, linoleum and other materials for 
covering existing floors; wall hangings (non-textile). 
CLASS 28 
Games and playthings; gymnastic and sporting articles not included 
in other classes; decorations for Christmas trees. 
CLASS 29 
Meat, fish, poultry and game; meat extracts; preserved, dried and 
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk 
and milk products; edible oils and fats. 
CLASS 30 
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour 
and preparations made from cereals, bread, pastry and confectionery, 
ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, 
sauces (condiments); spices; ice. 
CLASS 31 
Agricultural, horticultural and forestry products and grains not included 
in other classes; live animals; fresh fruits and vegetables; seeds, 
natural plants and flowers; foodstuffs for animals, malt. 
CLASS 32 
Beers; mineral and aerated waters and other non-alcoholic drinks; 
fruit drinks and fruit juices; syrups and other preparations for making 
beverages. 
CLASS 33 
Alcoholic beverages (except beers). 
CLASS 34 
Tobacco; smokers' articles; matches. 
PART 2 
CLASSES OF SERVICES 
CLASS 35 
Advertising; business management; business administration; office 
functions. 
CLASS 36 
Insurance; financial affairs; monetary affairs; real estate affairs. CLASS 37 
Building construction; repair; installation services. 
CLASS 38 
Telecommunications. 
CLASS 39 IPIN11/MYS/T/3 
Page 153 
Transport; packaging and storage of goods; travel arrangement. 
CLASS 40 
Treatment of materials. 
CLASS 41 
Education; providing of training; entertainment, sporting and cultural 
activities. 
CLASS 42 
Scientific and technological services and research and design relating 
thereto; industrial analysis and research services; design and 
development of computer hardware and software; legal services. 
CLASS 43 
Services for providing food and drink; temporary accommodation. 
CLASS 44 
Medical services; veterinary services; hygienic and beauty care for 
human beings or animals; agriculture, horticulture and forestry services. 
CLASS 45 
Personal and social services rendered by others to meet the needs 
of individuals. 
Made 13 August 1997. 
[KPDNIBHI/S-0.202; PN. (PU2) 316/II.] 
DATUK SERI MEGAT JUNID BIN MEGAT AYOB, 
Minister of Domestic Trade 
and Consumer Affairs IPINIlIMYS/TI3 
Page 154 
LAWS OF MALAYSIA 
Act AI078 
TRADE MARKS (AMENDMENT) ACT 2000 
Date of Royal Assent 
Date of publication in the 
Gazette 30 May 2000 
15 June 2000 LA WS OF MALAYSIA 
Act AI078 
TRADE MARKS (AMENDMENT) ACT 2000 
An Act to amend the Trade Marks Act 1976. 
ENACTED by the Parliament of Malaysia as follows: 
Short title and commencement IPfN/1/MYS/T/3 
155 
L (1) This Act may be cited as the Trade Marks (Amendment) 
Act 2000. 
(2) This Act shall come into operation on a date to be appointed 
by the Minister by notification in the Gazette. 
Amendment of section 3 
2. The Trade Marks Act 1976 [Act 175], which in this Act is 
referred to as the "principal Act", is amended in subsection 3(1)-
(a) by inserting after the definition of "Court" the following 
definition: 
, "geographical indication" means an indication which 
identifies any goods as originating in a country or 
territory or a region or locality in that country or territory, 
where a given quality, reputation or other characteristic 
of the goods is essentially attributable to their 
geographical origin;'; 
(b) by inserting after the definition of "mark" the following 
definition: 
, "Paris Convention" means the Paris Convention 
for the Protection of Industrial Property of 20 March, 
1883 as revised at Stockholm on 14 July 1967;'; and 
(c) by inserting after the definition of "transmission" the 
fonowing definition: 
, "TRIPS Agreement" means the Agreement on Trade­
Related Aspects of Intellectual Property Rights 1994 
which constitutes Annex lC to the Agreement 
Establishing the World Trade Organization~'. lP/NI liMY S/T/3 
Page 156 
New section 4A 
3. The principal Act is amended by inserting after section 4 the 
following section: 
"Protection 4A. No action or prosecution shaH be brought, instituted 
of officers. or maintained in any Court against-
(a) the Registrar of Trade Marks; 
(b) a Deputy Registrar of Trade Marks; or 
(c) an Assistant Registrar of Trade Marks, 
for any act or omission done in good faith in the performance 
of his functions and the exercise of his powers under this 
Act.". 
