PART XV

Registration of Agents
Division 1
Registration of agents

Register of Trademark Agents

38. (1) The Register of Trademark Agents shall contain the details of an agents as stated
in the Regulations.

(2) The Register of Trademark Agents shall be open to public.

Registration of agents
39. (1) An application to be registered as an agent shall be made to the Registrar
together with payment of the prescribed fee as stated in the Regulations.

(2) The Registrar shall register a person as an agent and enter his name in the
Register of Trademark Agents if he satisfies the following requirements:

(a) he is either a citizen, domiciled in or permanent resident of Malaysia;

(b) he will be practising as an agent in a business registered in Malaysia;

(c) he is not an undischarged bankrupt;

(d) he has not been convicted of an offence involving fraud, dishonesty or

any other offences under this Act;

(e) he has attended all the required courses; and

(f) he has passed the examination conducted by the Registrar.

(3) In addition to the requirements under subparagraph (2), the person shall
satisfy the Registrar that—

(a) he is on the Register of Patents Agents maintained in pursuance of

regulations made under the Patents Act 1983 [Act 291];
 (b) he is an advocate and solicitor of the High Court in Malaya or an advocate
and solicitor of the High Court in Sabah and Sarawak who is practicing solely
in Malaysia;

(c) he holds a recognised degree in any field of studies and has had at least two
years’ experience in the field of industrial property; or

(d) he has had at least three years of experience in the field of industrial
property by virtue of him being an ex-officer of the Corporation.

(4) For the purpose of subparagraphs 3(b) and (c), the applicant shall submit the
required proof upon filing an application under subparagraph (1).

(5) In approving the applicant’s application under subparagraph (1), the Registrar may
require further proof of the matters specified in subparagraphs 3(b) and
(c) through issuance of written notice by the Registrar and the person shall
respond within the period as specified in the written notice.

(6) If the person fails to respond to the written notice as specified under
subparagraph (5), the application in subparagraph (1) shall be deemed withdrawn.

(7) Extension of time shall not be applicable to extend the period specified in the written
notice under subparagraph (5).

(8) Notwithstanding the requirement of passing the examination as specified under

subparagraph (2)(f), the Registrar may waive such requirement if he has passed the
examination for patent agents pursuant to regulation 45D of the Patents
Regulations 1986 [P.U.(A) 327/1986].

(9) The Registrar, upon being satisfied that the applicant qualifies to be registered in the
Register of Trademark Agents, shall register the applicant for a term expiring on
31 December of that year.
 (10) Any person who is aggrieved by the decision of the Registrar under this
regulation may appeal to Court within one month from the date of the issuance
of the decision.

Examination of trademarks agents

40. (1) For the purposes of subparagraph 39(2)(f), the Registrar shall conduct an
examination which shall consist of the following subjects:

(a) Malaysian trademark law and designs law and practice; and

(b) foreign industrial property law and practice.

(2) An application for registration as a candidate for the examination specified in

subparagraph (1) shall be made to the Registrar together with the payment of
the prescribed fee.

(3) A candidate shall be required to sit for each of the subject specified in
subparagraph (1) at a sitting of the examination after attending all the
required courses as determined by the Registrar.

(4) A candidate who has sat for and failed to pass any of the subjects specified in
subparagraph (1) may, if he is dissatisfied with his results, appeal to the
Corporation for re-scrutiny of the results within fourteen days from the date
of the notification of such results together with the payment of the prescribed
fee.

(5) Upon receipt of an appeal under subparagraph (4), the Corporation shall
consider the appeal and make a decision of thereon.

(6) The decision of the Corporation shall be final and conclusive.

 (7) A candidate who has sat for and failed to pass any or all of the subjects
specified in subparagraph (1) at an examination may apply to re-sit such
subject or subjects, as the case may be, at the next sitting of the examination

and such application shall be made to the Registrar together with the
payment of the prescribed fee.

(8) Any candidate who has failed to pass all of the subjects specified in
subparagraph (1) after three attempts shall be deemed to have failed the
overall examination and subparagraphs (4), (5), (6) and (7) shall not apply
thereto.

(9) Any candidate who is deemed to have failed the overall examination under
subparagraph (8) may re-apply to be registered as a candidate under
subparagraph (2).

Partnership and bodies corporate may be registered as agent

41. (1) An application by a partnership or bodies corporate to be registered, as an agent
shall be made to the Registrar together with payment of the prescribed fee as stated
in the Regulations.

