*AKTA CAP DAGANGAN 2019

) This Act comes into operation on a date to be appointed by the Minister by notification in the Gazette and the Minister may appoint different dates for the coming into operation of different

Parts or provisions of this Act.

Interpretation

which the proprietor of the trademark is or may be connected to in the course of trade from goods or services; or

in the case of which no such connection subsists or where the trademark is registered or intended to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration;

“geographical indication” has the meaning assigned to it under section 2 of the Geographical Indications Act 2000 [Act 602];

“International Register” means the official collection of data concerning international registration of trademarks maintained by the International Bureau of the World Intellectual Property

Organization;

“international registration” means registration of a trademark in

Trademarks 15

the International Register;

“licensee” means a person who is entitled to exercise his rights under Part X upon being authorized by a registered proprietor of trademark;

“limitations” means limitations of the right to the exclusive use of a trademark given by the registration of the trademark including limitations of that right as to—

mode of use;

use within a territorial area within Malaysia; or

use in relation to goods to be exported to a market outside

Malaysia or use in relation to services to be provided in a place outside Malaysia;

“Paris Convention” means the Paris Convention for the Protection of

Industrial Property of 20 March 1883 as revised from time to time;

“prescribed” means, in relation to proceedings before the Court or preliminary thereto or connected therewith, prescribed by rules of court made by the Rules Committee constituted under the

Courts of Judicature Act 1964 [Act 91], and in other cases, prescribed by the Minister in the regulations made under this Act;

“protected international registration designating Malaysia” means a trademark to which protection resulting from the international registration of the trademark is extended to Malaysia;

“Register” means the Register of Trademarks kept under section 14;

“registered proprietor” means the person for the time being entered in the Register as the registered proprietor of the trademarks;

“registered trademark” has the meaning assigned to it under section 16;

“registrable transactions” means transactions determined by the

Registrar in the guidelines or practice directions under section 160;

16

Laws of Malaysia

“Registrar” means a person appointed as a Registrar of Trademarks under subsection 10(1);

“repealed Act” means the Trade Marks Act 1976 [Act 175];

“sign” includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof;

“this Act” includes any subsidiary legislation made under this Act;

“trade” includes any business or profession;

“transmission” means transmission by—

operation of law;

testamentary disposition; or

any other kind of transfer except assignment;

“TRIPS Agreement” means the Agreement on Trade-Related

Aspects of Intellectual Property Rights 1994 which constitutes

Annex 1C to the Agreement Establishing the World Trade

Organization.

Definition of “trademark”

)

A sign may constitute a trademark even though it is used in relation to a service ancillary to the trade or business of an undertaking and whether or not the service is provided for money or money’s worth.

)

References in this Act to a trademark includes, unless the context otherwise requires, references to a collective mark or certification mark.

Trademarks 17

Definition of “well-known trademark”

is a national of a Convention country; or

is domiciled, or has a real and effective industrial or commercial establishment, in a Convention country, whether or not that person carries on business, or has any goodwill, in

Malaysia.

) In determining whether a trademark is well-known in Malaysia, the Registrar or the Court shall have regard to the criteria as prescribed.

Definition of “earlier trademark”

a registered trademark or a protected international registration designating Malaysia, the application for registration of which was made earlier than the trademark in question, taking into account the priorities claimed in respect of the trademarks, where appropriate; or

a trademark which, at the date of application for registration of the trademark in question or of the priority claimed in respect of the application, where appropriate, was a well-known trademark, and includes a trademark in respect of which an application for registration has been made and which, if registered, would be an earlier trademark by virtue of paragraph (a) subject to it being so registered.

18

Laws of Malaysia

Definition of “infringing goods”, “infringing material”, “infringing articles”, “counterfeit goods” and “counterfeit trademarks”

the application of the sign to the goods or their packaging was an infringement of the registered trademark;

the goods are proposed to be imported into Malaysia and the application of the sign in Malaysia to them or their packaging would be an infringement of the registered trademark; or

the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trademark.

)

Material is “infringing material”, in relation to a registered trademark, if it bears a sign identical with or similar to that trademark and either—

it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trademark; or

it is intended to be so used and such use would infringe the registered trademark.