Amendment of section 6 
4. Section 6 of the principal Act is amended­
(a) by deleting subsection (2); and 
(b) in subsection (3) by deleting the words "of Part A or 
Part B". 
Amendment of section 10 
5. Section 1 0 of the principal Act is amended-
(a) by substituting for the marginal note the following marginal 
note: 
"Registrable trade marks."; 
(b) in subsections (1) and (2) by deleting the words "in Part 
A of the Register"; 
(c) in subsection (2A) by substituting for the words "it is 
adapted to distinguish" the words "the trade mark must 
be capable of distinguishing"; 
(d) by substituting for subsection (2B) the following subsection: 
"(2B) In determining whether a trade mark is capable 
of distinguishing as aforesaid, regard may be had to 
the extent to which-
(aJ 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 
(e) by substituting for subsection (3) the following subsection: 
"(3) trade mark may be registered the Register 
in respect of any goods or services,", Deletion of section 11 
6. Section 11 of the principal Act is deleted. 
Amendment of section 14 
7. Section 14 of the principal Act is amended-IP/NIl/MYSIT!3 
Page 157 
(a) by renumbering the existing section as subsection (1) of 
that section; 
(b) in subsection (1)-
(0 by deleting the word "or" at the end of paragraph 
(b); 
(ii) by substituting for the full stop at the end of paragraph 
(c) a semicolon; and 
Oii) by inserting after paragraph (c) the following 
paragraphs: 
"(d) if it is identical with or so nearly resembles 
a mark which is well-known in Malaysia for 
the same goods or services of another 
proprietor; 
(e) if it is wen-known and registered in Malaysia 
for goods or services not the same as to 
those in respect of which registration is 
applied for: 
Provided that the use of the mark in relation 
to those goods or services would indicate a 
connection between those goods or services 
and the proprietor of the well-known mark, 
and the interests of the proprietor of the 
well-known mark are likely to be damaged 
by such use; 
(/) if it contains or consists of a geographical 
indication with respect to goods not 
originating in the territory indicated, if use 
of the indication in the mark for such goods 
in Malaysia is of such a nature as to mislead 
the public as to the true place of origin of 
the goods; or 
(g) if· it is a mark for wines which contains or 
consists of a geographical indication 
identifying wines, or is a mark for spirits 
which contains or consists of a geographical 
indication identifying spirits, not originating 
in place indicated by the geographical 
indication in question."; and IP/N/lIMYS/T/3 
Page 158 
(e) by inserting after subsection (1) the following 
subsection: 
"(2) Article 6bis of the Paris Convention and Article 
16 of the TRIPS Agreement shall apply for the purpose 
of determining whether a trade mark is a well-known 
trade mark.". 
New section 14A 
8. The principal- Act is amended by inserting after section 14 the 
following section: . 
"Where 14A. (1) A trade mark shan not be refused registration 
registration by virtue of paragraphs (1) and (g) of section 14 if the 
shall 1" f' . . h d b d' d not he app lcatlOn or Its reglstratlOn a een ma e In goo 
refused_ faith, or if it had been used continuously in good faith 
Act 602. in the course of trade by the applicant for its registration 
or his predecessor in title, either-
(a) before the commencerilent of the Geographical 
Indications Act 2000; or 
(b) before the geographical indication in question is 
protected in its country of origin. 
(2) A trade mark shan not be refused registration by 
virtue of paragraphs (1) and (g) of section 14 if the 
geographical indication in question-
(a) has ceased to be protected; or 
(b) has fallen into disuse, 
in its country of origin.". 
Amendment of section 25 
9. Section 25 of the principal Act is amended-
(a) in subsection (1) by deleting the words "Part A or Part 
B of'; and 
(b) by deleting subsection (11). 
