MyIPO considers introduction of non-traditional trademarks

The Intellectual Property Corporation of Malaysia (MyIPO) is considering extending the scope of protection of the Trademarks Act 1976 to non-traditional trademarks.
Due to the demands of an ever-changing market, there has recently been much talk about widening the scope of the act to introduce non-traditional marks. 
The act defines a conventional 'trademark' as a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. Registration is thus confined  to visible trademarks. Non-traditional marks, which consist of visible and non-visible signs, do not fall within the conventional category of trademarks. Visible signs include colour marks, three-dimensional marks, moving images and holograms. Non-visible signs consist of sounds, smell, taste and texture marks.
So far, the only non-traditional trademarks that have been registered in Malaysia are colour marks (provided that the element of distinctiveness is shown). In certain circumstances, a single colour mark may be registered, provided that the colour mark is confined to a specific purpose.
A graphical representation of the mark and its application on the relevant goods and/or services is necessary to satisfy the requirement of visibility set forth by Section 3(2)(a) of the act. This provision stipulates that reference to the use of a mark shall be construed as reference to the use of a printed or other visual representation of the mark.
Therefore, the difficulty in registering non-visible marks stems from the visibility requirement, as non-traditional trademarks would need to be represented graphically.
However, MyIPO is currently considering whether to dispense with the visibility requirement and is re-examining the various procedural stages of the trademark registration process to incorporate non-traditional marks. In the application stage, consideration must be given to the manner in which a sound, smell or motion mark is to be represented graphically. As Malaysian laws allow for opposition before registration, it will be necessary to consider whether the graphical representation of a non-traditional mark in the Trademarks Gazette will be adequate for this purpose. Moreover, when issuing the registration certificate of a non-traditional trademark, MyIPO will need to consider whether the mark is to be described graphically in the registration certificate. Another possible issue is the renewal of smell marks: it may be necessary for the proprietor to re-submit the smell upon renewal to ensure consistency.   

However, there has been no proposal to change the existing registrability criteria (including the test of distinctiveness) set forth in the act.
Even though this will require considerable procedural changes, it is hoped that Malaysia will be able to introduce non-traditional trademarks in the near future.
Anita Jeyanthy John and Jyeshta Mahendran, Shearn Delamore & Co, Kuala Lumpur

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