)

“Infringing articles”, in relation to a registered trademark, means articles—

which are specifically designed or adapted for making copies of a sign identical with or similar to that trademark; and

which a person has in his possession, custody or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material.

Trademarks 19

)

Goods are “counterfeit goods”, in relation to a registered trademark, if—

they are infringing goods in relation to that trademark;

and

the sign borne by them or their packaging is a counterfeit trademark.

)

A sign is a “counterfeit trademark”, in relation to a registered trademark, if the sign—

is identical with the registered trademark as to be calculated to deceive; and

is applied to goods or services—

without the express or implied consent, conditional or otherwise, of the registered proprietor; and

to falsely represent the goods or services to be the genuine goods or actual services of the registered proprietor or a licensee of the registered trademark.

References to use of trademark

)

References to the use of a trademark in relation to goods shall be construed as reference to the use of the trademark upon, or in physical or other relation to, the goods.

)

References to the use of a trademark in relation to services shall be construed as references to the use of the trademark as a statement or as part of a statement about the services.

)

Any aural representation of a trademark shall be construed as references to the use of the trademark.

20

Laws of Malaysia

)

Where a person has used a trademark with additions or alterations, the Registrar or the Court may decide that the person has used the trademark if it does not substantially affect the identity of the trademark as the Registrar or the Court thinks fit.

Use of trademark for export trade or where form of trade changes

) The use of a registered trademark in relation to goods or services where a form of connection in the course of trade subsists between the goods or services and the person using the trademark shall not be deemed to be likely to cause deception or confusion only on the ground that the trademark has been or is used in relation to goods or services where a different form of connection in the course of trade subsisted or subsists between the goods or services and that person or predecessor in title of that person.

Determination of likelihood of confusion

) In determining whether the use of a sign is likely to cause confusion on the part of the public, the Registrar or the Court may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with a registered trademark.

Trademarks 21

)

The Registrar shall perform the duties imposed and exercise the powers conferred on him under this Act for the proper administration of this Act.

)

The Corporation may appoint, on such terms and conditions as the Corporation may determine, from amongst persons in the employment of the Corporation, such number of Deputy Registrars of Trademarks, Assistant Registrars of Trademarks and other officers as may be necessary for the proper administration of this

Act.

)

Subject to the general direction and control of the Registrar and to such conditions or restrictions as may be imposed by the

Registrar, a Deputy Registrar or an Assistant Registrar may exercise any power of the Registrar under this Act.

)

The Registrar shall have a seal of such device as may be approved by the Corporation and the impressions of such seal shall be judicially noticed and admitted in evidence.

Protection of Registrar, Deputy Registrars, Assistant Registrars and other officers

the Registrar, Deputy Registrars, Assistant Registrars or any other officer, in respect of any act ordered or done for the purpose of carrying into effect this Act; and

22

Laws of Malaysia

any other officer in respect of any act done or purported to be done by him under the order, direction or instruction of the Registrar, if the act was done in good faith and in a reasonable belief that it was necessary for the purpose intended to be served by it.

Trademarks Office and other branch offices

)

In addition to subsection (1), for the purposes of this Act, such number of branch offices of the Trademarks Office as may be necessary shall be established.

)

Any document required by this Act to be filed at the

Trademarks Office may be filed at any branch office of the

Trademarks Office and reference in this Act to the submission at the

Trademarks Office includes reference to the submission at a branch office.

)

All communication with the Trademarks Office shall be in the national language or English language.

Preliminary advice and search by Registrar

)

Any person may apply for a preliminary advice and search result in the form as determined by the Registrar together with the payment of the prescribed fee.

)

Notwithstanding that an application for the registration of trademark is made within the prescribed period and the Registrar has given preliminary advice or search result in the affirmative, the

Trademarks 23

Registrar, after further investigation or consideration, may raise any refusal to the effect that the trademark is not registrable.

)

In the circumstances under subsection (3), the applicant shall be entitled to have any fee paid on the filing of the application refunded to him subject to the prescribed conditions, upon giving notice of the withdrawal of the application within the prescribed period.

)

The application made by the applicant in subsection (2), and the preliminary advice and search result given by the Registrar are confidential and shall not be made available for public inspection.

)

The Register shall contain all such matters and particulars relating to trademarks as prescribed.