Amendment of section 30 
10, Subsection 30( 1) of the principal Act is amended­
(a) by deleting the words "Part A or Part B of'; and 
(b) by substituting for the words "on payment of the prescribed 
fees in the name of the proprietor in Part A or Part B of 
the Register, as the case may be," the words "in the 
Register on payment of the prescribed fees in the name 
of the proprietor,". Amendment of section 35 IP/NI1 IMYS/T/3 
Page 159 
11. Subsection 35(1) of the principal Act is amended by deleting 
the words "in Part A or Part B", 
Amendment of section 37 
12. Section 37 of the principal Act is amended by deleting the 
words "Part A of', 
Amendment of section 38 
13. Section 38 of the principal Act 1S amended by deleting 
subsection (2), 
Amendment of section 39 
14. Subsection 39(1) of the principal Act is amended by deleting 
the words "Part A or Part B of', 
Amendment of section 45 
15. Section 45 of the principal Act IS amended by deleting 
subsection (2), 
Amendment of section 55 
16. Section 55 of the principal Act is amended in the national 
language text by substituting for the word "muhibbah" wherever 
appearing the words "nama baik", 
Amendment of section 56 
17. Section 56 of the principal Act is amended­
(a) in subsection (1)-
0) by substituting for the words "A mark adapted in 
relation to any goods or services to distinguish" 
the words "A mark must be capable, in relation 
to any goods or services, of distinguishing"; and 
(ii) by deleting the words "Part A of'; 
(b) by substituting for subsection (2) the following subsection: 
"(2) In determining whether a mark is capable of 
distinguishing, the Registrar may have regard to the 
extent to which-
(a) the mark is inherently capable of distinguishing 
. in relation to the goods or services in question; 
and 
(b) by reason of the use of the mark or any other 
circumstances, the mark is in fact capable of 
distinguishing in relation to the goods or services 
in question."; and 
(c) by deleting subsection (18), IP/NIlIMYS/TI3 
Page 160 
New section 7015 
18. The principal Act is amended by inserting after section 70A 
the following section: 
"Protection 
of well­
known 
trade 
marks. 70B. (1) The proprietor of a trade mark which is entitled 
to protection under the Paris Convention or the TRIPS 
Agreement as a well-known trade mark is entitled to 
restrain by injunction the use in Malaysia in the course 
of trade and without the proprietor's consent of the trade 
mark which, or the essential part of which, is identical 
with or nearly resembles the proprietor's mark, in respect 
of the same goods or services, where the use is likely to 
deceive or cause confusion. 
(2) Nothing in subsection Cl) shall affect the 
continuation of any bona fide use of a trade mark begun 
before the commencement of this Act. 
(3) In this section, references to a trade mark which 
is entitled to protection under Article 6bis of the Paris 
Convention or Article 16 of the TRIPS Agreement as a 
well-known trade mark are to a mark which is well­
known in Malaysia as being the mark of a person whether 
or not that person carries on business, or has any goodwill, 
in Malaysia, and references to the proprietor of such a 
mark shall be construed accordingly.". 
New Part XIV A 
19. The principal Act is amended by inserting after Part XIV the 
fonowing Part: 
"PART XIV A 
BORDER MEASURES 
Interpreta- 70c. In this Part, unless the context otherwise requires­
lion. 
Act 235. "authorised officer" means-
(a) a proper officer of customs as defined under the 
Customs Act 1967; or 
(b) any officer appointed by the Minister by notification 
in the Gazette to exercise the powers and perform 
the duties conferred and imposed on an authorised 
officer by this Part; 
"counterfeit trade mark goods" means any goods, 
including packaging, bearing without authorisation a trade 
mark which is identical with or so nearly resembles the 
trade mark validly registered in respect of such goods, 
or which cannot be distinguished in its essential aspects 
from such a trade mark, and which infringes the rights 
of the proprietor of the trade mark under this Act; fP/N/I/MYS/T/3 
Page 16l 
"goods in transit" means goods imported, whether or 
not landed or transshipped within Malaysia, which are to 
be carried to another country either by the same or another 
conveyance; 
"import" means to bring or cause to be brought into 
Malaysia by whatever means; 
"retention period", in relation to seized goods, means­
(a) the period specified in a notice given under section 
70G in respect of the goods; or 
(b) if the period has been extended under section 70G, 
that period so extended; 
"security" means any sum of money in cash; 
"seized goods" means goods seized under section 70D. 
