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TRADE l\!!ARKS REGULATIONS 1997
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TRADE MARKS REGULATIONS 1997
ARRANGEMENT OF REGULATIONS
PART I
PRELIMINARY
Regulation
1. Citation and commencement.
2. Interpretation.
3. Fees.
4. Forms.
5. Classification.
PART II
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, etc.
15. Arms of city, etc.
Regulation
16. Goods or services described on a mark.
17. Preliminary advice.
18.
19.
20.
21.
22.
23.
24.
25.
26.
27.
28.
29.
PART V
APPLICATION FOR REGISTRATION
Form of application.
Representation of mark.
Representations to be satisfactory.
Cases of difficulty.
Series of trade marks.
Transliteration and translation.
Amendment of application.
PART VI
PROCEDURE ON RECEIPT OF AN APPLICATION
FOR REGISTRATION OF TRADE MARK
Search.
Registrar's acceptance.
Registrar's objection.
Conditional acceptance.
Decision of Registrar.
PART VII
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.
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PART IX
ADVERTISEMENT OF APPUCAnON
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.
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.
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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.
85. 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*
IN exercise of the powers conferred by section 83 of the Trade Marks Act 1976, the Minister makes the foHowing 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 aU 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 II DOCUMENTS
Subject to any other directions that may be given by the Registrar. aU 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 pan thereof a margin of not less than four centimetres.
*Published as P.U. (A) 460197.
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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 aU the partners, or by the principal acting partner stating that he signs on behalf of ali 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 aU 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 shan in all cases be as fun 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 TMI 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 applicant, 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.
(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.be 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 theperson concerned as his address for service for all 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.
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(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.
(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.
(S) 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 oUhose 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 shan 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;
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(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.
(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
APPLICAnON 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 shan be clear 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 fun size or on a reduced scale, may, subject to the consent of the Registrar, be filed in any convenient form.
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(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. (l) 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 APPLICAnON FOR REGISTRATION 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.
(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. Registraes 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.
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(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
CERTIFICATION 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 all 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,
(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 em of the applicant's mark, the words "By Consent" shaH
the advertisement.
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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.
(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 shan 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 ofhis 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
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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. 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).
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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.
(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 shan 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
(bJ 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.
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(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.
(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 can 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
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(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;
(b) 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 aU purposes of the Act
69. Proposed assignment or transmission. (1) Any person wishing to obtain the Registrar'S written approval
ofa 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 call for any evidence or further information that he may consider necessary, and may require the statement of case to be amended to include an 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.
(3) The Registrar shaH consider whether in all 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).
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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.
(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 anow 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.
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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 shaH 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
SUPPLEMENTARY
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 shan 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).
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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.
(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 Jaw 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.
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(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 aU 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 Ii mark
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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 ()f validity by the court
21 Application by registered proprietor 120.00 for an addition to or alteration of a registered trade mark
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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 II
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
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
Page ]09
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): ................................... ., ........... ..
Date: .......................................... "' ....................................................... .
INTELLECTUAL PROPERTY DIVISION-TRADE MARK
TRADE MARKS REGISTRY rM21 TRADE MARKS ACT 1976
TRADE MARKS REGULAnONS 1997
APPLiCATION FOR REGISTRATION OF TRADE MARKS AGENT
(Subregulation 12(2»
For Official Use
Application received on: ...................................................................... .
Fee received on:................................................................................. ..
Amollnt: ............................................................................................... .
* Cheque/Postal OrderlMoney Order/CashlDraft No.: ......................... (* Please tick whichever is applicable)
I. APPliCANT:
Name:
Address:
Nationality:
Permanent residence or prinCipal place of business:
Telephone No.: .......................................................... ..
Fax No.:
Page! J J
Page 112
n. QUALIFICATIONS:
(Please attach copies of qualifications certified by a Commissioner of Oath)
.t~ ~ ..••.....•••. , ~ ~ ........ """ .•. ,, ...•.... ,o •••••• ~ •••••••••• ~ ••••••• o.~ ••• " •••••••••••••••• ~ ••••••••••••• ~ •• 0".
m. EXPERIENCE:
(Please submit in the form of statutory decIaration)
IV. DECLARATION:
I hereby declare that aU the information given above is true and correct.
Signature: ............................................................................................... .
Date: ...................................................................................................... .
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:
... ~ ... ~ ...... ~.~ ................ ~ ... ~o.'."""'.' ......................................... o." "' .......... o. ............. o. ............... "
Telephone No.: ....................................................................................... .
Fax No.: ................................................................................................. .
Page 113
Page 114
II. QUALICATIONS:
(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:
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______----11
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 (iii block letter): ...................................................... ·
Date: .............................................. ..
Page 115
Page 116
INTELLECTUAL PROPERTY DIVISION-TRADE MARK
TRADE MARKS REGISTRY
TRADE MARKS ACT 1976
TRADE MARKS REGULATIONS 1997
APPLICATION 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 markD
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.:
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: IJWe 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 fun names of all the partners must be stated.
Page 117
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 ofagent (ifany): ........................................................... .
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 ofRegistrar' sdecision: .............................................................................
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 ofany 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:
trade mark
defensive trade mark
Others
D D D
(Please tick whichever is applicable)
certification trade mark D alteration of rules of a D registered certification trade mark
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 ofagent (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.
Page 119
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 ofsignatory (inblock letter): ..................................................................