(2) The Registrar shall register a partnership or bodies corporate as an agent and
enters the name of the partnership or bodies corporate in the Register of
Trademark Agents if it comprises one or more registered agent.

(3) Upon being registered as an agent under subparagraph (2), the address of the
partnership or bodies corporate shall be the address for service.

Renewal of registration of agents

42. (1) An application for the renewal of registration as an agent shall be made to the
Registrar together with payment of the prescribed fee within three months before the
expiry of the registration on 31 December of that year.
(2) Notwithstanding subparagraph (1), an agent may file the application for the
renewal of registration as an agent under subparagraph (1) until 31 January of the
following year without being cancelled and removed from the Register of
Trademark Agents.

(3) If the agent does not file the application for the renewal of registration as an agent
under subparagraph (2), the agent may apply to the Registrar for an extension of
time for a period of not exceeding six months from 31 January of the following year.

(4) The Registrar shall, upon receiving an application for the renewal of registration as
an agent in subparagraph (1), (2) or (3) where applicable, renew the registration of
the agent for a term expiring on the 31 December of that year if the agent fulfils the
requirements under subparagraph 39(2)(a), (b), (c), (d) and (e) and—

(a) the additional requirements under subparagraph 39(3), wherever

applicable; or

(b) the Registrar is satisfied that the agent has practiced as an agent for at least
two years.

(5) For the purpose of subparagraph (4), the agent shall submit the required proof upon
filing the application under subparagraph (1).

(6) In approving the agent’s application under subparagraph (1), the Registrar may
require further proof of the matters specified in subparagraph (4) through the
issuance of written notice by the Registrar and the applicant shall reply within the
period as specified in the written notice.

(7) If the person fails to respond to the notice as specified under subparagraph (6),
the application filed under subparagraph (1), (2) or (3) shall be deemed
withdrawn.
 (8) Extension of time shall not be applicable to extend the time as specified in the
written notice in subparagraph (6).

(9) The requirement under subparagraphs (1), (2), (3), (6), (7) and (8) shall be
applicable on a partnership or the bodies corporate which has been registered
as an agent.

(10) Subject to subparagraph (9), the Registrar shall, upon receiving an application
for the renewal of registration as an agent by a partnership or bodies
corporate, renew the registration of the agent if the agent fulfils the condition
that there is at least one or more agents.

Deferment of renewal of registration of agent

43. Notwithstanding paragraph 42, the agent may apply for deferment together with
payment of the prescribed fee on or before 31 December of that year for a period not
exceeding three years, subject to the Registrar being satisfied with the following
conditions:

(a) the agent has a legitimate cause or reason to defer such renewal of
registration; and

(b) the agent has ceased to act on behalf of an applicant of application for
registration or registered proprietor of trademark.

Illustration for paragraph 43(a)

“legitimate cause” includes the agent is—

(i) suffering from an illness, injury or disease which is supported by report
by medical practitioner;
(ii) residing abroad for more than six (6) months; or
(iii) on sabbatical leave.
Amendment of Register of Trademark Agents

44. The Registrar may, at the request of the agent together with payment of the
prescribed fee, amend the particulars relating to him, any errors of wording or
copying or obvious mistakes entered in the Register of Trademark Agents.

Voluntary cancellation of registration of agent

45. The Registrar shall cancel the registration of an agent upon the request of the agent
together with payment of the prescribed fee subject to the Registrar being satisfied
that he has ceased to act on behalf of an applicant of application for registration or
registered proprietor of trademark.

Cancellation of registration for failure to renew the registration of agent

46. (1) If an agent fails to file the application for renewal on or before the date as
specified under subparagraph 42(1) or (2), the Registrar may cancel his name and
removed it from the Register of Trademark Agents to be entered into a record.

(2) The Registrar may restore the name of the agent in the Register of Trademark
Agents upon the application for the renewal of registration as an agent under
subparagraph 42(1) together with payment of the prescribed fee and the
payment of extension of time as prescribed.

(3) When the agent is removed from the Register of Trademark Agents according
to subparagraph (1), all the applications for registration or registrations of
trademarks handled by the agent shall be published by the Registrar in the
Journal.

(4) When the removal of agent and all the applications for registration or
registrations of trademarks handled by the agent have been published
by the Registrar in the Journal, the applicant of the applications for
 registration or the registered proprietor of the registrations of
trademark shall appoint and authorize a new agent to act for him.

Correction of entries in Register of Trademark Agents

47. The Registrar may, at his discretion, correct any clerical error or omission in respect
of any entry in the Register of Trademark Agents.

