In Malaysia, trademark registration is an important process that protects your brand identity and gives you exclusive rights to use your mark. It prevents others from copying or misusing the symbols and phrases associated with your business.
In this article, we’ll explore the importance of trademarks, what to consider when applying, a step-by-step guide to trademark registration, and how to handle rejected applications.
A trademark is a sign that can be represented graphically, which distinguishes the goods or services of one organization from another. According to MyIPO (Intellectual Property Corporation of Malaysia), it includes signs such as any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape or packaging of goods, color, sound, scent, hologram, or a combination of these signs.
Other types of trademarks include collective and certification marks. Collective marks are signs used to distinguish goods or services of members of the association (e.g., C.A. – Chartered Accountant), while certification marks are signs that the goods or services are certified by the mark proprietor (e.g. JAKIM Halal logo).
Here are a few ways registering a trademark benefits your brand:
A trademark registration can be applied for by any individual, business organization, institute, or legal entity. This entire process may take 12 to 18 months. It is highly advisable to register a trademark before using it, in order to prevent trademark hijacking.
Trademark hijacking occurs when a third party submits a fraudulent trademark application to obtain ownership over classes of goods for which the real owner has not obtained trademark registration. The hijackers aim to exchange this ownership for money or other demands.
For a real-life look into trademark protection in the digital age, check out our Sambal Nyet Berapi Case Study.
According to the Malaysian Trademarks Act 2019, here are the marks that can and cannot be registered:
Interested to know more about the don’ts of trademarks? Learn all about Offensive Trademarks that are Non-Registrable.
Here are the documents required in order to file a trademark application in Malaysia:
Here are the key elements of a registrable trademark:
Do note that this list is extensive but not exhaustive. Please refer to the Malaysian Trademarks Act 2019 for more details.
Did you know the distinct and unique quality of your trademark can be weakened by unauthorized use? Learn more about the concept and implications of trademark dilution.
While not mandatory, this step is highly recommended to ensure your trademark is unique and available. Conducting this search can prevent potential conflicts and application rejections later in the process. You can use platforms like Trademarkia or MyIPO’s Similar Mark Search to perform this check. The search process takes around 5 working days to complete.
The next step is to file your trademark application with MyIPO. This involves submitting all required documentation and paying the necessary fees. You’ll need to provide details about your trademark, including its visual representation and the goods or services it will be used for.
The Registrar will then check that all the details and documentation are complete. Once this process is completed, you will be given a filing number and a filing report.
If you receive a Notice of Acceptance, your mark will be published in the Trademarks Journal for a period of 2 months. This publication serves as a notice to third parties, allowing them tovoice any oppositions to your trademark registration. Any oppositions must be filed within this 2-month period.
Assuming no oppositions are filed during the publication period, you will receive a Notice of Registration. This marks the successful registration of your trademark, granting you protection for 10 years from the date of application.
This protection can be renewed every 10 years thereafter, allowing you to maintain your trademark rights indefinitely, as long as you continue to use the mark and pay the renewal fees. To fully protect your brand, implement ongoing trademark management strategies.
Here are steps you can take if you receive a Provisional Refusal:
Navigating the complexities and bureaucracy of trademark registration can be daunting. However, with intellect, it doesn’t have to be. Established in 1993, we offer holistic IP services in the areas of Trademark, Copyright, Patent, Industrial Design, Licensing and Franchising.
With over 31 years of experience, we’ve helped more than 20,000 brands secure ownership of their logos and taglines. Whether you’re a new startup or a seasoned business, our expert team is here to make the application process simple and easy.
Ready to register your trademark Consult our experts? at intellect today!
The cost of registering a trademark in Malaysia varies depending on the number of classes of goods or services it covers. For a free consultation and an exact quote, you can send us an enquiry to enquiry@intellect-worldwide.com or contact our iPeople team.
Trademark protection in Malaysia lasts for 10 years from the date of application. It can be renewed indefinitely for a period of 10 years thereafter.
The ® symbol signifies that a trademark is registered with the relevant trademark office. It is reserved exclusively for registered trademarks.
On the other hand, the ™ symbol can be used by anyone to indicate that a mark is being used as a trademark, whether or not it is registered.
Common defenses to trademark infringement may include using in good faith, in exercise of rights granted by registration, for non-commercial purposes, or for news reporting / news commentary. Other defenses include prior use and implied consent.
