Trademark registration in Malaysia is essential for companies because a trademark is a company’s identification. It’s used to set a product or service apart from the competition. A trademark combined with a creative branding plan may help a corporation make millions, if not billions, of dollars. Given the value of a trademark, a knowledgeable entrepreneur will always make trademark registration a top priority.
Any symbol capable of being expressed graphically and capable of differentiating one undertaking’s goods or services from those of other undertakings is referred to as a trademark.
Any letter, word, name, signature, numerical, device, trademark, heading, label, ticket, shape of goods or their packaging, color, sound, aroma, hologram, placement, sequence of action, or any combination thereof is considered a sign.
A collective mark is a symbol that distinguishes the goods or services of members of the association that owns the collective mark from those of other businesses.
A certification mark is a sign indicating that the goods or services in connection with which it is to be used have been certified by the proprietor of the mark in terms of origin, material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics by the proprietor of the mark.
WHAT YOU ARE ALLOWED TO TRADEMARK, AND WHAT YOU ARE NOT ALLOWED TO TRADEMARK?
The following marks are registrable under the Malaysian TradeMarks Act 2019
- Certification symbol for trademarks
- Collective marks
When a trademark is not registrable, the Trademarks Act 2019 gives both absolute and relative grounds:
- Identical to or confusingly similar to a previously registered brand;
- Likely to deceive or confuse the public or to be in violation of any established law;
- Deceive or mislead the public about the nature, quality, or origin of the goods or services;
- Incompatible with the public good or morality;
- Contains or is made up of anything scandalous or objectionable.
WHO HAS THE AUTHORITY TO REGISTER A TRADEMARK?
A trademark registration can be applied for by any
- business organization,
- institute, or
- legal entity.
While it is not required by Malaysian law to register a trademark before utilizing it, it is strongly advised to do so to avoid trademark hijacking.
Companies incorporated overseas can apply for trademarks as well as Malaysia-incorporated companies. However, the nature of trademark protection is geographical. Your trademark is only protected in Malaysia if it was registered there.
APPLYING FOR TRADEMARK IN MALAYSIA
You must fill out Form TM5 and submit it to the Malaysian Intellectual Property Corporation (MyIPO).
RM370 is the application fee.
WHAT MUST BE INCLUDED IN THE TRADEMARK FOR IT TO BE REGISTRABLE?
According to Section 10 of the Trade Marks Act of 1976 (the “TMA”), a mark must include at least one of the following elements in order to be registrable:
- The signature of the applicant for registration or of a predecessor in his business;
- The name of a person, business, or firm represented in a special or particular style;
- An invented word or words,
- A word that doesn’t directly correspond to the nature or caliber of the goods or services and isn’t a geographical name or surname by definition, or
- Any other distinctive mark.
STEPS TO APPLY FOR A TRADEMARK IN MALAYSIA
To register a trademark, follow these simple steps.
Step 1: Design a Trademark
A trademark is any sign that can be represented graphically and can be used to identify the goods or services of one company from those of others. This includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of the goods or their packaging, color, sound, scent, hologram, positioning or sequence of motion, or any combination of these.
A trademark should not only be imaginative and visually appealing but also comply with all requirements set forth in the Malaysian Trade Marks Act 2019, particularly the absolute and relative grounds of refusal.
Step 2: List Down the Goods / Services Under the Trademark and Determine the Classification
The precise list of goods and/or services being offered under the trademark must be carefully considered. Then, locate the pertinent Classification categories.
This phase is essential since the description of the goods or services determines the extent of the trademark’s protection. On products or services not covered by the registration, the trademark may not be protected.
Step 3: Prepare and File Trademark Application
Generally, filing a trademark application in Malaysia requires the following information:
1. Full name of the trademark applicant
2. Full address of the applicant
3. List of goods and services provided under the trademark
4. Class number (Nice Classification for filing in Malaysia)
5. A softcopy of the trademark in high resolution
6. Priority information, if priority right is being claimed
7. Certified translation of the trademark if it contains non-Roman characters.
Step 4: Examination by Trademark Examiner
The Registrar of Trademarks will conduct a thorough examination of the trademark after the formalities have been completed in order to determine if the trademark is eligible for registration under the Trademarks Act 2019. An examination of a trademark application by the Malaysian Registrar of Trademarks typically takes six to twelve months.
The Registrar will issue a refusal notice if the trademark application does not adhere to any standards outlined in the Trademarks Act 2019. In fact, the applicant will have the chance to address the refusal in question or revise the trademark application as appropriate.
Step 5: Publication in Malaysian IP Official Journal
The trademark application will be accepted and move forward to publication in the Malaysian IP Official Journal once the Registrar determines that it complies with the Trademarks Act 2019 requirements. The general public is granted the chance to oppose trademark registration within two months after the date of advertisement.
The trademark application will engage in a separate opposition proceeding to determine the registration in the event that someone challenges the trademark registration. In this procedure, the parties exchange statutory declarations, counter statements, notices of opposition, and legal arguments. The trademark will be registered in relation to the products or services if no objection is raised.
Step 6: Registration of Trademark
When a trademark is registered, the Registrar must provide a notification of registration with their seal. The registrar will issue the certificate of registration, which is comparable to the notification of a trademark, upon request from the registered proprietor if he wants one.
The owner of the registered trademark may now use the ® sign alongside the trademark. The trademark is now protected, and for a period of ten years from the date of filing, the owner is permitted exclusive use of the trademark in relation to the registered products or services. If renewed every ten years, trademark registration is technically permanent.
