Trademark Opposition Procedure in Malaysia
Trademark opposition in Malaysia is governed under Sections 34 and 35 of Trademarks Act 2019 and Sections 23 to 34 of Trade Marks Regulations 2019. The concerned authority is Intellectual Property Corporation of Malaysia (MyIPO).
1. Filing Notice of Opposition – Any interested party may file an opposition against a published mark within a period of 2 months from the date of its publication, which is extendable by a further period of 2 months. The notice of opposition must be in writing containing the grounds of opposition and accompanied by the prescribed fee. Thereafter, the opponent must send a copy of the said notice to the applicant and submit an affidavit of service to the Registrar within 14 days from sending the copy of opposition. Failure to do so would result in the opposition deemed withdrawn.
2. Filing of Counterstatement – The applicant must file a counterstatement with the Registrar within 2 months from receiving the notice of opposition and send a copy of the counterstatement to the opponent. Thereafter, the applicant must submit an affidavit of service to the Registrar within 14 days from sending the copy of counterstatement. Failure to file a counterstatement would result in the application being deemed withdrawn.
3. Evidence in Support of Opposition – Within 2 months from receiving the counterstatement, the opponent shall file evidence in support of their opposition by way of a statutory declaration and send a copy of the same to the applicant. Thereafter, the opponent must submit an affidavit of service to the Registrar within 14 days from sending the evidence. Failure to file evidence would result in the opposition deemed withdrawn.
4. Evidence in Support of Application – Within 2 months from receiving the opponent’s evidence, the applicant shall file evidence in support of their application by way of a statutory declaration and send a copy of the same to the opponent. Thereafter, the applicant must submit an affidavit of service to the Registrar within 14 days from sending their evidence. Failure to file evidence would result in the application deemed withdrawn.
5. Evidence in Reply – Within 2 months from receiving the applicant’s evidence, the opponent may file evidence in reply by way of a statutory declaration and send a copy of the same to the applicant. If filed, the opponent must submit an affidavit of service to the Registrar within 14 days from sending their evidence in reply.
6. Written Statement – Once the evidence stage is over, the Registrar shall give a notice to the parties to submit their written submissions within 2 months from the date of notice.
7. Decision & Order – After reviewing the arguments and evidences submitted by both the parties, the MyIPO shall issue a decision within 2 months and communicate the grounds of decision to the parties.
8. Extension – Extension may be granted upon request by any of the parties, which shall not exceed more that 6 months. The party seeking extension shall inform the other party about the same.
Appeal to decision of the Opposition
Any party may file an appeal to the Court within 1 month from the date of issuance of grounds of decision. The deadline is extendable by a period of 2 months.
For more information on trademark opposition in Malaysia, please write to us at foreign.opp@ssrana.com