Restriction 70D. (1) Any person may submit an application to the 
on impor-Registrar statin£-tation of ~ 
counterfeit 
trade mark 
goods. (a) that he is the proprietor of a registered trade mark 
or an agent of the proprietor having the power to 
submit such application; 
(b) that, at a time and place specified in the application, 
goods which, in relation to the registered trade 
mark, are counterfeit trade mark goods are expected 
to be imported for the purpose of trade; and 
(c) that he objects to such importation. 
(2) An application under subsection (1) shall be 
supported by such documents and information relating to 
the goods as to enable them to be identified by the authorised 
officer, and accompanied by such fee as may be prescribed. 
(3) Upon receipt of the application under subsection 
0), the Registrar shall determine the application, and the 
Registrar shall within a reasonable period inform the 
applicant whether the application has been approved. 
(4) In determining the reasonable period under 
subsection (3), the Registrar shall take into consideration 
all relevant circumstances of the case. 
(5) An approval under subsection (3) shall remain in 
force until the end of the period of sixty days commencing 
on the day on which the approval was given, unless it is 
withdrawn before the end of that period by the applicant 
by giving a notice in writing to the Registrar. TP/N/l/MYS/T/3 
Page 162 
(6) Where an approval has been given under this section 
and has not lapsed or been withdrawn, the importation 
of any counterfeit trade mark goods into Malaysia for the 
duration of the period specified in the approval shall be 
prohibited. 
(7) Upon giving his approval under subsection (3) the 
Registrar shall immediately take the necessary measures 
to notify the authorised officer. 
(8) Where an authorised officer has been notified by 
the Registrar, he shall take the necessary action to prohibit 
any person from importing goods identified in the notice, 
not being goods in transit, and shall seize and detain the 
identified goods. 
Security. 70E. (1) The Registrar shall, upon giving his approval 
under section 70D, require the applicant to deposit with 
the Registrar a security which in the opinion of the Registrar 
is sufficient to-
Secure 
storage of 
seized 
goods. (a) reimburse the Government for any liability or 
expense it is likely to incur as a result of the 
seizure of the goods; 
(b) prevent abuse and to protect the importer; or 
(c) pay such compensation as may be ordered by the 
Court under this Part. 
70F. (1) Seized goods shall be taken to such secure 
place as the Registrar may direct or as the authorised 
officer deems fit. 
(2) If it is stored on the direction of the authorised 
officer, the authorised officer shall inform the Registrar 
of the whereabouts of the seized goods. 
Notice. 70G. (1) As soon as is reasonably practicable after goods 
are seized under section 700, the authorised officer shaH 
give to the Registrar, importer and the applicant, either 
personally or by registered post, a written notice identifying 
the goods, stating that they have been seized and the 
whereabout of the goods. 
(2) A notice under subsection (1) shaH also state that 
the goods will be released to the importer unless an 
action for infringement in respect of the goods is instituted 
by the applicant within a specified period from the date 
of the notice. 
(3) If at the time of the receipt of notice an action 
for infringement has been instituted by the applicant, the 
applicant shall notify the Registrar of that fact. Inspection, 
release, 
etc., of 
seized 
goods. IPINI1/MYS/T/3 
Page 163 
(4) The applicant may, by written notice given to the 
Registrar before the end of the period specified in the 
notice (the initial period), request that the period be 
extended. 
(5) Subject to subsection (6), if-
(a) a request is made in accordance with subsection 
(4); and 
(b) the Registrar is satisfied that it is reasonable that 
the request be granted, 
the Registrar may extend the intial period. 
(6) A decision on a request made in accordance with 
subsection (4) shall be made within two working days 
after the request is made, but such a decision cannot be 
made after the end of the initial period to which the 
request relates. 
70H. 0) The Registrar may permit the applicant or the 
importer to inspect the seized goods if he agrees to give 
the requisite undertakings. 
(2) The requisite undertakings mentioned in subsection 
0) are undertakings in writing that the person giving the 
undertakings will-
(a) return the sample of the seized goods to the Registrar 
at a specified time that is satisfactory to the 
Registrar; and 
(b) take reasonable care to prevent damage to the 
sample. 
(3) If the applicant gives the requisite undertakings, 
the Registrar may permit the applicant to remove a sample 
of the seized goods from the custody of the Registrar for 
inspection by the applicant. 
