Trademark Order for Costs

Question:

X had opposed a Malaysian trade mark application, filed by a Malaysian Organisation. X’s opposition was unsuccessful and an order for costs was made by the Assistant Registrar at the Malaysian Trade Marks Registry against X.

Please advice whether the award for costs is enforceable against X (which is a Multinational Corporation domiciled outside Malaysia) and if so, the possible risks if X does not pay the order for costs.

Answer: 

(1)           Enforcement
 

The Registrar has powers under Section 63(2) of the Malaysian Trade Marks Act 1976 to award to any party such costs as he may consider reasonable and to direct how and by what parties they are to be paid, and any such order may, by leave of the Court, be enforced in the same manner as a judgment or order of the Court to the same effect. “Court” in the current context shall mean the High Court of Malaysia.
 

In summary, the Registrar’s award for cost can be enforced in the MNC’s domicile country having Reciprocal Enforcement of Judgments which lists Malaysia as a reciprocating country.
 

In the event of default of payment, the other party may opt to reclaim such costs awarded by the Registrar in a court of competent jurisdiction as a debt due by the person against whom the costs were accorded to the person in whose favour they were accorded (Section 75(3) of the Malaysian Trade Marks Act 1976).

 

Likelihood of Enforcement

 

In general, the award of cost in an opposition proceeding is calculated based on the schedule as listed in the Malaysian Trade Marks Manual & Practice (See attached). The anticipated award of cost to be awarded to the other party, in our opinion would be within the region of £300 to £350.

 

It is our view that given the procedural, practicability and cost implications, it is likely that the other party awarded costs may not pursue the matter further since the cost of recovery is likely to exceed the costs awarded.

 

Sequestration of Assets like IP Rights:

 

We advise that it is possible to sequestrate X’s IP rights that exists in Malaysia.

 

Please find below schedule of costs in inter partes proceedings.

 

APPENDIX 3 – AWARD OF COSTS IN INTER PARTES PROCEEDINGS

In exercising the discretion conferred by section 63(2) of the Act in respect of any costs assessed after the date of this note the registrar will, as a general rule, be guided by the following scale:

ITEM		M$
1. A.   Filing notice of opposition or application for           rectification		200                + statutory fee
1. B.   Perusing counterstatement:		50
OR
2. A.  Perusing notice of opposition or application          for rectification:		50
2. B.  Filing counterstatement:		200                + statutory fee
PLUS (as appropriate)
3.      Preparing and filing own evidence:		250 to 750
4.      Perusing evidence of other party:		½ of item 3.
5       Preparation for, and attendance at, hearing:		500 to 2000     + statutory fee
6.      General expenses and travelling of          witnesses required to attend the hearing		up to 50 per day

 

Date ……………………………..

Notice of amendments to this scale will be published in the Gazette.   
          
For more information, contact us at: malaysia@mirandah.com