Trademark protection in Malaysia involves a series of steps that ensure the trademark’s uniqueness and legal standing. By understanding and adhering to these procedures, applicants can streamline the process and effectively protect their trademarks in Malaysia.
Trademark protection in Malaysia involves a structured process managed by the Intellectual Property Corporation of Malaysia (MyIPO). This guide outlines the essential steps, providing crucial information for domestic and foreign companies looking to protect their brand assets in the Malaysian market.
What is a trademark in Malaysia?
In Malaysia, trademark protection encompasses a broad spectrum of distinctive identifiers that distinguish goods or services in the marketplace. These can range from traditional elements like words, names, and logos to more unconventional aspects such as colors, sounds, scents, and even holograms or motion sequences. This comprehensive definition reflects Malaysia’s modern approach to intellectual property rights.
Importantly, Malaysia adheres to the common law “first-to-use” principle in establishing trademark ownership priority. This principle, consistently upheld in Malaysian courts, means that the rights to a trademark are typically granted to the entity that first uses the mark in commerce within the country, rather than the first to register it. This system offers a layer of protection for businesses that may have been using a mark without formal registration, while also encouraging prompt registration to solidify legal rights.
Filing Requirements for Trademark Protection in Malaysia
To obtain a filing date for a trademark application in Malaysia, the following information must be provided to MyIPO:
- Applicant’s Details: Full name, address, and nationality of the applicant.
- Representation of the Trademark: A clear image or representation of the trademark.
- List of Goods or Services: A detailed list of goods or services that the trademark will cover.
It is important to note that a Power of Attorney is not required for trademark protection in Malaysia. However, if convention priority is claimed, a certified copy of the Priority Document must be provided, along with a certified English translation if the documents are not in English. This should preferably be done within one month from the filing date of the trademark application.
In Malaysia, multiple-class trademark applications are possible. This allows applicants to protect their trademarks across different categories of goods and services under a single application, providing a cost-effective and efficient way to secure broad protection.
Contact ASL for Filing Trademark in Malaysia:
Email: [email protected]
WhatsApp/WeChat: (+65) 8749 6692
Examination, Publication, and Opposition
Trademark applications in Malaysia undergo both formal and substantive examinations:
- Formal Examination: Checks the completeness of the application.
- Substantive Examination: Assesses the distinctiveness and eligibility of the trademark.
Once a trademark application is accepted by the Registrar, it is published in the Journal. From the publication date, any person may oppose the registration of the published trademark within two months.
Grant, Validity Term, and Trademark Renewal in Malaysia
Upon acceptance, the applicant must pay the official grant fee within two months from the Notice of Invitation for Publication. The trademark registration is valid for ten years from the filing date and can be renewed indefinitely every ten years.
If the renewal fee is not paid by the due date, a late renewal fee must be paid within six months from the expiration date of the last registration. After this period, restoration procedures will apply, which may involve additional fees and requirements.
The average processing time from filing to trademark registration in Malaysia is approximately 12 to 18 months. This timeline includes the examination, publication, and opposition periods.
Use Requirement of Trademark in Malaysia
A registered trademark in Malaysia can be canceled on the grounds of non-use if it has not been used for a continuous period of three years prior to one month before the date of the application for cancellation. This provision ensures that trademarks remain in active use and are not just registered without intent to use.
Foreign applicants must appoint a registered Malaysian trademark attorney to handle the trademark protection process in Malaysia. This ensures compliance with local laws and facilitates smooth communication with MyIPO.
Contact ASL for Filing Trademark in Malaysia:
Email: [email protected]
WhatsApp/WeChat: (+65) 8749 6692
Additional Notes
- Online Search Database for Malaysian Trademarks: An online database is available for conducting preliminary searches of existing trademarks in Malaysia, helping applicants avoid potential conflicts.
- Provisional Refusal of International Registrations: If a provisional refusal is issued for an international registration in Malaysia, the response must be filed within two months from the date of issuance. Extensions of up to six months can be requested. The response, submitted in English, must be filed by a local representative. Provisional refusals in Malaysia are not subject to revision or appeal before the Office.
By following these key steps and understanding the trademark protection process in Malaysia, applicants can secure and maintain their trademarks effectively, protecting their brand identity and legal rights in the market.
*** After more than 10 years of operation, ASL has been ranked as the top-tier IP Firm for years by Legal500, AsiaLaw, and WTR. We have been well known for OneTouch of IP protection in more than 27 countries with Budget savings from 15-35%. The more clients file trademark, patent, and industrial designs through ASL, the more savings our clients receive.
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