(4) If the importer gives the requisite undertakings, 
the Registrar may permit the importer to remove a sample 
of the seized goods from the custody of the Registrar for 
inspection by the importer. 
(5) If the Registrar permits inspection of the seized 
goods, or the removal of a sample of the seized goods; 
by the applicant accordance with this section, the 
Registrar is not liable to the importer for any loss or 
damage suffered by the importer arising out of-
(a) damage to any of the seized goods incurred during 
that inspection; or lP/N/1/MYS/T/3 
Page 164 
Forfeiture 
of seized 
goods by 
consent. (b) anything done by the applicant or any other person 
to, or in relation to, a sample removed from the 
custody of the Registrar or any use made by the 
applicant or any other person of such a sample. 
701. (1) Subject to subsection (2), the importer may, by 
written notice to the Registrar, consent to the seized 
goods being forfeited to the Government. 
(2) The notice shaH be given before any action for 
infringement in relation to the seized goods is instituted. 
(3) If the importer gives such a notice, the seized 
goods are forfeited to the Government and shall be disposed 
of in the manner prescribed by regulations made under 
this Part. . 
Compulsory 70J. (1) The Registrar shall release the seized goods to 
release of th . h' . f h . . f seized "oods e Importer on t e eXpIratIOn 0 t e retentIOn penod or 
to i~p;rler. the goods if the applicant-
Compensa­
tion for 
failure to 
take action. (a) has not instituted an action for infringement in 
relation to the goods; and 
(b) has not given written notice to the Registrar stating 
that the action for infringement has been instituted. 
(2) u-
(a) an action for infringement has been instituted in 
relation to the seized goods; and 
(b) at the end of a period of thirty days commencing 
on the day on which the action for infringement 
was instituted, there is not in force an order of the 
Court in which the action was instituted preventing 
the release of the goods, 
the Registrar shall release the goods to the importer. 
(3) If the applicant gives written notice to the Registrar 
stating that he consents to the release of the seized goods, 
the Registrar shaH release the goods to the importer. 
70K, (1) Where goods have been seized pursuant to a 
notice given under section 70D and the applicant fails to 
take action for infringement within the retention period, 
a person aggrieved by such seizure may apply to the 
Court for an order of compensation against the applicant. 
(2) Where the Court is satisfied that the person 
aggrieved had suffered loss or damage as a result of the 
seizure of the goods, the Court may order the applicant 
to pay compensation in such amount as the Court thinks 
to the aggrieved person. Actions for 
infringe­
ment of 
registered 
trade mark. 
Disposal of 
seized 
goods 
ordered to 
be for­
feited. 
Insufficient 
security. IP/N/l 
70L. (1) If an action for infringement has been instituted 
by the applicant, the Court may in addition to any relief 
that may be granted-
(a) order that the seized goods be released to the 
importer subject to such conditions, if any, as the 
Court thinks fit; 
(b) order that the seized goods be not released to the 
importer before the end of a specified period; or 
(c) order that the seized goods be forfeited to the 
Government, 
depending on the circumstances of the case. 
(2) The Registrar or the authorised officer is entitled 
to be heard on the hearing of an action for infringement. 
(3) A Court may not make an order under paragraph 
(1)( a) if it is satisfied that the Government or any statutory 
authority is required or permitted under any other law to 
retain control of the seized goods. 
(4) The Registrar shall comply with an order made 
under subsection (1). 
(5) 
(a) the action is dismissed or discontinued, or if the 
Court decides that the relevant registered trade 
mark was not infringed by the importation of the 
seized goods; and 
(b) a defendant to the action for infringement satisfies 
the Court that he has suffered loss or damage as 
a result of the seizure of the goods, 
the Court may order the applicant to pay compensation 
in such amount as the Court thinks fit to that defendant. 
70M. If the Court orders that seized goods are to be 
forfeited to the Government, the goods shaH be disposed 
of in the manner as directed by the Court. 
70N. (1) If the reasonable expenses incurred by the 
Registrar in relation to any action taken by the Registrar 
under this Part, or taken in accordance with an order of 
Court under this Part, exceed the amount of security 
deposited under section 70E, the amount of the excess is 
a debt due to the Government. 
(2) The debt created by subsection (1) is due by the 
applicant, or, there are two or more applicants, by the 
applicants jointly and severally. Page 165 r P /Nil !MY SIT 13 
Page 166 
Ex-officio 
action. 
