Trademarks Act 2019 with Overview
The Trademarks Act 2019 came into force on December 27, 2019 and has repealed the Trade Marks Act 1976. This publication presents the full text of the Trademarks Act 2019 and the Trademarks Regulations 2019.
To facilitate understanding of the new legislation, the author has provided an expert overview which highlights the following salient features of the new Act:
Greater clarity on the registration of non-traditional trademarks;
The registration of collective marks;
Removal of the concepts of defensive trademarks and associated trademarks;
Multi-class filings, divisions and mergers of applications previously unavailable under the Trademarks Act 1976;
Greater clarity on the examination of trademarks;
New provisions on opposition and appeal procedures;
Rearrangement of the provisions pertaining to cancellation actions;
Illuminates the provisions pertaining to trademark infringement, including acts amounting to infringement, secondary liability, usage of signs, available defences and procedures and remedies (including the new remedy for groundless threat of infringement proceedings);
Criminal offences relating to trademark infringement (previously found under the Trade Descriptions Act 2011) are now consolidated and provided for under the Trademarks Act 2019;
Commercialization of trademarks;
New provisions pertaining to the role and administrative procedure of trademark agents.
The overview is written by an expert and seasoned practitioner with vast knowledge and experience on matters relating to Intellectual Property law, who was accorded the accolade of the Asia law Regional Award 2019 for Outstanding Practitioner in Malaysia.
This publication is an essential source for lawyers, all Intellectual Property practitioners, academics and students of law, and is invaluable in facilitating a good understanding of the new statutory regime regulating trademarks and related practices in Malaysia.
Indran Shanmuganathan is a Partner in the Intellectual Property & Technology Department at Shearn Delamore & Co. His practice spans over two decades which largely involves various spectrums of seasoned IP litigation including Patent, Trademark, Copyright, Domain Names disputes and Industrial Design cases where some of his litigated cases have provided reference or precedent value. He has also advised major industry players on IP strategies and litigated on IP issues with clients from diverse industries such as major renowned worldwide sporting bodies, pharmaceutical companies, automotive clients, clients from the service industry such as hotel chains, restaurants and various consumer product companies.
He regularly appears as lead counsel in complex and novel cases or appeals which encompass cutting edge IP issues in Malaysia’s apex court. He is often sought out for his specialist foresight into formulating litigation strategies and for IP startup and management issues. Indran was the lead counsel in a historic landmark case [Merck Sharp & Dohme Group & Anor v Hovid Bhd  9 CLJ 1] which successfully resulted in the extremely rare occurrence of the apex court overturning one of its previous decisions. Given that this feat has been achieved only six times in Malaysia’s history since 1967, he stands as the first IP lead counsel in the first IP case in Malaysia to achieve this credential. The outcome of the case has also created the buzz in the IP community and has been recognized and nominated as a globally impact case in the patent industry setting the precedent standard at present for that relevant area in the law. He was also accorded with the accolade of the Asia law Regional Award 2019 for Outstanding Practitioner in Malaysia and has earned worthy recognition in several leading global publications. He has also been approached to provide his insights by various publications and publishing houses on various aspects of IP law.
His non-contentious portfolio often sees him sought out for tailor-made niche advisory services to clients which include due diligence exercises, implementation of IP protection strategies, advisory, drafting and regulatory processes relating to IP, IT, and Tech, as well as Franchise Agreements. His experience further extends to pharmaceutical and food advertising, domain name disputes, licensing, sponsorship, and merchandising matters. He also provides advice on matters relating to personal data protection & privacy laws and on competition antitrust-related work in the area of compliance including the preparation of competition policy and competition dispute resolution.