Malaysia | MyIPO’s Operating Guidelines and Practice Direction during MCO 3.0

On 28 May 2021, the Malaysian Prime Minister announced that Malaysia will enter a total nationwide lockdown for all social and economic sectors from 1-14 June.

Following the announcement, the Intellectual Property Corporation of Malaysia (“MyIPO”) issued its operating guidelines during the total lockdown1, and made variations to its Practice Direction No. 2/20202. The variations to the Practice Direction take effect from 1 June 2021 onwards.

There are several notable variations that were made to the Practice Direction, amongst which are:

1.       It is now possible to file a notice of opposition or counterstatement with the Registrar.

The variation made to the Practice Direction allows an opponent to file a notice of opposition and its statement of grounds by way of an email.

The applicant for a trademark which is being opposed can also now file a counterstatement by way of an email.

Payment of the prescribed fee can be made through instant online transfer.

2.       An applicant for a trademark registration, opponent, registered proprietor may file or serve a document to the Registrar by way of an email.

Following the variation made to the Practice Direction, an applicant for a trademark registration is now able to file or serve the Registrar documents which are not subject to any payment of the prescribed fee. Therefore, a reply to the Registrar’s objection letter and a written representation to a provisional refusal can now be filed by email to nopaymentcd@myipo.gov.my.

Any opponent or applicant for a registration of a trademark may now file evidence in support of opposition or other documents under the opposition proceedings by way of an email to nonpaymentoppo@myipo.gov.my.

3.       An applicant for the registration of a trademark or registered proprietor may now file or serve any application to Court on the Registrar by way of an email.

 4.      The following forms and their corresponding payment may now be filed according to the procedures set out in the Practice Direction 2/2020: 

Forms

Matter

TM7

Notice of Opposition

TM8

Counterstatement to a notice of opposition

TM27A

Application for an extension of time (for opposition proceedings)

TMD1

Notice of Opposition against the registration of a trade mark, collective mark or certification mark

TMD2

Notice of Opposition against an amendment of an application for registration of a trademark which has been published where the amendment affects the representation of the trade mark or the restriction affects the goods or services covered by the application for registration

TMD3

Notice of Opposition against an application to amend the regulations governing the use of a registered collective mark or certification mark

TMD4

Notice of Opposition against the change of classification by Registrar

TMD5

Notice of Opposition against the correction of protected international registration designating Malaysia

TMD6

Filing of a Counterstatement

TMK1

Request for an extension of time

TMK2

Request for an extension of time for opposition proceeding

 

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Karen Abraham

Partner / Head, Intellectual Property / Head, Japan Desk / Technology, Media & Telco / Personal Data Protection & Privacy Laws / India Desk
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Indran Shanmuganathan

Partner / Intellectual Property / Personal Data Protection & Privacy Laws / Competition Law & Antitrust
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Timothy Siaw

Partner / Head, Technology, Media & Telco / Intellectual Property / Healthcare and Life Sciences
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Jyeshta Mahendran

Partner / Intellectual Property / Competition Law & Antitrust / Personal Data Protection & Privacy Laws
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Janet Toh Yoong San

Partner / Head, Personal Data Protection & Privacy Laws / Intellectual Property / Technology, Media & Telco
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Michelle Loi

Partner, Intellectual Property
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