Regulations 
relating to 
border 
measures. 700. (1) Any authorised officer may detain or suspend 
the release of goods which, based on prima facie evidence 
that he has acquired, are counterfeit trade mark goods. 
(2) Where such goods have been detained, the 
authorised officer-
(a) shall inform the Registrar, the importer and the 
proprietor of the trade mark; and 
(b) may at any time seek from the proprietor of the 
trade mark any information that may assist him to 
exercise his powers. 
(3) Subject to section 701, an importer may lodge an 
appeal against the detention of goods or suspension of 
the release of goods under subsection (1). 
( 4) The authorised officer shaH only be exempted from 
liability if his actions under subsection (1) are done in 
good faith. 
70p. (1) The Minister may make such regulations as 
may be necessary or expedient for the purpose of this 
Part. 
(2) Without prejudice to the generality of subsection 
(1), regulations may be made for-
(a) prescribing and imposing fees and providing for 
the manner for collecting such fees; 
(b) prescribing forms and notices; 
( c) providing for the manner for depositing security; 
(d) prescribing anything required to be prescribed under 
this Part.". 
Amendment of section' 73 
20. Section 73 of the principal Act is amended­
(a) in subsection (1)-
0) by deleting the words "Part A or Part B of'; and 
(ii) by substituting for the words "inherently adapted 
to distinguish, or capable of distinguishing, as the 
case may be," the words "capable of distinguishing"; 
and 
(b) in subsection (3) by substituting for the words "adapted 
to distinguish, or capable of distinguishing, as the case 
may be," the words "capable of distinguishing,". TRADE IvfA .. hZKS ACT 1976 
TRADE MARKS (AMENDMENT) REGULATIONS 2001 IP/N/J/MYS/T/3 
Page 167 
rN exercise of the powers conferred by section 83 of the Trade Marks Act 
1976 [Act 175], the Minister makes the following regulations: 
Citation and commencement 
1. (1) These regulations may be cited as the Trade Marks 
(Amendment) Regulations 2001. 
(2) These Regulations come into operation on 1 August 2001. 
Amendment of regulation 12 
2. The Trade Marks Regulations 1997 [P.U. (A) 460/97], which in these 
Regulations are referred to as the "principal Regulations", are amended in 
subregulation 12(3) by substituting for the full stop at the end of paragraph 
(c) the words ";or" and by inserting after paragraph (c) the following 
paragraphs: 
"(d) has had at least seven years of experience in the field of 
industrial property by virtue of he being an ex-officer of 
the Office; or 
(e) has acted as a trade mark agent to the satisfaction of the 
Registrar before the Trade Marks Regulations 1997 came 
into force.", 
New regulations 13A and 13B 
3. The principal Regulations are amended by inserting after regulation 
13 the following regulations: 
"Where 13A. The Registrar shall not register a mark or part IP/N/! 
Page 168 
registTation 
of mark i.s 
not allowed. of a mark ~vhe:re -
(a) the mark or part of the mark is 
identical with, or confusingly similar to, 
or constitutes a translation of a mark 
which is considered by the competent 
authority of Malaysia to be well-known 
in Malaysia, whether or not it is 
registered here, as being already the 
mark of a person other than the 
applicant for registration, and used for 
identical or similar goods or services; 
(b) the mark or part of the mark is 
identical with, or confusingly similar to, 
or constitutes a translation of a mark 
considered well-known under 
regulation 13B, which is registered m 
Malaysia with respect to goods or 
services whether or not similar to those 
with respect to which registration is 
applied for, provided that use of the 
mark in relation to those goods or 
services would indicate a connection 
between those goods or services, and 
the proprietor of the registered mark, 
provided further, that the interests of 
the proprietor of the registered mark 
are likely to be damaged by such use; 
(c) the mark or part of the mark is likely to 
mislead the public, p&"'iicularly as to Criteria of 
well-known 
mark. IP/N/1/MYS/T/3 
Page 169 
geographical origin of the goods or 
services; 
(d) the mark or part of the mark is likely to 
mislead the public if it is a mark for 
wines which contains or consists of a 
geographical indication identifYing 
wines, or is a mark for spirits which 
contains or consists of a geographical 
indication identifying spirits, not 
originating in the place indicated by the 
geographical indication in question. 
