MALAYSIA

• Kinds of Trademarks registrable in MALAYSIA

  • Following indications may be used as Trademarks in Malaysia:

    • Words
    • Logos
    • Pictures
    • Names
    • Brand
    • Ticket
    • Signature
    • Heading
    • Device marks
    • Brands
    • Headings
    • Labels
    • Tickets
    • Names
    • Signatures
    • Words
    • Letters
    • Numerals
    • Combination of the above

    Types of Marks registrable:

    1. Collective marks
    2. Certification marks
    3. Marks for non-commercial purposes
    4. Service marks
    5. Well Known marks
• Requisites for a Trademark to be registrable in MALAYSIA

  • Trademarks must contain the following essential requirements to be registrable in Malaysia:

    • Distinctiveness
    • Non-descriptiveness of the goods and / or services
    • Not be a well known term in the line of business, trade channels of the applicant
    • Not be same / similar / identical either visually and/or phonetically to prior registered / pending marks.
• Kinds of Trademarks not registrable in MALAYSIA

  • Applicants should bear in mind that the following will not be registrable as Trademarks in Malaysia:

    1. Marks that denote the kind, quality, quantity, intended purpose, value and time of production of goods or of rendering of services.
    2. Marks consisting of common surnames or geographical names / indications / appellations.
    3. Deceptive and Misleading marks capable of confusing and / or misleading the public.
    4. Marks containing or comprising of scandalous, offensive matter.
    5. Marks that would be refused protection by a court of law.
    6. Marks that are prejudicial to the interests and security of the country.
    7. Marks identical or closely resembling well known marks and containing translations of well known marks.
    8. Marks carrying words and expressions such as ‘patent’, ‘royal patent’, ‘copyright’, ‘registered’, ‘design’, ‘counterfeiting’. ‘forgery’. as well as prohibited marks.
    9. Name of persons living or dead without authorization or consent by concerned persons therein.

    TrademarkCopia through its associate Law Firms and Lawyers in Malaysia is at hand to help you with trademark registration and prosecution.

• Trademark Search in MALAYSIA

  • It is highly advisable to conduct a search of the proposed mark to ensure that a similar mark has not been applied for by other contenders and is not pending registration or is already registered.

    A search is useful in determining the following:

    1. Conflict with existing trademarks.
    2. Confirm validity of the proposed trademark.
    3. Evaluate the filing of the application and assess the risk of nullity and 3rd party claims.
    4. Strategise on the kind of mark to file regarding the denominations such as figurative, coloured, black & white etc.
    5. Search is a useful tool prior to filing of applications since search concerning prior pending marks carried out by the Malaysian Trademarks Office.

    Our Attorneys are at hand to assist you with searches and provide opinions about registrarbility of the proposed / coined trademark in Malaysia.

• Trademark Filing in MALAYSIA

  • MyIPO has offices at Kuala Lumpur, Sabah and Sarawak. IP applications can be filed at any of these offices. Applicant has to furnish the following documentation for filing:

    1. Name of the applicant
    2. Logo (if any) in B/W or Colour
    3. Address along with nationality of the Applicant
    4. Classes in which Registration is sought.
    5. Priority details if any.
    6. Power of Attorney (POA) – Not Required
    7. Priority details if any.
    8. Details regarding Goods and Services for which registration sought
       (Goods and Services classified as per NICE classification)
       (Figurative Mark as per Vienna Agreement)

    TRADEMARKCOPIA.COM will assist you with the following:

    • Filings
    • Infringement & Opposition Actions
    • Renewals
    • License and Assignment procedures
    • Trademark Watch Services
• Trademark Examination in MALAYSIA

  • Once the trademark applications are lodged with the MyIPO, they are examined to ensure that all the formalities are met and that the mark is registrable.

    In the event of any objections by the examiners, a two months’ window is given to the applicant to carry out amendments as applicable, after which the application is published for opposition by the general public.

• Trademark Publication & Opposition in MALAYSIA

  • Once the trademark application is accepted by the Examiners, the application is published for opposition by the general public.

    Once the application is published, interested third parties may lodge their opposition to the Trademark Application with two months from the date of publication.

    TrademarkCopia through its experienced Trademark Lawyers and Trademark Attorneys in Malaysia can comprehensively assist you with trademark opposition and prosecution.

• Trademark Registration in MALAYSIA

  • Post Publication if no opposition is forthcoming against the application, it then proceeds for registration, after which a registration certificate is issued.

    Registration lasts for 10 years after after which it can be frequently renewed for another 10 years with MyIPO.

    Rights of Trademark Owners: Trademarks may be:

    • Exclusively used by the owners of the registered trademarks.
    • Transferred in whole or in part
    • Inherited
    • Assigned and licensed.
    • Mortgaged and creditors may seize such trademarks belonging to their debtors.
    • Licensed to natural or legal persons
    • Prevented from unauthorized usage by third parties
    • The subject of appropriate redressal from a court of law upon infringement
• Trademark Usage in MALAYSIA

  • Pre- Registration: Usage before registration could prove advantageous as it could help overcome objections concerning distinctiveness.

    Post – Registration: If the mark is not used continuously post registration within 5 yrs., the mark could become vulnerable for cancellation.

• Trademark Cost of Registration in MALAYSIA

  • Please write mail for cost of registration of trademark in Malaysia to the mail address given below:

    contact@trademarkcopia.com