Trade mark Registration in Malaysia: An overview

A smooth trade mark registration in Malaysia usually takes a time period of 12 -18 months from the date of filing of the application. This time frame can extend if the application faces office action or opposition from the public during the registration procedure. It is suggested by the trade mark experts at Enterslice to keep reviewing your registration form on a regular basis in order to ensure its validity.

Importance of trade mark registration in Malaysia

The proprietor of the trade mark has exclusive rights over the use of trade mark in Malaysia only. The following rights are conferred on a proprietor after the registration of a trademark in Malaysia:

• Exclusive Right: the owners of the registered trade marks have the exclusive right over the use of such marks for trading purposes. They have the right to take legal action against infringement of their mark against the world if they use their mark without their consent. The complaints can be lodged with the Enforcement Division.
• Legal Evidence: After the registration of a trade mark, the Registrar’s Office issues a certificate of registration which acts as a prima facie mark of trade mark ownership. This certificate is used to establish ownership over the trade mark while exporting goods to other countries.

Authority for trade mark registration in Malaysia

The Intellectual Property Corporation of Malaysia working under the jurisdiction of the Ministry of Domestic Trade, Cooperation and Consumerism is the statutory authority that is responsible for trade mark registration in Malaysia. This body is responsible for both the development as well as management of the Intellectual Property System (IPS) in Malaysia.

Grounds for refusal of Registration of trade mark in Malaysia

Some of the grounds on which registration of a trade mark can be denied in Malaysia are as follows:

1. If the said mark does not satisfy the conditions of being a legitimate trade mark laid down in the Trade marks Act 2019, then registration of a mark can be denied.
2. Prohibited Marks: those marks that are prohibited by law as they are likely to confuse or deceive the public or are contrary to law, then they cannot be registered.
3. Scandalous marks: If a mark consists of a scandalous or offensive matter or would not receive protection in any court of law, then it cannot be registered.
4. Against the interests or Security of the Nation: If a mark is against or prejudicial to the interests or security of Malaysia, then it cannot be registered.

Manual Filing of a Trade mark application in Malaysia

Important points for manual filing of a trade mark application in Malaysia:

• Two copies of the completed application form. Out of these two, one copy is returned to the applicant for future reference.
• Size of the trade mark should not exceed 10 cm x 10 cm.
• The payment of the statutory fee is RM 950 per class, provided the list of services or goods applied has been adopted from the pre-approved list of services and goods. It is the responsibility of the applicant alone to claim that the list of services or goods applied has been adopted from the pre-approved list.
• There is a provision for cancellation of services and goods if the same is not found to be the same as claimed in the application.
• The statutory fee for trade mark application is RM 1100 if the class of services or goods is not adopted from the pre-approved list.
• In case the trade mark is in series, then an additional fee of RM 50 shall be charged for the second and every subsequent trade mark.
• The applicant has the option of applying for more than one class in one single application, i.e. application under multiple classes in one application is permitted in Malaysia.
• The payment for the statutory fee can be made either via cheque/ cash/ credit card/ bank draft. Money order and payable to “Perbadanan Harta Intelek Malaysia”.

Step-by-step process of filing a Trade mark application in Malaysia

Following is the 8-step simple application process of filing an application for Trade mark Registration in Malaysia:

1. Designing of a trade mark
2. Determining the classification of goods/services to be trademarked
3. Conducting a Pre-Filing trade mark search   
4. Identify the trade mark owner
5. Filing of the trade mark application
6. Examination by the trade mark examiner
7. Publication of the mark in the Malaysian IP journal
8. Registration of trade mark   

• Designing of a trade mark -

Designing a trade mark is the most elementary thing in the process of trade mark registration in Malaysia. The trade mark should be made in consonance with the applicable provisions of the Malaysian trade mark law. A trade mark is not restricted to logos only. According to the definition of Trade mark in the Trade Marks Act of 2019, a trade mark includes a sign, alphabet, letter, numeral, name, series, brand, device, label, ticket, heading, packaging or a combination of them. The trade mark should be such that it is capable of being represented graphically, and it should be capable of distinguishing its services and goods from those of others. The trade mark should also fulfil all the requirements under the Trade Marks Act 2019, especially in terms that it should not fall on absolute or relative grounds of refusal.  

• Determining the classification of goods/services be trademarked -

It must be remembered that trade marks are protected in relation to the services and/or goods. Therefore, it is necessary to decide the exact list of services and/or goods that are being offered or will be offered under the trade mark. After deciding the list, the relevant class of the services/goods under the NICE classification has to be determined. This is a crucial step in the registration of trade mark because this helps in determining the scope of protection of the trademark. It must be noted that the protection of trade mark does not extend to goods or services that have not been covered under registration. Therefore, the trade mark consultants at Enterslice strongly suggest covering as many classes as possible.   