Cancellation of registration of agent

48. (1) In addition to regulation 46, the Registrar may cancel the registration of any
person who—

(a) has been struck off the Register of Patent Agents or suspended from
the Roll of Advocates and Solicitors, wherever applicable;

(b) has been convicted of an offence involving fraud or dishonesty or any

other offences under the Act;

(c) is no longer a citizen, domiciled or resident in Malaysia or no longer

carrying a business principally in Malaysia; or

(d) is an undischarged bankrupt.

(2) Where the registration of any person is cancelled under this regulation,
subparagraphs 46(3) and (4) shall be applicable.

Setting, assessing and marking of questions and answer

49. (1) The Registrar may appoint suitably qualified persons to be examiners for the purpose
of examination setting, assessing and marking questions or answers for the examination
specified in paragraph 40(Examination of trademark agent).

(2) The Registrar may give such instructions in relation to the setting, assessing and
marking of questions or answers as it considers necessary.
Change of name or address for service of agent
50. (1) In the event of a change of name or address for service of the agent, the agent shall
inform the Registrar of such change by filing an application to change name or
address for service of the agent within fourteen days from such change together with
payment of the prescribed fee.

(2) If the agent failed to inform the Registrar in accordance with subparagraph
(1), all the correspondences sent to the previous name or address for service
shall be deemed to be affected and the Registrar shall not reissue any
correspondences which have been deemed effected.

Death of agent
51. (1) In the event of death of an agent, any person represented by the agent or the legal
representative of the agent shall notify the Registrar within one month from the date
of death together with payment of the prescribed fee.

(2) The Registrar shall, after receiving the notification in subparagraph (1), halt
the activity of the proceedings relating to applications or registration of
trademarks which are handled by the deceased for a period of three months
or until the applicant or registered proprietor of the application or registered
trademark has appointed or authorized a new agent to act on his behalf before
the end of the period of three months.

(3) If the applicant of the application or registered proprietor of registered

trademark does not appoint or authorize a new agent to act on his behalf
within three months under subparagraph (2), the Registrar shall publish the
application or registered trademark in the Journal to be taken up by other
agent after receiving the appointment or authorization from the applicant or
registered proprietor of the application or registered trademark.

92
 Division 2
Appointment and authorization of an agent

Agent may act on behalf of an applicant etc. for purposes of the Act
52. (1) Subject to the scope of the agent’s authority, an agent may act for any person as
listed in regulation 36 in any proceeding on his behalf.

(2) No person may appoint more than one agent to act for him concurrently in
respect of the same proceeding before the Registrar relating to an application
for registration of trademark or a registered trademark and where there is
more than one agent is on record for the same proceeding, the Registrar shall
recognize only the latest agent duly appointed and authorized by the
applicant, registered proprietor or any person in any proceeding before the
Registrar.

Appointment and authorization of agent

53. (1) Where an agent has been authorized under section 95 of the Act, the
Registrar may require a supporting document proving that the agent is
appointed and authorized by the applicant, registered proprietor or any
persons in any proceedings before the Registrar.

(2) Where—

(a) a person appoints an agent for the first time or appoints one agent in
substitution for another; or

(b) after a person has become a party to proceedings involving a third

party before the Registrar, the person appoints an agent for the first
time or appoints one agent in substitution for another,
 the newly appointed agent shall file an application for appointment or
authorization of agent with the Registrar together with payment of the
prescribed fee.

(3) Any newly appointed agent shall not perform any act required or authorized by
the Act in connection with the registration of a trademark or any procedure
relating to a trademark unless the agent files the application for appointment or
authorization of agent under subparagraph (2).

Registrar may refuse to recognize agent

54. The Registrar may refuse to recognize the following person as an agent in respect
of any proceedings under the Act:

(a) a person who has been convicted of an offence involving fraud, dishonesty or
any other offences under this Act;

(b) an agent whose name has been cancelled, removed from and not restored to
the Register of Trademark Agents; and

(c) a partnership or bodies corporate of which one of the partners or directors is

a person whom the Registrar could refuse to recognize under paragraph (a) or
(b).
Filing of notice to cease to act
55. An agent shall file a notice of intention to cease to act on behalf of a person referred to in
paragraph 95(4)(a) of the Act with the Registrar together with payment of the
prescribed fee.

Filing of termination of the appointment and authorization of agent

56. An applicant shall file a notice to terminate the appointment and authorization of an
agent referred to in subsection 95(3) of the Act with the Registrar together with payment
of the prescribed fee.