)

The Register shall be kept in such form as determined by the

Registrar.

Inspection of Register

)

Subject to the conditions in subsection (1), certified copies or extracts of any entry in the Register sealed with the seal of the

Registrar shall be given to any person upon application in the form as determined by the Registrar together with the payment of the prescribed fee.

24

Laws of Malaysia

the person is using or intends to use the trademark in the course of trade; or

the person has authorized or intends to authorize another person to use the trademark in the course of trade.

) An application for the registration of trademark shall be made in the form as determined by the Registrar within the prescribed period together with the payment of the prescribed fee.

) If the trademark applied for registration contains or consists of a word which is not in Roman characters, or the national language or English language, the applicant shall, within the prescribed period, furnish the Registrar with the following:

the transliteration of the trademark;

the translation of the trademark; or

Trademarks 25

any information as determined by the Registrar.

) If the requirements under subsection (2) or (3) are not complied with within the prescribed period, the application shall be deemed withdrawn.

) A person who applies for the registration of trademark may request to the Registrar for an expedited examination by filing an application in the form as determined by the Registrar within the prescribed period together with the payment of the prescribed fee.

Application in multiple classes

) An application under subsection (1) shall result in one registration.

Classification of goods or services

) If any question arises as to the class within which any goods or services are comprised, that question shall be decided by the

Registrar.

Colour of trademark

)

For the purposes of subsection (1) or in the case where the applicant does not apply to limit, in whole or in part, to one or more specified colours of the trademark, the Registrar may limit, in whole or in part, to one or more specified colours of the trademark in determining whether the trademark is distinctive.

26

Laws of Malaysia

)

Where a trademark is registered without limitations as to colour, it shall be deemed to be registered for all colours.

Series of trademarks

resemble each other in material particulars; and

differ only in respect of one or more of the following matters:

statements or representations as to the goods or services in relation to which the trademarks are used or intended to be used;

statements or representations as to number, price or quality;

standard fonts which does not substantially affect the identity of the trademarks; or

the colour of any part of the trademark

)

If the application meets all the requirements under subsection (1), the Registrar shall register the trademarks as a series in one registration.

)

A trademark which has been registered as part of a series trademark may be used independently.

Date of filing

)

Where the requirement under section 17 is fulfilled on different days, the Registrar shall record the date of filing on the

Trademarks 27

last day of those days.

)

Any date of priority claimed under section 26, 27 or 28 shall have no effect on the date of filing of application recorded under subsection (1) or (2) except for the purposes of a search under subsection 29(2).

signs which are not capable of being represented graphically and not capable of distinguishing goods or services of one undertaking from those of other undertakings;

trademarks which are devoid of any distinctive character;

trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics of goods or services or the time of production of goods or of rendering of services; or

trademarks which consist exclusively of signs or indications which have become customary in the current language of the territory or in the bona fide and established practices of the trade.

)

Notwithstanding paragraphs (1)(b), (c) and (d), the Registrar shall not refuse to register an application of a trademark if, before the date of application for registration, the trademark has in fact acquired a distinctive character as a result of its use.

)

The Registrar shall refuse to register a sign as a trademark

28

Laws of Malaysia if the sign consists exclusively of—

the shape which results from the nature of the goods themselves;

the shape of goods which is necessary to obtain a technical result; or

the shape which gives substantial value to the goods.

)

Notwithstanding subsections (1) and (2), the Registrar shall refuse to register the following as a trademark if:

the trademark consists exclusively of the name of a country; or

the trademark contains or consists of recognized geographical indications.

)

In addition to the grounds in subsections (1), (3) and (4), the

Registrar shall refuse to register a trademark based on any of the following absolute grounds for refusal of registration:

if the use of the trademark is likely to deceive or cause confusion to the public or contrary to any written law;

if it is of such a nature as to deceive or mislead the public as to the nature, quality or geographical origin of the goods or services;

the trademarks are contrary to public interest or to morality;

the trademarks contain or consist of any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;

the trademarks contain a matter which is in the opinion of the Registrar is or might be prejudicial to the interest or security of the country;

the trademarks contain or consist of the name or

Trademarks 29

representation of another person whether living or dead unless the applicant furnishes the Registrar with the consent of that person, if living, or of the representative of that person if deceased;