From the date of filing, a smooth trademark registration procedure typically takes between 12 and 18 months. If there are any office actions or opposition proceedings throughout the registration process, it will take longer.
BENEFITS OF MALAYSIA TRADEMARK REGISTRATION
Trademark registration in Malaysia offers several benefits to individuals and businesses, including:
- Exclusive rights – Trademark registration provides the owner with exclusive rights to use the trademark in connection with the goods or services for which it is registered. This prevents others from using or registering a similar or identical trademark.
- Legal protection – Registered trademarks are protected under Malaysian law, and the owner has the right to take legal action against any unauthorized use or infringement of the trademark.
- Brand recognition – A registered trademark can help create brand recognition and establish a unique identity for a product or service in the market.
- Business asset – A registered trademark can be considered a valuable business asset and can be sold, licensed or assigned to others.
- International protection – A registered trademark in Malaysia can be used as a basis for obtaining protection in other countries through international trademark registration.
- Deterrent effect – The existence of a registered trademark can act as a deterrent to potential infringers, as it shows that the owner is serious about protecting their intellectual property rights.
Here are the needed documents:
- Five(5) copies of the properly completed Form TM5 with the intended trademark to be registered attached to the forms;
- one (1) original copy of a Statutory Declaration with the intended trademark to be registered linked to it;
- If the applicant is a company, one copy of Form 49/D/Company details from the company registration;
- one (1) copy of the priority date claimed (if applicable); and
- a copy of the trademark’s transliteration and translation if the trademark is not in the form of a Roman character.
To register a trademark application in Malaysia, you’ll need the following items:
- High-resolution softcopy of the trademark in.jpeg or.pdf format.
- Full name and identification number of the applicant (for Malaysian applicants)
- Address of the applicant
- A comprehensive list of the goods and/or services that are covered
- If the trademark is not in Roman characters, a certified translation into the Malaysian national language or the English language is required.
What Are My Options For Enforcing My Exclusive Trademark Rights Against Any Infringer?
As the owner of a registered trademark, you have a limited number of options for enforcing your exclusive rights. They are as follows:
- By filing a legal action against the infringer in the High Court;
- By requesting a Trade Description Order (“TDO”) from the Court, which declares that the infringer’s use of your registered trademark is a false trade description and allows Ministry officers to seize goods bearing the trademarks and prosecute the infringer; and
- By filing a complaint with the MDTCC (Ministry of Domestic Trade, Cooperatives, and Consumerism). When the complaint is received, a raid and seizure action will be taken. The violator may face legal action from the Public Prosecutor.
What Are Some Of The Possible Trademark Infringement Defenses?
The TMA provides for a variety of defenses, including but not limited to the following:
- The use in good faith by a person of his or her own name, the name of his or her place of business, or the name of any of his or her ancestors’ place of business;
- the use in good faith by a person of a description of the nature or quality of his goods or services, which is not a description that would be likely to be interpreted as implying any reference to the registered proprietor in the case of commodities;
- the continuous use of a trademark by a person in relation to goods or services for which he or his predecessors in business have been in business, from a date before:
- the use of the registered trademark by the registered proprietor, by his predecessor in business, or by a registered user of the trademark; or
- the registration of the trademark, whichever is earlier
If you are interested in knowing more about starting a new business in Malaysia, refer to Malaysia company incorporation for more information.
Reach out to us at Relin Consultants to take advantage of our skilled trademark protection services.
Is it possible for me to assign my trademark?
Yes, just like any other property, a trademark can be granted. The term “assignment” refers to the transfer of ownership. A trademark assignment must be made in writing and signed by all parties involved. Oral agreements do not constitute a legitimate assignment.
Is it necessary to register the assignment?
Yes, the transfer’s assignee must apply to the Registrar to get the trademark title registered in his name. The assignment is only considered affected once this is completed.
What will I receive once my registration has been approved by myIPO?
MyIPO will issue you a Certificate of Registration of Trade Mark if your application to register your trademark is approved. Your brand will also be registered in the Trade Marks Register.
Is it possible to withdraw my trademark registration?
Yes, if you haven’t used your registered trademark for three (3) years or more since the date of registration, your registration may be erased.
Can a foreigner register a trademark in Malaysia?
Yes, a foreigner can register a trademark in Malaysia through a local agent who is a registered trademark agent in Malaysia.
How can I check registered trademarks in Malaysia?
You can check registered trademarks in Malaysia by searching the Malaysian Intellectual Property Corporation (MyIPO) database. The database is accessible online through the MyIPO website (https://www.myipo.gov.my/en/home/) and allows you to search for trademarks using keywords, class of goods or services, or the trademark owner’s name.
How do I register a trademark in Malaysia?
To register a trademark in Malaysia, the following steps can be followed:
Conduct a trademark search to ensure that your trademark is available for registration.
File a trademark application with the Malaysian Intellectual Property Corporation (MyIPO) through a registered trademark agent in Malaysia.
The trademark application will be examined by MyIPO, and if there are no objections, the trademark will be published in the government gazette.
After the publication, there is a two-month opposition period where anyone can object to the registration of the trademark.
If there are no oppositions or the opposition is successfully overcome, MyIPO will issue a certificate of registration, and the trademark will be officially registered.
How much is trademark registration in Malaysia?
The cost of trademark registration in Malaysia varies depending on various factors, such as the number of classes of goods and services the trademark will cover, the nature of the trademark, and whether the applicant is an individual or a company.
As of 2023, the official fee for filing a trademark application in one class for an individual is MYR 330 (approximately USD 80), while for a company, it is MYR 370 (approximately USD 90). However, additional fees may apply, such as fees for the examination, publication, and issuance of the certificate of registration.