Trademark Registration in Malaysia
Trademarks play a vital role in distinguishing your business from other similar products in the competitive market. They aid your organization in developing branding and marketing strategies that help consumers quickly identify your products and services. Moreover, trademarks grant you exclusive rights to use the sign for trading, and the registration certificate will act as legal evidence if a competitor uses your trademark.
Malaysia recently amended its Trademark Act, and the country enforced its Trade Marks Act 2019 with significant amendments. This article will serve as the latest step-by-step guide for trademark registration in Malaysia.
The new Trade Marks Act 2019 endorses the Madrid Protocol. As a result, trademark applicants in Malaysia can opt to file international applications, and all other international applicants outside Malaysia can include the country in their applications.
Criteria for a mark to register in Malaysia
For a mark to be registrable as a trademark in Malaysia, it should fulfill at least one of the criteria given below:
– Any invented word(s),
– A distinctive mark,
– A word that has no direct reference to the quality or character of the goods or services that the company offers,
– The mark should represent the name of the organization or the individual uniquely,
– The applicant’s signature or the signature of a predecessor in the organization for the registration process.
The latest amendment now considers non-traditional and collective marks as registrable marks. Non-traditional trademarks refer to motion marks, holograms, scent marks, shape marks, sound marks, color marks, packaging marks, and positioning marks.
A preliminary search in Malaysia
It is always wise for organizations or individuals to perform a preliminary trademark search to make the trademark registration process easy. This search will aid the applicant in ensuring their trademark is registrable. According to the Trade Marks Act section 13, the applicant can request the registrar for a preliminary search even before he files the trademark application.
The registrar will supply information if the trademark is prima facie and eligible for registration. The preliminary search results are not publicly available and are kept confidential. Furthermore, the registrar will prepare a report on whether the trademark is registrable or not.
However, the applicant may proceed with the trademark application even if the preliminary search shows the trademark to be non-registrable. On the other hand, MyIPO will proceed to issue a provisional refusal for the application if it still deems the trademark unregistrable. In such cases, the office will refund the application filing fee.
The procedure for registering a trademark in Malaysia
Filing the application
A person looking to trademark their business should submit a formal application through the TM5 form. The form consists of information such as the graphic images that require a trademark, the class under which the trademark is to be registered, the applicant’s contact details, and a status declaration. The applicant can opt to apply for protection under more than one class through a single application form.
If a company or organization applies for a trademark, it should submit a copy of Form 49D with details of the company. The trademark size should not exceed 10 x 10 cm.
The application fee for trademark registration varies as follows:
• Fee code: TMA2A – RM950 per class for goods and services from the pre-approved list
• Fee code: TMA2B – RM1100 per class for goods and services that are not on the pre-approved list.
• Fee code: TMA2C – RM50 as an additional fee for each subsequent trademark.
MyIPO accepts payment in the form of a cheque, cash, credit card, demand draft, and money order payable to “Perbadanan Harta Intelek Malaysia.”
Examination of the Application
MyIPO scrutinizes the application to ensure it complies with all the registration norms in the Malaysia Trade Mark Act 1976. It also checks thoroughly to confirm the application does not conflict with any existing or prior mark. Finally, MyIPO will issue an acceptance letter through form TM29 or an objection letter through Form TM70. You will receive the examiner’s decision within four to twelve months from the filing date.
In case of objection, MyIPO now allows only one chance for the applicant to make the necessary changes to the application or submit any evidence within the stipulated period given by the registrar. Once again, the registrar will issue a total provisional refusal if the application fails to overcome the objection. However, the applicant can choose to appeal to the High Court for another chance if he is determined to proceed with the registration process.
Publication in Warta Kerajaan
Once the applicant successfully overcomes the objections from the examiner, he has to pay a fee of RM450 for publication. MyIPO publishes the trademark in the Government Gazette, Warta Kerajaan. Any third party can submit relevant evidence and raise opposition to the trademark within two months.
If a third-party file an opposition, the applicant must submit a counter-statement to the registrar within two months of notice. Finally, the registrar shall refuse or proceed to register the trademark completely or register it under certain conditions. However, the parties can appeal against the registrar’s decision in the High Court.
Trademark registration
If the trademark overcomes opposition from a third party or doesn’t face any opposition within two months, it proceeds to the registration stage. MyIPO enters the mark in Trade Marks Register and issues a sealed notification. The applicant should pay a prescribed fee if they wish to avail of a registration certificate. The registered trademark will be valid for a period of 10 years from the application filing date.
Malaysia practices the ‘first to use‘ principle and might pass-off certain unregistered marks. But, in case of trademark infringement, the business can confidently take legal actions only when the mark is registered. Moreover, the amendments to the Malaysia Trade Marks Act make the trademark registration process user-friendly. Besides, the trademark process now supports international applications, making it on par with global standards.
Hence, international trademark applicants, including those from India, can use this excellent opportunity to register their trademarks in Malaysia through Intepat IP.