the trademarks contain or consist of flag of a country, national emblem, emblem, insignia or royal arms unless the applicant furnishes the Registrar with the authorization of the competent authorities or international intergovernmental organization as specified in section 78

or 79, as the case may be;

the trademarks contain or consist of a word which is commonly used as or is the accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, or which is declared by the World Health Organization as an international non-proprietary name or which is deceptively similar to such name unless it is used—

to denote only a brand or to make the element or compound as made by the proprietor of the trademark or the licensee as distinguished from the element or compound as made by others; and

in association with a suitable name or description open to public use; or

the trademarks contain or consist of any of the following signs or a sign similar to any of those signs as is likely to be taken for that sign:

the word “Patent”, “Patented”, “By Royal Letters

Patent”, “Registered”, “Registered Design”, and

“Copyright” or words to the like effect in any language whatsoever; or

any sign as prescribed.

30

Laws of Malaysia

Relative grounds for refusal of registration

) The Registrar shall refuse to register a trademark if there exists a likelihood of confusion on the part of the public—

where the trademark is identical with an earlier trademark and is to be registered for goods or services similar to the earlier trademark; or

where the trademark is similar to an earlier trademark and is to be registered for goods or services identical with or similar to the earlier trademark.

)

The Registrar shall refuse to register a trademark if—

it is identical with or similar to a well-known trademark which is not registered in Malaysia and it is to be registered for the identical goods or services of the proprietor of the well-known trademark; or

it is identical with or similar to a well-known trademark which is registered in Malaysia and it is to be registered for goods or services which are not identical or not similar to those in respect of which the well-known trademark is registered and—

the use of the trademark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known trademark;

there exists a likelihood of confusion on the part of the public because of such use; and

the interests of the proprietor of the well-known trademark are likely to be damaged by such use.

)

Subject to subsection (6), the Registrar shall refuse to register a trademark if, or to the extent that, its use in Malaysia is

Trademarks 31

prevented—

by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade including under the law of passing off; or

by virtue of an earlier right other than those referred to in paragraph (a) or in subsections (1) to (3) including under the law of copyright or industrial designs.

)

A person entitled to prevent the use of a trademark is referred to in this Act as the proprietor of an “earlier right” in relation to the trademark in subsection (4).

)

The Registrar may refuse to register a trademark on any grounds under subsection (4) if that ground is raised in proceedings in opposition to the registration under section 35 by the proprietor of the earlier right.

)

Notwithstanding the relative grounds for refusal of registration under subsections (1), (2), (3) and (4), the Registrar may register a trademark if the proprietor of the earlier trademark or other earlier right consents to the registration in the prescribed manner and shall take into account the interest of the public and the likelihood of confusion on the part of the public.

)

For the purposes of this section, if the registration of an earlier trademark expires, the Registrar, in determining the registrability of a trademark shall continue to take into account the earlier trademark for a period of twelve months after its expiry.

Honest concurrent use, etc.

that there has been an honest concurrent use of the trademark and the earlier trademark or other earlier right; or

that by reason of other special circumstances it is proper

32

Laws of Malaysia for the trademark to be registered.

)

The registration of trademark under subsection (1) shall be subject to such limitations and conditions as the Registrar or the

Court thinks fit to impose.

)

Nothing in this section—

shall prevent the Registrar from refusing to register a trademark on any of the grounds under section 23; or

shall affect the making of an application for a declaration of invalidity under subsection 47(3).

)

For the purposes of subsection (1)—

the date of filing of the first Convention application shall be the relevant date in establishing which rights take precedence; and

the registrability of the application of the trademark shall not be affected by any use of the trademark in

Malaysia in the period between the date of filing of the first Convention application and the date of the application of the same trademark under this Act.

)

Where a right of priority is claimed by reason of a Convention application under subsection (1), the application for registration of the same trademark shall specify—

Trademarks 33

the date of filing of the first Convention application;

the Convention country in which the Convention application was first filed;

the application or registration number of the Convention application accorded by the registering or other competent authority of the relevant Convention country; and

the goods or services to which the claim relates.

)

Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.

)

A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application—

the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and

it has not yet served as a basis for claiming a right of priority.

)

For the purposes of subsection (5), the previous application may not serve as a basis for claiming a right of priority.