Date: ......................................... ..
Note: - A copy of this Form must be sent to the applicant for registration at his address for service.
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:
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.
Page 121
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!We hereby confirm thatby the Registrar's notice to me/us dated the............ 'daY of.. ............ the hearing of the arguments in respect of the above matter is fixed for:
Time (hours):
Date:
~-------------------------------------------------------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
REGISTERED FROM
NAME OF PROPRIETOR
GOODS/SERVICES
RegiSi:rar of Trade Marks Malaysia
Date:
.............................day of...............................
Page 123
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 s~ate~ent of grm.lll1ds of ~ppliClllti(lfl must accompany this application.
INTTELECTUAL PROPERTY DIVISION-TRADE MARK
TRADE MARKS REGISTRY
TRADE MARKS ACT 1976
TRADE MARKS REGULATIONS 1997
APPUCAnON 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: .......................................................Proprietor
.......................................................Agent
Date:
ITM 12]
Note: 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 accomnany.
Page 125
Page 126
INTELLECTUAL PROPERTY DIVISION-TRADE MARK
TRADE MARKS REGISTRY
TRADE MARKS ACT 1976
TRADE MARKS REGULATIONS 1997
APPUCAnON FOR LATE RENEWAL OF REGISTRAnON 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
APPLICAnON FOR RESTORAnON AND RENEWAL OF REGISTRAnON
(Sl.1bregl.11ation 60(2»
Trade Marlc No.: I Class: I YWe/Agent
of-
hereby apply to restore and renew the above registration. Fee is enclosed herewith.
(Cheque/Cash)
Signature: ...................................................... ,Proprietor
.......................................................Agent
Date:
I
I
Page 127
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 ASSIGNORIPRESENT/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 goodwin)
transmission
[ ] assignment without goodwill
[ ] proposed assignment (without goodwiln( �/p>
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)
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.
Page 129
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
IfWe 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:
(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 Ii 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.
Page ]31
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.:
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 marmer:
l J
(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• ., .. 'H' .. "~" ............ "........... ""., ........ ~
Signature: ....................................... . Date: ................" ................ .
If this form is filed by an agent, please attach Form TM together with this form.
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.
Page 133
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 TMI 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: .............................................................. .
INTELLECTUAL PROPERTY DIVISION -TRADE MARK
TRADE MARKS REGISTRY ITM 201 TRADE MARKS ACT 1976
TRADE MARKS REGULAnONS 1997
REQUEST BY REGISTERED PROPRIETOR OF A REGISTERED TRADE MARK FOR ENTRY ON THE REGISTER OF A NOTE
OF A CERTiFICATE OF VALlDITY 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 TMI together with this Form.
Page 135
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
NOTICE OF OPPOSITION TO AN APPUCATION FOR ADDITION
TO OR ALTERATION OF A REGISTERED TRADE MARK
(Subregulation 78(2))
INSTRUCTION Please type or write in block letters
1. Trade Mark No.:
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.
Page 137
Page 138
INTELLECTUAL PROPERTY DIVISION-TRADE MARK
TRADE MARKS REGISTRY
TRADE MARKS ACT 1976
TRADE MARKS REGULATIONS 1997
APPUCATION 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 is a partnership.
[ ) Effective from: ~ .. ~'''' ...... " ....... .......... ,," ........ ~ ............. ~ ............. -" ....
[ ] Without limit of period.
[ ] With limit Please state the expiry date: .. 00·.·.· ............. 00 ..........
[ ] Exclusive/Sole registered user.
t J Non exclusive/Not sole registered user.
[ ] 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.
Page 139
Page 140
INTELLECTUAL PROPERTY DIVISION-TRADE MARK.
TRADE MARK REGISTRY
TRADE MARK ACT 1976
TRADE MARKS REGULAnONS 1997
APPLICATION FOR VARIATION OR CANCELLATION OF THE REGISTRATION 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 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 marie.
Page 141
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 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.
Registration No. (if Known): ................................................. ..
6. Agent's own reference: ........................ ,................................................ ..
Page] 43
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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): ....................................................... .
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INTELLECTUAL PROPERTY DIVISION-TRADE MARK
TRADE MARK REGISTRY
TRADE MARK ACT 1976
TRADE MARKS REGULATIONS 1997
APPUCAnON FOR EXTENSION OF TIME
(Subregulation 84(2))
Trade Mark No.: I I Class: I I
Extension of time:
Number of month(s) requested I I
Please state the circumstances justifying the application: (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.
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I
INTELLECTUAL PROPERTY DIVISION-TRADE MARK
TRADE MARKS REGISTRY
TRADE MARKS ACT 1976
TRADE MARKS REGULATIONS 1997
NOTICE OF ORDER OF COURT FOR RECTIFICATION OR ALTERAnON 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. YOlir 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 Dr any other matU::n reillted thereto,
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Page J48
Application No.
Class
Applicant's name/address
Agent's namel address f~r service
Associated with
Condition (5)
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
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, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included other classes; ores.
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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.
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CLASS 11
Rubber~ gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
CLASS 18
Leather and imitations of leather, and goods made of these materials and not 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, hom, bone, ivory. whalebone. shell, amber, mother-of-pearl, meerschaum and substitutes for an these materials, or of 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.
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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.
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CLASS 37
Building construction; repair; installation services.
CLASS 38
Telecommunications.
CLASS 39
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