Malaysia permits sound, colour and shape marks
Malaysia now accepts trademark applications for smell, sound, colour and shape, as outlined in the country’s Trademarks Bill 2019.
The bill was passed by parliament on Monday, July 2.
Under the new law, the scope of protection for trademarks, which currently covers traditional marks only, will be extended to non-traditional marks such as shapes, sounds, scents, colours, holograms, positions and motions.
Previously, only conventional trademarks, such as names, words and signatures could be trademarked under act 175 of Malaysia’s Trademarks Act 1976.
The country’s Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen, told Malaysian news website, Malay Mail, that the scope had been widened to modernise the law.
Jen said the new bill is in line with the current needs of traders and businesses in the country which have “vested interest” in non-traditional marks.
Kherk Ying Chew, a partner and head of the dispute resolution and IP practice at Wong & Partners, said that while there had been uncertainty in the country over the registration of shape marks, the clear protection laid out by the bill will likely change this and align Malaysia’s trademark laws with those in more advanced countries.
But, she predicted that the registration of other non-traditional marks may gain traction at a slower pace.
“Looking at similar developments and filings in other countries which have allowed protection for non-traditional marks, we do not expect a deluge of such filings in Malaysia for scent, sounds, holograms or motion marks,” she said.
“This is also because there is a degree of scrutiny and close examination before such marks will be accepted. Further, most businesses in Malaysia may not have expanded to using non-traditional branding elements such as scents and motion marks to retail their products and services,” she added.
Malaysia is the latest country to allow the registration of non-traditional marks, with countries such as Japan and Mexico changing their laws in recent years. In March 2018, Mexico amended its law to allow the registration of sound, smell and holographic marks.
Japan has allowed the registration of sound, smell and holographic marks since 2015.
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