• Conducting a Pre-Filing trade mark search -

Generally, it is suggested that before filing the application for registration of trade mark, a pre-filing trade mark search and analysis must be carried out in order to find out whether a similar trade mark already exists under the same or similar name or not and also to find the chances of obtaining the registration under the decided mark. This search for trade mark focuses on the marks already registered in the Trade marks registry. The search can also be extended to cover databases in other jurisdictions as well.

This search is entirely optional and not forms part of the official registration process. The applicant also has the option of making a request for pre-filing trade mark search to the Malaysian Registry of trade marks. Generally, the Malaysian Registry often takes a time period of almost one year to issue a decision on the existence of a similar trade mark. Therefore, it is advisable that trade mark services offered by Enterslice must be availed before making the application of trade mark registration. 

• Identify the trade mark owner -

In the next step, it is important to decide on the trade mark owner because the same has to be mentioned in the application. The trade mark owner can be an individual or a juristic person also, such as a company or other organization. It is advised by trade mark consultants at Enterslice to think thoroughly about the ownership of the trade mark because the cost of transferring the ownership of trade mark in future is very high.

• Filing of the trade mark application -

After deciding the ownership, class of goods and/or services and the list of goods or services, the next stage begins with the compilation of documents that will be required to be attached to the application for trade mark registration. It is always beneficial to consult the trade mark consultants at Enterslice before filing the application in order to avoid unnecessary refusal or office action. Once all the information has been compiled, the applicant can move ahead with the application by filing the required information in the prescribed forms and payment of the statutory fee.

After the application has been filed, the applicant cannot use this symbol ® till the registration of trade mark is concluded. It is an offence to represent a trade mark as registered without getting complete registration. The maximum fine for the commission of this act is RM 10,000,000.

• Examination by the trade mark examiner -

After filing the application, the Registrar of trade marks will verify the documents and the information submitted in the application. This examination by the Registry is known as the Formality Examination. If the registry finds out any irregularities in the application, then an opportunity shall be provided to the applicant to respond and rectify the irregularities.

Once the Formality Examination is completed, the Registrar proceeds to conduct a substantive examination of the trade mark to determine the registrability of the trade mark as per the requirements of the Trade Marks Act 2019. The Registrar usually takes about 6 -12 months to examine a trade mark application.

• Publication of the mark in the Malaysian IP journal -

If the Registrar finds that the application fulfils all the necessary requirements specified under the Trade Marks Act, 2019, the trade mark is accepted and the registration procedure moves towards the advertisement of the mark in the Malaysian IP Official Journal. Within a period of two months from the date of advertisement, the public is given an opportunity to dispute and oppose the mark.

In case anyone from the public opposes the trade mark, the trade mark application will be transferred to separate opposition proceedings from determining the registration. This process involves filing a notice of opposition, exchange of statutory declarations, counter statement and legal submissions between the parties.

However, if no opposition is filed, then trade mark will be registered in respect of the services or goods.

• Registration of the trade mark -

Upon registration of the trademark, the Registrar issues to the applicant a notification of registration of the trademark with a seal of the Registrar. The registered proprietor or the owner of the trade mark has the option of requesting a certificate of registration which shall be equivalent to the notification of trademark.

From this point onwards, the registered proprietor has the option of using the symbol ® with their trade mark. Now, the trade mark is protected and the proprietor has been granted the right of exclusive use over the trade mark in respect of the services and goods for a period of 10 years from the date of filing.

What information should an application for Trade mark registration in Malaysia contain?

All trade mark applications made to the Malaysian MyIPO must contain the following:

• Full name and address of the trade mark applicant;
• The List of goods and services that are being provided or will be provided under the trade mark;
• NICE Classification class number;
• A soft copy of the proposed trade mark in high resolution;
• Certified translation of the trade mark if it contains Non- Roman characteristics;
• Priority information if priority right is claimed by the applicant.   

Applicable fee for registration of Trade Mark in Malaysia

Following is the list of statutory fee that is applicable for trade mark registration in Malaysia along with the respective forms to be filed:

Documents required for the application of Trade mark registration in Malaysia

The following documents need to be attached to the application form for trade mark registration in Malaysia:

• Name and full address of the applicant
• Soft copy of the trade mark with high resolutions
• Incorporation certificate in case a company is an applicant
• Individual IC or passport in case an individual is an applicant
• List of goods or services under the trade mark.