The Trademarks Bill 2019 ("Bill") was recently passed by the Parliament. The Bill will repeal and replace the current Trade Marks Act 1976 once it comes into force.
The following are some of the key features of the Bill:
- Accession to the Madrid Protocol (the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) which provides a cost-effective and efficient way for trademark holders to seek protection for their marks in multiple countries through a single filing.
- Multiple-class applications are permissible under the Bill.
- Allowing non-traditional trademarks such as sound, scent, colour and sequence of motions to be registered.
- A trademark application may be refused on absolute grounds and/or relative grounds.
- Recognition of common law rights relating to unregistered marks under the tort of passing-off, as well as marks which contravene copyright and industrial design laws.
- Priority claim will no longer affect filing or registration date.
- Applications and rights to priority can be assigned or transmitted.
- Broader infringement scope.
- Shorter post-registration period for conclusiveness of registrations (reduced from seven to five years).
- Trademark recognised as personal or moveable property.
In what is a landmark decision, the Federal Court by a 3:2 majority departed from its previous decision in SKB Shutters Manufacturing Sdn. Bhd v Seng Kong Shutter Industries Sdn. Bhd. & Anor. In essence, the Federal Court held that:
- when an independent claim of a patent is held to be invalid, it does not necessarily follow that all dependent claims which make reference to the invalid independent claim will automatically fail. The validity of each of these dependent claims has to be assessed by the Court separately by examining the evidence adduced by the parties; and
- Section 79A(3), Patents Act 1983 does not preclude amendment of claims of a patent per se but only precludes amendment during legal proceedings. In other words, an amendment application can be made during the proceedings but the Registrar of Patents can record the amendment after the proceedings.
On 20 August 2019, following the enactment of the Service Tax (Amendment) Act 2019, the Royal Malaysian Customs Department ("Customs") issued the Guide on Digital Services ("Guide") in order to further clarify the definition and scope of the terms "digital services", "foreign service provider" and "consumer" in the Service Tax Act 2018 ("STA").
- "Digital services" has been further defined as services to be delivered through information technology medium with minimal or no human intervention from the service provider, which include (but are not limited to) the following:
- Software, applications and video games;
- Music, e-books and films;
- Advertisement and online platforms;
- Search engines and social networks;
- Database and hosting;
- Internet based telecommunications;
- Online trainings; and
- Others such as subscriptions to online newspapers and journals, provisions of other digital content like images, text, information and payment processing services.
- In addition to the above, the Guide also provides further illustrations to clarify the definition of a "foreign service provider". For example, the Guide clarifies that foreign service providers include any person who sells digital products directly, or any person who sells digital products indirectly through intermediaries such as online platforms. An online platform operator that makes transactions on behalf of a foreign service provider (i.e. a service provider which is based outside Malaysia) and issues an invoice or any other document under its name, will be regarded as a foreign service provider itself.
- Further to the definition of "consumer" under the STA, the Guide provides that in determining whether a consumer resides in Malaysia (one of the elements to determine whether a person is a "consumer"), a foreign service provider may take into account the customer's information on the service recipient's billing address, home address or country selection.
With the increasingly prevalent use of technology in the provision of financial services, the Central Bank of Malaysia (Bank Negara Malaysia or "BNM") recognises that there is a need for financial institutions to strengthen their technology resilience against operational disruptions to maintain confidence in the financial system. In order to ensure continuous availability of essential financial services to customers and adequate protection of customer data, on 18 July 2019, BNM issued the Policy Document on Risk Management in Technology ("RMiT Policy Document"). The RMiT Policy Document will come into effect on 1 January 2020.
The RMiT Policy Document prescribes minimum requirements in respect of, among other things: (i) responsibilities of board and senior management of financial institutions; (ii) management of data storage including cloud services; and (iii) outsourcing to third party service providers.
Financial institutions will be required to review their existing policies and outsourcing arrangements in order to ensure compliance with the requirements under the RMiT Policy Document.
In July 2019, the Companies (Amendment) Bill 2019 ("Bill") was passed by the Dewan Rakyat (House of Representatives) of the Malaysian Parliament. The Bill has, as at the day of this article, yet to be gazetted. The Bill seeks to make amendments to the Companies Act 2016 ("CA 2016"). Four of the key amendments are highlighted below.
First, the Bill seeks to amend the definitions of "subsidiary" and "holding company" in the CA 2016 by replacing the words "issued share capital" with “total number of issued shares” and to provide that a corporation shall be deemed to be a subsidiary of another corporation if the corporation holds more than half of the total number of shares of the first corporation. However, this shall not include preference shares.
Secondly, the Bill proposes to limit the scope of application of Section 66 of the CA 2016 which sets out the statutory requirements relating to the execution of documents by a company. A new subsection (6) will be introduced to clarify that the statutory methods of execution prescribed in Section 66 will only apply to documents that are required to be executed by any written law, resolution, agreement or constitution. An employee authorised by a company is therefore not required to execute documents such as letters, invoices and contracts that do not fall under the new definition of documents in accordance with Section 66.
Thirdly, Section 340(1)(c) of the CA 2016 will be amended to provide that the appointment and the fixing of the remuneration of auditors shall be transacted at every annual general meeting (AGM) of a public company. This amendment also removes the requirement for the fee of directors of a public company to be included in the agenda, except for public and listed companies in certain cases, as provided for in Section 230(1).
Lastly, the Bill aims to reinstate the powers of the court to require a plaintiff company to give sufficient security for costs, via the introduction of a new Section 580A. Similar to Section 351 of the repealed Companies Act 1965, the court will also be empowered to direct the costs of any action or proceedings to be borne by the party to the action or proceedings.
These proposed amendments seeking to redefine, clarify and reintroduce statutory requirements forms the CA 2016's first substantial amendments since its coming into force. This represents regulators' initiatives to understand the practical applications of the legislation and to ultimately achieve effective governance.
In March 2019, the Malaysian Communications and Multimedia Minister, Minister Gobind Singh Deo, announced that the Communications and Multimedia Ministry, through the Personal Data Protection Department, is in the midst of reviewing the Personal Data Protection Act 2010 ("PDPA") to ensure that it is up-to-date and in line with the latest developments in the global data protection landscape.
In particular, the Ministry is looking to align the PDPA with new regulations on data protection introduced globally, in particular the European Union General Data Protection Regulation ("GDPR").
Pursuant to this, the Personal Data Protection Department has recently organised and conducted a workshop discussion with stakeholders from various industries which are likely to be impacted by the amendments to the PDPA, in order to obtain their comments and feedback on the proposed amendments to the PDPA. It is envisaged that the Personal Data Protection Department will be working towards preparing a list of proposed amendments to the existing PDPA for the approval of the Minister no later than the end of 2019.