13B. In determining whether a mark is well-known 
or not, the following criteria may be taken into 
account: 
(a) the degree of knowledge or recognition 
of the mark in the relevant sector of the 
public; 
(b) the duration, extent and geographical 
area of any use of the mark; 
(c) the duration, extent and geographical 
area of any promotion of the mark, 
including advertising or publicity and 
the presentation, at fairs or exhibitions, 
of the goods or services to which the 
mark applies; JP/N/] IMYS/T/3 
Page 170 
((1) L~e durauull 2.nd g;eograp}-Jcal area uf 
any registrations, or any applications 
for registration, of the mark to the 
extent that they reflect use or 
recognition of the mark; 
(e) the record of successful enforcement of 
rights in the mark, in particular, the 
extent to which the mark was 
recognized as well-known by competent 
authorities; 
(f) the value associated with the mark."'. 
Amendment of regulation 17 
4. Subregulation 17(1) of the principal Regulations is amended by 
deleting the words "adapted to distinguish within the meaning of section 10 
or inherently.". 
New regulation 17 A 
5. The principal Regulations are amended by inserting after regulation 
17 the following regulation: 
"Request for 17 A. Any person may request the Registrar on 
search. Form TM 4A to cause a search to be made in respect 
of specified goods or services classified in anyone 
class of the Third Schedule to ascertain whether any 
trade mark is on record at the date of the search 
which resembles a trade mark of which duplicate 
representations shall accompany the Form and the 
Registrar shall cause such a search to be made and result of the search.». IP!N/l/MYS/T/3 
Page J71 
Substitution of regulation 59 
6. The principal Regulations are amended by sUbstituting for regulation 
59 the following regulation: 
"Late 59. If within one month from the expiration of the 
renewal. 
New Part XIVA last registration of a trade mark the renewal fee has 
not been paid and if Form TM 13 is filed, 
accompanied by the late renewal fee, the Registrar 
shall renew the registration without removing the 
mark from the Registrar.". 
7. The principal Regulations are amended by inserting after Part XIV the 
following part: 
Application 
to restrict 
importation 
of counterfeit 
trade mark 
goods. "PARTXIVA 
BORDER MEASURES 
83A. (1) An application under section 70D 
to the Registrar to restrict the importation of 
counterfeit trade mark goods into Malaysia by the 
proprietor or an agent of the proprietor having the 
power to submit such application shall be made in 
Form TM 30 accompanied by the prescribed fee, an 
affidavit and five copies of the application. 
(2) Each application shall be made in 
respect of a single trade mark and shall state the JP /NIl IMYS/T 13 
Page 172 
date. time ill~d place u~e CQUI1tel j~eit trade 
goods are expected to be imported. 
(3} An affidavit made under subregulation 
(1) shall state that the applicant is the proprietor of 
the mark or an agent having the power to submit 
such application, registration number of the said 
trade mark, the representation of the mark and 
interest of the applicant in the mark, if any.". 
Amendment of First Schedule 
8. The First Schedule to the principal Regulations is amended -
(a) in Part I -
(i) by inserting after Form TM 4 and the particulars relating 
thereto the following: 
For 
TM 
"4A 
and Matters or Proceedings 
Request for search Fee 
RM 
250.00"; 
(il) by inserting after Form TM 29 and the particulars relating 
thereto the following: 
Form 
T2VI 
"30 Matters or Proceedings 
Application to restrict 
importation of counterfeit 
trade mark goods Fee 
RM 
300.00"; and IPINIlIMYS/T/3 
Page 173 
rh) P.Qrt IT -\ "'"' j 
(i). by inserting after sub-item 1 (cl the following sub-item: 
"(d) Permitted information 
upon request (Hit list) 100.00 for less 
than 10 pages 
and 5.00 for 
subsequent 
pages"; and 
(il) by inserting after item 2 the following item: 
"3. Request to conduct 20.00 per hour". 