)

A right to priority arising as a result of a Convention application may be assigned or transmitted together with the application or independently and the reference in subsection (1) to the applicant’s “successor in title” shall be construed accordingly.

)

For the purposes of this section, a “regular national filing”

means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.

34

Laws of Malaysia

Claim to priority from other relevant overseas application

)

In relation to a declared foreign country, this section shall apply only for the duration of the period the order continues in force in respect of that country.

)

For the purposes of this section, all requirements and procedures in section 26 shall be applicable.

Claim to priority from temporary protection of trademark which is the subject matters of international exhibition given under

Article 11 of Paris Convention

)

The temporary protection granted under subsection (1)

shall not extend any period of priority claimed by an applicant in section 26 and where a right of priority is claimed by an applicant subsequent to the temporary protection, the period of priority shall remain six months and which shall commence from the date of the introduction of the goods or services into the exhibition.

)

An applicant for registration of trademark whose goods or services are the subject matters of an exhibition at an official or officially recognized international exhibition in Malaysia or in any

Convention country or declared foreign country and who applies for registration of that trademark in Malaysia within six months from the date on which the goods or services first became the subject matter of the exhibition shall, on his request, be treated as giving rise to the right of priority for search purposes under subsection 29(2) when the goods or services first became the subject matters of the exhibition.

Trademarks 35

)

Evidence that the goods or services bearing the trademark are the subject matters of an exhibition at an official or officially recognized international exhibition shall be by a certificate issued by the competent authorities of the exhibition and to be filed with the Registrar upon filing the application for registration of trademark in Malaysia.

)

For the purpose of an examination under subsection (1), the

Registrar shall carry out a search, to such extent as he considers necessary, of earlier trademarks.

)

Upon examination, where the Registrar finds that the application fulfills the requirements for registration of trademark, the Registrar shall accept the application.

)

Where the Registrar accepts the application for registration of trademark, the Registrar shall record the date of filing of the application under section 22 as the date of filing.

)

If the application for registration of trademark does not fulfill any requirements for registration of trademark, the Registrar shall inform the grounds of provisional refusal to the applicant by a written notice and the applicant shall have an opportunity to—

make representations;

amend the application so as to meet the conditions, amendments, modifications or limitations, as the

Registrar deems fit to impose; or

furnish additional or any other information or evidence, within such period as the Registrar may specify in the

36

Laws of Malaysia written notice.

)

For the purposes of subsection (5)—

the application shall be deemed withdrawn if the applicant does not respond within such period as specified by the Registrar in the written notice; and

the Registrar shall refuse the application if the applicant’s response does not satisfy the Registrar that those requirements are fulfilled and the Registrar shall, if required by the applicant, state in writing the grounds of the total provisional refusal.

)

The Registrar, upon the request of the applicant, may defer any action in relation to the application for registration of trademark under prescribed circumstances and for a prescribed period.

)

Where an appeal lies to the Court against the decision of the

Registrar relating to a total provisional refusal under paragraph (6)(b)—

the appeal shall be made in the prescribed manner;

the Court shall, where necessary, hear the applicant and the Registrar; and

the appeal shall be heard on the material stated by the

Registrar to have been used by the Registrar in arriving at his decision and no further grounds of provisional refusal to the acceptance of the application shall be allowed to be taken by the Registrar other than those so stated except by leave of the Court.

)

For the purposes of paragraph (8)(c), where any further grounds of provisional refusal are taken, the applicant shall be entitled to withdraw his application without payment of costs on giving notice in the prescribed manner.

) In determining an appeal under subsection (8), the Court shall make an order subject to any conditions, amendments, modifications or limitations, if any, the application for registration of trademark is to be accepted.

) Any application for registration of trademark filed and accepted under this section shall, notwithstanding any conditions,

Trademarks 37

amendments, modifications or limitations permitted by the Registrar or the Court to be made in such application, be deemed to have been made on the date of application.

) Without prejudice to subsection (11), where after the acceptance of an application for registration of trademark but before the registration of the trademark, the Registrar is satisfied—

that the application has been accepted in error; or

that in the special circumstances of the case, the trademark shall not be registered or shall be registered subject to additional or different conditions or limitations, the Registrar may revoke the acceptance and proceed as if the application had not been accepted or, in respect only of a trademark which shall be registered subject to additional or different conditions or limitations, reissue a new acceptance subject to additional or different conditions or limitations.

