InsiderTAPS (26 September 2018)
Bulletin Board: Practice updates under Trade Descriptions Act 2011
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26 Sept 2018
A circular has been issued by the Ministry of Domestic Trade and Consumer Affairs (KPDNHEP), Putrajaya following its recent meeting with the Intellectual Property Corporation of Malaysia (MyIPO) stating that, among others, a decision has been taken requiring the submission of a Registrar’s certificate certifying the details of the ownership of the registered trade mark to be submitted by a trade mark proprietor for purposes of prosecution of the infringer under the Trade Descriptions Act 2011. This requirement appears to apply regardless of whether or not the trade mark registration or the authenticity of the copy of the certificate of registration adduced by the prosecution at trial is challenged. To obtain a Registrar’s certificate, the trade mark proprietor must apply to the Registrar of Trade Marks by filing the appropriate form and paying the prescribed fee.
This further raises the question of whether the Registrar’s certificate may also be required for purposes of lodging a first instance complaint regarding counterfeiting activities to the enforcement division of KPDNHEP. Presently, a complainant (who is the registered trade mark proprietor) is only required to lodge as proof of ownership of the registered trade mark in Malaysia, a copy of the certificate of registration which requires neither certification as a true copy nor notarization in support of its complaint to the enforcement division of KPDNHEP regarding counterfeiting activities.
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