Trademarks (Waiver and Modification of Fee) Regulations 2020; Patents (Waiver of Fee) Regulations 2020
Wendy Lee Wan Chieh, Shook Lin & Bok (Malaysia)
In view of the commercial difficulties and hardships many have had to face since the outbreak of the Covid-19 pandemic, the Malaysian government has introduced new regulations which provide for the waiver and / or modification of filing fees for trademarks and patents to provide some relief to those in need of financial assistance.
The Trademarks (Waiver and Modification of Fee) Regulations 2020, which came into operation on 1st January 2021, provides that filing fees may be waived for the following matters:-
a) Applications for the amendment of name or address of an applicant / proprietor;
b) Requests for extension of time other than that in respect of opposition proceedings; and
c) Surcharge imposed in respect of the manual filing of documents
Further, the filing fee for applications for the late renewal of a trademark may be modified from RM 1,200.00 to RM 1,000.00.
However, such waivers will be subject to applications being made for the same between the period of 1st January 2021 to 30th June 2021. Such applications have to be supported by documents to prove that an applicant is either an individual classified as being in the B40 group in Malaysia who are eligible for government financial assistance or an individual / entity whose income had been adversely affected to the extent that it has fallen into indebtedness due to movement control orders which have been enforced to combat the spread of the Covid-19 pandemic.
The Patents (Waiver of Fee) Regulations 2020, which similarly came into operation on 1st January 2021, provides for the waiver of filing fees in respect of the surcharge to be paid for the late payment of annual fees for patents and utility innovations.
However, applications for such waivers must be made within the grace period of 6 months for late payment as provided for under the Patents Act 1983; and must be in respect of patents and utility innovations which deadlines for the payment of annual fees fall between 1st January 2021 to 30th June 2021.
Applications for fee waivers must also be accompanied by documents to show that an applicant is either an individual classified as being in the B40 group in Malaysia who is eligible for government financial assistance or an individual / entity whose income has been adversely affected by movement control orders to the extent that an applicant has fallen into indebtedness.
Even though the fee waivers and modification are only limited to only a few matters and applicable only to those who are struggling to cope with the financial challenges caused by movement control measures, it is undoubtedly a good move which will be welcomed by those most in need.