Procedure of Trademark Application in Malaysia: Guide to protect IP In Malaysia

Securing a trademark in Malaysia is an important step for businesses looking to protect their intellectual property and establish a strong brand presence in this dynamic Southeast Asian market.

The trademark application process in Malaysia, overseen by the Intellectual Property Corporation of Malaysia (MyIPO), involves several key stages that applicants must navigate carefully. This article provides a comprehensive overview of the trademark application procedure in Malaysia, offering valuable insights for both local and international businesses seeking to safeguard their brand identities.

This article provides an in-depth look at the trademark registration process in Malaysia, from filing requirements to post-registration considerations.

What is a trademark in Malaysia?

Trademark Filing Requirements in Malaysia

To initiate the trademark registration process in Malaysia, applicants must submit the following to MyIPO:

1. Applicant’s details
2. A clear representation of the trademark
3. A list of goods or services for which the trademark will be used

It’s important to note that Malaysia allows multiple-class trademark applications, which can be more cost-effective for businesses seeking protection across various categories of goods or services.

Unlike some jurisdictions, Malaysia does not require a Power of Attorney for trademark registration. This simplifies the process for many applicants, especially those based outside of Malaysia.

If an applicant wishes to claim convention priority based on an earlier filing in another country, they must provide:

• A certified copy of the Priority Document
• A certified English translation (if the original document is not in English)

It’s advisable to submit these documents within one month of filing the trademark application in Malaysia, although this is not a strict deadline.

Examination Process

Once filed, trademark applications in Malaysia undergo both formal and substantive examination. The formal examination ensures all necessary documents and information have been provided correctly. The substantive examination assesses the trademark’s distinctiveness and whether it conflicts with any existing marks.

If the Registrar accepts the trademark application after examination, it is published in the Official Journal. This initiates a two-month opposition period during which any party can file an opposition to the trademark’s registration. This phase is crucial as it allows existing trademark holders to protect their rights.

Grant and Validity

Upon successful completion of the examination and opposition periods, the applicant must pay the official grant fee within two months of receiving the Notice of Invitation for Publication. Once granted, a Malaysian trademark registration is valid for ten years from the filing date.

Trademark registrations in Malaysia can be renewed every ten years. If the renewal fee is not paid by the due date, a late renewal fee can be paid within a six-month grace period. After this period, the trademark will be subject to restoration procedures, which can be more complex and costly.

On average, the trademark registration process in Malaysia takes between 12 to 18 months from the initial filing to registration, assuming no significant obstacles are encountered.

It’s crucial for trademark owners to actively use their marks in Malaysia. Any aggrieved party can file for cancellation of a trademark registration on grounds of non-use if the mark has not been used for a continuous period of three years before one month before the date of the cancellation application.

Representation by a Trademark Attorney

Foreign applicants must appoint a registered Malaysian trademark attorney to handle the registration process. This requirement ensures that all communications with MyIPO are managed efficiently and in compliance with local regulations.

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.

MyIPO provides an online search database for Malaysian trademarks, which can be a valuable tool for conducting preliminary searches and monitoring existing registrations.

Trademark registration in Malaysia is a structured process that requires attention to detail and adherence to specific timelines. While the process can be complex, especially for foreign applicants, the benefits of trademark protection in this growing market are significant. By understanding the requirements and engaging with a qualified Malaysian trademark attorney, businesses can effectively secure and maintain their trademark rights in Malaysia.

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