KDN NO: PP 9889/7/97 APRIL 1998 ISSUE NO.1/98

This edition of MY News comes at a time of economic upheaval and legislative changes. The capricious nature of the implementation of service mark registration effective 1st December 1997 by virtue of the amendments to the Trade Marks Act, 1976 made by the Trade Marks (Amendments) Act, 1994 did not allow for as smooth a transition as we anticipated since the changes are quite radical in nature. The problems have been compounded by the introduction of notable procedural changes brought about by the new Trade Marks Regulations (1997).

Clearly, there have been significant changes precedential in magnitude and this may, not surprisingly, cause some inconvenience.

With the introduction of service mark registration the present classes have been extended from International Classification 35 to 45. As a result of the inclusion of service marks, the search for prior rights will now extend to cover, in relation to trade marks applied on goods, those services which are closely related to the goods for which registration is sought, and with respect to service marks, the examination will include marks for goods which are closely related to those services.

The new regulations no longer require the applicant/registered proprietor/registered user to file a Power Form.

Each new application for trade/service mark registration must be accompanied by a Statutory Declaration by the applicant claiming to be the bona fide proprietor of the mark. The declaration must be made in the prescribed form, and affirmed before any court, judge, justice of the peace, magistrate, notary public or other officer authorised by law to administer an oath for the purpose of any legal proceedings.

The initial period of registration has been extended from seven (7) years to ten (10) years. After the expiry of the initial period, the registered mark may be renewed for periods of ten (10) years each, as opposed to the longer period of fourteen (14) years under the old law. The registration can no longer be renewed if the application for renewal is not made within one year after the expiration of the last registration.

Priority Claims under the Paris Convention are now, for the first time, allowed in Malaysia. Copies of priority applications/registrations are preferably submitted simultaneously with the filing of the application. However, the said priority documents can be filed within three months from the date of filing or upon the Registrar's request, whichever is the earlier. It should be noted that the priority documents have to be certified true copies.

Prior to the amendments, requests for an extension of time attracted no charge. This is no longer the case. Now, every application for an extension has to state (in months) the extra time needed. For the initial month, a fee of USD52 is incurred, and for every subsequent month thereafter, an additional USD35. The Registrar reserves the discretion at all times to refuse to grant the extension.

The new Regulations introduce a new system for the registration of trademark agents. Effective from 1st December 1997 it is compulsory that all applications and official forms be signed by a registered trademark agent acting on behalf of the applicant.

One of the most notable changes resulting from the new Regulations is the marked increase of the trademark official fees. For example, the official fee for filing a new trademark application has been increased by seven fold to USD94 and the renewal official fee has increased by six fold. In light thereof, it has become necessary for us to revise our schedule of official charges, though our service fees are maintained. The new schedule is effective from 1st December 1997.

The Registry of Patents has been undergoing a massive upgrading of its computer systems with a view to improving its service to applicants. This has inevitably led to prolonged delays and the issuing of official filing receipts is obviously one of their affected work areas.

The good news is that the Registry has recently started to issue filing receipts using the newly devised system and while it may take some time before the backlog is cleared, the position is slowly returning to normal.

Although there is no definite news on when the Malaysian Industrial Design Act 1996 will come into force, the Director of the Intellectual Property Division of the Ministry of Domestic Trade and Consumer Affairs said recently that this is likely to occure this year.

Currently, the way to obtain design protection in Malaysia and Singapore is to file in the United Kingdom. After registration the proprietor enjoys rights and privileges as though the registration had been issued with an extension to these countries.

No formal action is needed before a registered design can be enforced but publication of a notice in the press warning of the existence of the registration is necessary if damages are to be awarded in any infringement action.

We are pleased to announce that in line with our company's continuing commitment to enhance and widen our range of services, the following professionals have recently been recruited to join our team: Mr. Gan Boon Hui, Ameen Kalani, Clara C.F. Yip and Ng Mae Lin.

Mr. Gan, Master of Agriculture in Microbiology, (Kyushu) Japan, graduated in 1968. He has since worked with several Japanese engineering firms and has held the portfolio of a chief engineer in a prominent local Japanese company. He is well-versed in most major technical disciplines and is also conversant in both Japanese and Mandarin.

Ameen, LL.B (Hons.) (I.I.U.) Malaysia, has extensive experience with a leading intellectual property firm in Singapore in various aspects of patent work including preparation and amendment of patent applications, claims and abstracts, formalities, renewals, assignments, international applications and written opinions. He will be overseeing our new Singapore liaison office and will deal with clients on patent and trademark prosecution in Singapore.

Clara, B.A.(Econs) LL.B. (Auckland) New Zealand, has been called to the Bar in New Zealand and Malaysia. She has been a practicing advocate and solicitor in the areas of commerce, corporate banking and intellectual property law. She joins our trademark and licensing department and sees to the protection and enforcement of these rights as well as the drafting and preparation of licensing agreements.

Ng Mae Lin, LL.B. (Queensland) Australia, has been called to the Malaysian Bar. She practices primarily in trademark law and is responsible for presenting written submissions and arguments in overcoming the Registrar's objections on registrability of trade marks.

It also gives us great pleasure to announce the setting up of our new licensing department which will be supervised by Ms Clara C.F. Yip. This will enable us to offer a more comprehensive service to clients and associates intending to enter into intellectual property licensing arrangements particularly in relation to joint ventures, transfers of technology, franchising and distributorship. We provide legal advice and assistance to clients and associates in connection with the various aspects of intellectual property protection in licensing arrangements including representation in negotiations, drafting and implementation of agreements as well as applications for formal approvals and licenses from the relevant governmental authorities.

Our Singapore Liaison Office will commence business on 29th April 1998. The address is as follows:

Clients and foreign associates may direct enquiries pertaining to Singapore patent and trademark matters to Mr. Ameen Kalani who will be managing our Liaison Office.

The setting up of this office will facilitate urgent filings in Singapore and enable us to attend to imminent official deadlines expeditiously. However, in the interests of efficiency and record keeping, it is advisable that all non-urgent matters be sent to our Kuala Lumpur office since the computer generated deadline system, accounting records and the entire prosecution of the application will continue to be handled in the Kuala Lumpur office.

The information contained herein is based on data believed to be reliable and published in good faith to give a general overview of current intellectual property issues and updates.

Any interested party is advised to contact Henry Goh & Co Sdn Bhd for further details prior to relying on the contents of this newsletter.

HENRY GOH & CO. SDN. BHD. (332744 A)

REGISTERED PATENT AND TRADEMARK AGENTS