Registration of Trademarks in Malaysia

Registration of trademarks in Malaysia is regulated by the Trademarks Act 2019 (“TA 2019). TA 2019 statutorily defined trademarks as any sign that is represented graphically or distinguishing goods or services of one undertaking from those of other undertakings. To register a Malaysian trademark, an applicant can apply via the official portal of the Intellectual Property Corporation of Malaysia (MyIPO).

Registration of Trademarks in Malaysia

According to the MyIPO portal, 45 distinct classifications of goods and services may be trademarked. Classes 1 to 34 cover trademarks applicable to goods and commodities, whereas Classes 35 to 45 cover trademarks applicable to various services. Registration of a trademark in a specific class confers exclusive rights and protection only within that class. Therefore, trademark owners must register their marks in all applicable classes to protect their rights.

Before applying, it is essential to note that the intended goods or services to be trademarked must be distinguishable, distinctive, and publicly recognised. Additionally, any goods or services cannot be registered for a trademark if they go against the public interest and morals or if they could be considered a deceptive trademark.

Importance of Trademark Registration

1. Exclusive rights

Registered trademark owners have the exclusive right to use their marks in commercial transactions. They also have the legal standing to file an action for trademark infringement against any third party who uses their marks without permission. They can submit a complaint to the enforcement division or pursue a civil action under the Trade Description Act of 1972. Both of these options are available to them.

2. Legal Evidence

The registration certificate that the MyIPO presents as evidence of trademark ownership is considered to be prima facie evidence. A certificate of registration is a necessary document that must be shown to validate the ownership of products that are being shipped to other nations.

Step by step to register a trademark in Malaysia

1.    Search

Before submitting a trademark application, applicants must diligently search for any existing trademarks on the goods or services they intend to trademark to avoid duplication. This search can also assist them in comprehending why a trademark application was denied or detecting whether they are about to infringe on another party’s trademark.

2.    Application

MyIPO accepts applications for multiple classes of trademarks, eliminating the need for a separate application for each new class. This approach also cuts the time and expense associated with each application.

Applicants are required to submit five forms known as TM5 Forms, which can be found on the MyIPO website, and pay the prescribed fees. In these mandated forms, the applicant must indicate the following requirements:

  • Applicant’s name and address;
  • If the applicant is a business or corporation, they must state their legal entity type;
  • Specifications of the trademark; if it involves elements, a drawing must also be given;
  • A list of the applicant’s goods and services; and
  • The class under which the applicant’s goods and services fall

3.    Examination

After the application has been submitted, a Registrar will analyse it based on absolute and relative factors to evaluate if it is complete and to spot any inaccuracies. The investigation will consider these:

  • Formalities;
  • Deceptiveness;
  • Clarity;
  • Classification;
  • Conflict with prior registration, if any; and
  • Whether limitations or disclaimers must be imposed

The Registrar will also verify whether a prior trademark for the goods or services in the current application already exists. The Registrar will decide if the intended trademarked products or services adhere to all MyIPO regulations.

If there is an issue with the application, the Registrar will send the applicant an official notice detailing the reason for refusal. Now, the applicant can respond in a timely manner to any objections raised by the Registrar; if he fails to do so, the application will be presumed withdrawn. As stated in Section 29(5) of TA 2019, the applicant may respond to objections by making representations, amending the application to comply with any conditions, amendments, modifications, or limitations imposed by the Registrar, or providing additional information or evidence to support their application.

Section 23 (5) Absolute Grounds for refusal of registration Malaysia

1.    Publication

If the examination by the Registrar is completed or if the applicant successfully responds to the objections made, the trademark application will be published in the Gazette for two months. At this point, the applicant must file the TM3 Form to register the trademark in the Gazette.

2.    Opposition

The publication of the application in the Gazette permits any interested parties to dispute the trademark for a range of reasons. Before lodging an official complaint to MyIPO through a Notice of Opposition, parties that intend to oppose must first contact the applicant in an effort to resolve the dispute.

After receiving the Notice of Opposition, the applicant has two months to submit a response. In the absence of a reply, the trademark application will be considered abandoned.

Suppose the applicant submits a counter statement and supporting documentation, the opponent is given an additional two months to answer the application, and the authorities will make a judgment accordingly.

3.    Registration

According to Section 36(1) of TA 2019, the trademark will be registered if no opposition has been made or if the dispute between the applicant and the opponent has been settled, or if, in the event that an opposition has been filed, the Registrar has ruled in favour of the applicant.

The Registrar will award a Certificate of Registration bearing the Registrar’s official seal upon registration. The complete trademark registration process typically takes between twelve and twenty-four months. Once the registration certificate is issued, the applicant is deemed to be the legal owner of the trademark.

Duration of Registration

According to Section 39(1) of TA 2019, the registration of a trademark shall be for a period of ten years and may be extended for a further ten years upon the trademark owner’s request and payment of the prescribed fees.

Conclusion

Because having a registered trademark provides the owner with additional protection, including presumed ownership and a reduced burden of proof to demonstrate their rightful ownership over any goods or services, it is highly recommended that a trademark be registered even though it is not legally required to do so. This is because having a registered trademark provides the owner additional protection over their goods or services.