Trademark Registration in Malaysia
Trademark is a form of intellectual property which includes any sign which is capable of being represented and drawn graphically and is able to distinguish one’s goods or services or both from the competitors. It might include any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof. Registration of a trademark is not necessary, but is highly advisable. This is due to the fact that the statutory rights granted under the TA 2019 to the owner of a trademark apply only to registered trademarks.
Who can register a trademark?
- Any individual
- Any business organization
- Any institute
- Any legal entity
[Picture Credit: Malaysia]
Whilst, it is not compulsory to register a trademark before using it under the Malaysian law, it is however strongly recommended to do so to prevent trademark infringement. In Malaysia, a trademark application process takes approximately between 9 – 15 months for smooth process. The rights conferred by a trademark registration take effect right from the date of application being filed and not later.
A trademark registration will grant the proprietor the exclusive and monopolistic rights to the use, assignment or license their mark in relation to the registered goods and services. The trademark proprietor may also initiate legal action or proceedings under the Act 2019 against any unlawful or unwarranted use of their trademark or any trademark which is confusingly similar thereto.
What can be trademarked?
The Malaysian Trademarks Act 2019 provides that the following marks are protected:
- Trademark
- Certification mark
- Collective mark
What cannot be trademarked?
The 2019 Act provides absolute and relative grounds where a trademark is not registrable:
- Identical or confusingly similar with an already existing trademark;
- Likely to deceive or cause confusion to the public or contrary to any written law;
- Deceive or mislead the public as to the nature, quality or geographical origin of the goods or services or both;
- Contrary to the public interest or to ethics;
- Contains or consists of any offensive matter.
Documents required for trademark application:
- Softcopy of the trademark in .jpeg or .pdf format in high resolution.
- The Applicant’s full name and identification number (for Malaysian applicants).
- Applicant’s address.
- A detailed list of the goods and/or services covered.
- Certified translation of the trademark if it is not in Roman characters or the Malaysian National language or English language.
Registration Procedure of a Trademark
An application for the registration of a trademark must be filed with the Intellectual Property Office using the prescribed form and accompanied with the explicit and provided fee. The information required to be submitted in the application form includes the details of the applicant of the trademark, the representations or appearances of the trademark, the explanation of the trademark, the classes of good and services as well as the specifications of the good and services.
Once filed, the Registrar of Trademark will conduct formality and substantive examinations on the trademark application. During the substantive examination, the Registrar will examine whether the trademark application fulfils the requirements for registration under the 2019 Act. The registration of a trademark will be refused by the Registrar if the trademark falls under the circumstances mentioned above.
Exclusive Rights Obtained by Registered Trademark Proprietor
Once a trademark is registered, the TA 2019 grants to the owner of such registered trademark:
- the exclusive right to use the trademark in relation to the goods or services for which the trademark is registered in Malaysia; and
- the exclusive right to authorize other persons to use the trademark in relation to the goods or services for which the trademark is registered in Malaysia.
A trademark registration is valid for a period of ten years from the date of its application and may be renewed thereafter. To maintain and subsequently enjoy the rights obtained through registration of a trademark, the registration of the trademark must be renewed within the prescribed time.
Conclusion
Many business owners do not acknowledge the value of the trademark at the beginning of the business until the brand’s name has gained certain goodwill. As the business becomes more successful and visible, the brand will develop an intrinsic value that will attract potential investors to assess if the brand is properly registered in accordance with the applicable local law.
As such, registration of trademark is highly advisable as part of maintaining the business reputation and adding an asset to the business. It is also important for new companies in Malaysia, when setting up their business in Malaysia to consider the rightful brand names that could be legally registered under the law.
As part of the services regarding the trademark filing in Malaysia, the advisors are able to provide preliminary searches on the proposed brand names to identify if there are any existing trademarks have been registered. Further, they also provide their advice based on the relevant provisions under the Trademarks Act if the proposed names will be subjected to the grounds of refusal by the office or any third party before clients decides to proceed with the registration.
Author: Tanya Saraswat- a student of Narsee Monjee Institute of Management Studies (NMIMS), in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