pu bhc search through 
computer 
Amendment of Second Schedule 
9. The Second Schedule to the principal Regulations is amended-
(a) by inserting after Form TM 4 and the relevant particulars the 
following: 
"4A Request for search"; 
(b) by inserting after Form TM 30 and the relevant particulars the 
following: 
"30 Application to restrict importation of counterfeit 
trade mark goods"; 
(c) by inserting after Form TM 4 the following form: IPiN/I/MYSrr/3 
Page 174 
"INTELLECTUAL PROPERTY DMSION -TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACf 1976 
TRADE MARKS REGULATIONS 1997 
REQUEST FOR SEARCH 
(Regulation 17 A) 
1. Representation of mark: TM4A 
If the space provided is insufficient, the representation may be made on a ""'.1-'=0.' 
sheet which must be firmly annexed to this Form 
The representation must be clear and durable and comply with regulation 34 of 
Trade Marks Regulations 1997. 
2. Class: 3. List of goods or services: 
4. Full name and address of applicant: 
If the applicant resides abroad, an address for service in Malaysia must be provided. 
5. Full name and address of agent (if any}: 
If this is the address for service and is not already on record, Form TM 1 must be 
filed with this Form. IP/N/I/MYS/T/3 
Page 175 
! 6. Agent's Registration No. (uknown): ...................................................................... .. 
7. Agent's own reference: ........................... < ••••••••••••••••••• t •••••••••••••••••••••••••••••••••••••••••••••• 
8. The Registrar is requested to search in Class ....................... in respect of ............. .. 
to ascertain whether the trade mark(s) are on record which resemble the trade: 
mark(sJ sent herewith in duplicate and each representation being mounted on ISO: 
A4. 
(Priority clai.m search is not included) 
Signature : ......................................................................................................... . 
Name of signatory (in block letters): ...................................................................... . 
Date : ................................................................................................................ . 
". 
and 
(d) by inserting after Form TM 29 the following form: IP/NI1IMYS/TI3 
Page 176 
"INTELLECTUAL PROPERTY DIVISION -TRADE MARK 
TRADE MARKS REGISTRY 
TRADE MARKS ACf 1976 
TRADE MARKS REGULATIONS 1997 
BORDER MEASURES 
APPUCA TION TO RESTRICT IMPORTATION OF COUNTERFEIT 
TRADE MARKS GOODS 
(Regulation 83A) 
OFFICIAL USE TM30 
Date: ................................................................................................ .. 
Fee 
* ChequelPostai OrderlMoney Order/CashIDraft No.: ...................................................... .. 
Registrar's Remark: 
Notice remain in force from ................................. until ............................................ .. 
(Not more than 60 days). 
Security Deposit ..................................................................................... .. 
(as required under section 70£ of the Trade Marks Act 1976) 
Place of storage of seized goods: ............................................................................... .. 
(as directed under section 70F of the Trade Marks Act 1976) 
Applicant: 
(Proprietor of a registered mark or agent having the power) 
Name: .......................................................................................................... . 
Address: ....................................................... , ....................................... " ..... .. IPlN/1/MYS/T/3 
Page 177 
Nationality: ................................................................................................... .. 
Telephone No.: ............................................................................................. . 
Trade Mark No.: l I 
Class: 
Representation of mark: 
Specification of goods: 
Particulars of importers of counterfeit trade mark goods: 
Name and address of the importer: ............................................................. .. 
(ii) Name and registration number of the ship, aircraft, vehicle, etc.: .................. .. 
(in) Name of the place of the counterfeit trade mark goods expected to be imported: 
(iv) Expected date and time of arrival: ............................................................... .. 
(v) Company of origin: ..................................................................................... . I 
i 
I 
, 
I 
i 
I 
I 
~------.-.--- .. ---- •.. ---.------ .. ---------------- ....... ---------------.-.-------- . __ .--
7. Interest of the applicant in the mark, if any: fP/N/1/MYS/T/3 
Page 178 
,'-'---'--------- --" .. ---------------------"'------,,--- ---,-,,------ --.. 
Signature: , ......... , ........... ' .................. , ....................................................... . 
Name of signatory (in block letters): ........................................................... .. 
Date: ........................................................................................................ . 
Delete where inapplicable.". 
Made :a, July 2001. 
[KPDN /BHI/R-OO /193/1/1; PN(PU2)316/IVj 
TAN SRI DATO' HAJI MUHYIDDIN HAJI MOHD. YASSIN 
Minister of Domestic Trade and Consumer Affairs 