Trademark registration in Malaysia

trademark registration in Malaysia, Malaysia trademark, Malaysia trademark registration

Before staring doing business in Malaysia, it is necessary to know the regulations on trademark registration in Malaysia. The following articles shall highlight the major steps, process and principle of Malaysia trademark registration.

A trademark is a business’s identity. It can be used to set a product or service apart from the competitors. A trademark associated with a brilliant branding campaign will help a business make millions or even billions.  Given the value of a trademark, a sophisticated entrepreneur would always make trademark registration a top priority.

Many business owners, however, are confused by the trademark registration process’s complexities and requirements. Don’t worry, we’ve got you covered with a step-by-step guide on how to register a trademark.

Step 1: Design a Trademark

A trademark means any sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, the shape of goods or their packaging, color, sound, scent, hologram, positioning or sequence of motion, or any combination thereof that is capable of being represented graphically, at the same time, it is also capable of distinguishing goods or services of one undertaking from the others.

Step 2: Classification

A trademark is protected in respect of the goods and/or services. As the result, it is necessary to deliberate the exact list of products and/or services that are being provided under the trademark. Thereafter, identify the relevant classes under Nice Classification.

This step is very important because the trademark’s scope of protection is determined by the products or services specified. On goods or services not covered by the registration, the trademark may not be protected. Cover as many groups as you possibly can!

Step 3: Do a Trademark Search

It is beneficial to perform a pre-filing search and review to determine the likelihood of trademark before filing the application. The searches would be linked to earlier marks in the Trademark Registry’s database. Nonetheless, the searches may be extended to include other jurisdictions’ databases.

Step 4: Identify the Trademark Owner

It is possible to register a trademark in the name of a person, corporation, or other organization, and it is advisable to think twice at this point to recognize the desired owners in order to avoid the additional expense of transferring trademark ownership in the future, unless it is absolutely necessary.

Step 5: Prepare and File Trademark Application

Generally, filing a trademark application in Malaysia requires the following information:
1. Full name of the trademark applicant
2. Full address of the applicant
3. List of goods and services provided under the trademark
4. Class number (Nice Classification for filing in Malaysia)
5. A softcopy of the trademark in high resolution
6. Priority information, if priority right is being claimed
7. Certified translation of the trademark if it contains non-Roman characters.

To prevent an unreasonable rejection or office action, it is recommended that you consult a qualified trademark agent or attorney about the specific requirements of filing a trademark application.

Step 6: Examination 

Following the filing of a trademark application, the Registrar of Trademarks will conduct a Formality Review to check the documentation and details submitted. If any irregularities are discovered on the trademark application, the applicant will be given the opportunity to answer or correct the irregularities.

Step 7: Publication 

The trademark will be approved and published in the Malaysian IP Official Journal until the Registrar determines that the trademark application meets the requirements of the Trademarks Act 2019. People has two months from the date of publication to file an opposition to the trademark registration.

If no opposition is filed, the trademark will be registered in respect of the goods or services.

Step 8: Registration of Trademark

The Registrar will issue a notice of trademark registration with the Registrar’s seal until the trademark has been registered. If the registered proprietor requests a certificate of registration, the Registrar will issue the certificate of registration, which will be identical to the trademark notification.

The registered trademark owner can now use the ® symbol with the trademark. The trademark is now protected, and the owner is allowed exclusive use of the trademark for ten years from the date of filing in respect of the registered products or services. Technically, a trademark registration is permanent if it is extended every ten years.

From the date of filing, a smooth trademark registration process normally takes 12 to 18 months. If the application is subjected to some office intervention or opposition proceedings during the registration process, it will take longer.

You can also find the list of Malaysia IP Firms here.

Leave a Reply

Your email address will not be published. Required fields are marked *