Voluntary disclaimer, condition or limitation

to disclaim any right to the exclusive use of any specified element of the trademark; or

to agree that the rights arising out of the registration shall be subject to certain conditions or limitations imposed by the Registrar.

) The Registrar may refuse any application under paragraph (1)(a) if the application contains or consists of any matters which is not allowed under the absolute and relative grounds for refusal of registration under sections 23 and 24.

) A disclaimer made by the applicant, or condition or limitation imposed by the Registrar, under subsection (1), shall not be revoked if the application has been accepted by the Registrar.

38

Laws of Malaysia

Publication of acceptance

) The publication under subsection (1) shall contain all disclaimers, conditions, amendments, modifications or limitations subject to which the application has been accepted.

)

Any person may withdraw the application or restrict the goods or services if the right or interest relied on in the filing of the application, notice or request has become vested in him.

)

The person referred to in subsection (2) shall notify the

Registrar in the prescribed manner that the right or interest has become vested in him.

)

If the acceptance of the application for registration of a trademark has been published under section 31, a notice of the withdrawal or restriction of the goods or services of that application shall also be published.

)

Any withdrawal or restriction made under this section shall not be revoked if the application for withdrawal or restriction has been given effect by the Registrar.

Trademarks 39

Amendment of application for registration of trademark

)

The request under subsection (1) shall be made in the form as determined by the Registrar together with the payment of the prescribed fee.

)

Any amendment to an application for the registration of trademark shall only be made in relation to—

the name or address of the applicant;

errors of wording or copying; or

obvious mistakes, and only where the amendment does not substantially affect the identity of the trademark or extend the goods or services covered by the application.

from a date before the use of the applicant’s trademark or his predecessor in business or by a person who is under his control or authority; or

from a date before the date of filing of the application by the applicant.

)

Notwithstanding subsection (1), the registration of trademark may be opposed by any person—

40

Laws of Malaysia

on any grounds under section 23 or 24;

on the ground that the applicant is not the proprietor of the trademark; or

subject to subsection (3), on the ground that—

it is identical with a well-known trademark in

Malaysia and it is to be registered for goods or services which are not identical or not similar to the well-known trademark in Malaysia; or

it is similar to a well-known trademark in Malaysia and it is to be registered for goods or services which are not identical or not similar to the well-known trademark in Malaysia.

)

The ground of opposition under paragraph (2)(c) may be raised where the use of the opposed trademark in relation to the goods or services for which the opposed trademark is sought to be registered—

would indicate a connection between those goods or services and the proprietor of the earlier well-known trademark;

would create a likelihood of confusion on the part of the public because of such use by the opposed trademark;

and

would likely damage the interests of the proprietor of the well-known trademark.

)

The ground of opposition referred to in paragraph (2)(c) may only be raised to oppose the registration of an application for registration of trademark made on or after the commencement of this Act.

Trademarks 41

Opposition proceedings

)

The notice of opposition shall include a statement of the grounds of the opposition containing any grounds specified under section 34.

)

An opposition may proceed in the name of a person other than the person who filed the notice if—

after the person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested to the other person; and

the other person in paragraph (a)—

notifies the Registrar in the prescribed manner that the right or interest is vested in him; and

does not withdraw the opposition.

)

The applicant shall file a counterstatement in the form as determined by the Registrar together with the payment of the prescribed fee, within the prescribed period after the receipt of the notice of opposition and if the applicant does not do so, the application shall be deemed withdrawn.

)

The counterstatement in subsection (4) shall include the grounds upon which the applicant relies on for the application.

)

The opponent and applicant shall file evidence and exhibits in the prescribed manner within the prescribed period in support of the opposition or the counterstatement, as the case may be, and if the opponent or applicant does not do so, the opposition or application, as the case may be, shall be deemed withdrawn.

42

Laws of Malaysia

)

If the applicant files evidence and exhibits under subsection (6), the opponent may file evidence in reply in the prescribed manner.

)

In considering the evidence and exhibits and after giving the applicant and the opponent an opportunity of making written submissions, the Registrar shall decide whether—