Trademark registration 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 related to how to register trademark in Malaysia.
Understanding Trademarks in Malaysia
In Malaysia, a trademark is a distinctive sign used to identify and differentiate goods or services offered by different entities. Trademarks can include words, names, logos, colors, sounds, scents, and even holograms or motion sequences. Malaysia’s approach to trademarks is comprehensive, recognizing a wide range of identifiers.
Malaysia follows the common law “first-to-use” principle, which means that trademark rights are granted to the entity that first uses the mark in commerce within the country, rather than the first to register a trademark in Malaysia. This principle provides protection for businesses that use a mark without formal registration but encourages prompt registration to secure legal rights.
Contact ASL for Filing Trademark in Malaysia:
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Filing a Trademark Application in Malaysia
Multiple-Class Applications: Malaysia allows for multiple-class trademark applications, enabling applicants to cover a broad range of goods or services under a single application.
Filing Requirements: To obtain a filing date, the following information must be provided to MyIPO:
- Applicant’s Details: Full name, address, and nationality.
- Representation of the Trademark: A clear image or representation of the trademark.
- List of Goods or Services: Detailed listing of the goods or services that the trademark will cover.
A Power of Attorney is not required for registering a trademark in Malaysia. If claiming convention priority, a certified copy of the Priority Document with a certified English translation (if not in English) should be provided within one month from the filing date.
International trademark registration in Malaysia is accessible to foreign applicants through the Madrid System. By filing an application to the World Intellectual Property Organization (WIPO), applicants can seek protection under the Madrid Agreement, the Madrid Protocol, or both. If the Intellectual Property Corporation of Malaysia (MyIPO) approves the international application, it will issue a decision accepting the trademark for protection. This acceptance is then officially published in the Industrial Property Official Gazette, formalizing the trademark’s status in Malaysia.
For international trademark registrations designating Malaysia through the Madrid System, applicants should be aware of the following:
- The time limit to respond to a provisional refusal is two months from the date of issuance by MyIPO.
- Extensions of up to 6 months may be requested.
- Responses can be submitted in English.
- A local representative must be appointed to file the response.
- Provisional refusals in Malaysia are not subject to revision or appeal before MyIPO.
Examination, Publication, and Opposition Process
Examination: Trademark applications undergo both formal and substantive examinations to ensure completeness and assess distinctiveness.
Publication: Once accepted, the trademark application is published in the Journal. Any person can oppose the registration within two months from the publication date.
Granting, Validity, and Renewal of Trademark registration in Malaysia
Upon acceptance of a trademark application in Malaysia, applicants must promptly address the final steps to secure their registration. The official grant fee is due within a two-month window following the issuance of the Notice of Invitation for Publication.
Once granted, trademark registrations in Malaysia enjoy a substantial period of protection, remaining valid for ten years from the initial filing date. This protection isn’t limited to a single decade, however, as trademark owners have the option to renew their registrations indefinitely at ten-year intervals, ensuring long-term brand security in the Malaysian market.
The renewal process in Malaysia offers some flexibility, but it’s crucial for trademark owners to be aware of the timelines involved. While it’s best to renew before the expiration date, a six-month grace period exists during which late renewal is possible, albeit with additional fees. Beyond this grace period, more complex restoration procedures come into play. Prospective applicants should note that the typical process for registering a trademark in Malaysia takes between 12 to 18 months from filing to completion.
Malaysian law requires active use of the trademark to maintain its validity. If a registered mark goes unused for a continuous three-year period, it becomes vulnerable to cancellation upon application by interested parties, underscoring the importance of consistent trademark usage in commerce.
Representation by a Trademark Attorney for Registering a Trademark in Malaysia
Foreign applicants must appoint a registered Malaysian trademark attorney to register a trademark in Malaysia. This ensures compliance with local laws and facilitates communication with MyIPO.
Contact ASL for Filing Trademark in Malaysia:
Email: [email protected]
WhatsApp/WeChat: (+65) 8749 6692
Additional Notes
- Online Search Database: An online database is available for preliminary trademark searches to avoid conflicts.
- Provisional Refusal Responses: Responses to provisional refusals of international registrations must be filed within two months from issuance. Extensions of up to six months can be requested, and responses must be submitted in English by a local representative. Provisional refusals are not subject to appeal before the Office.
By understanding these steps and requirements, businesses can navigate the trademark registration process in Malaysia effectively, securing their brand’s legal protection 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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