Questions about filing trademark in Malaysia, trademark in Malaysia

When filing new trademark in Malaysia, our global clients always raise 04 notable questions about filing trademark in Malaysia: Descriptive part, removal of one part from trademark, use of expired trademark citing against new Malaysia trademark, trademark according to Paris.

1. Is this acceptable for Malaysia Trademark including descriptive part. For example, HDK Good Restaurant does the applicant need to remove the word “Good Restaurant” from the trademark before officially filing new trademark application in Malaysia. Or the trademark applicant only needs to disclaim the word “Good Restaurant”?

Answer: The trademark applicant only needs to disclaim the indistinctive part from the Malaysia trademark, no need to remove.

 2. Malaysia trademark includes Word part & device part. By the stage of Malaysia trademark substantive examination result, if one of the parts of the trademark is refused, could we remove such part from the Malaysia trademark, then the remaining part of the Malaysia trademark shall be protected?

Answer: The Registry will raise objection on the Malaysia trademark as a whole. There is no option to remove one part from the trademark as it will make substantial difference in the trademark. Therefore, removing one part from the trademark in Malaysia is not possible.

 3. Could one expired trademark in Malaysia still be a cited one to a new Malaysia trademark in a specific period of time counted from the expired date? For example, some countries still use the expired trademark as a cited one against new trademark within the 5 years from the expired date?

 Answer: Only trademarks within the grace period of one (1) year will be cited against a new trademark in Malaysia. In the event the Malaysian Registry has raised an objection against a prior trademark which has expired more than a year from the renewal date, we can write to the registry to inform them that the same.

 4. For the Paris Convention trademark application, shall the applicant file the counterpart trademark in Malaysia within 06 months? Is there any grace period of late filing trademark in Malaysia?

Answer: The trademark can be filed whenever in Malaysia. But if the trademark applicant would like to claim the priority date when filing trademark in Malaysia, the application needs to be filed within 6 months. There is no grace period for priority claim of Malaysia trademark.

– You could see Fee of Trademark in Malaysia here

– You could visit here to see Procedure of Malaysia Trademark Registration.

– You could visit here to check the required documents for filing trademark in Malaysia

Contact AAA IPRIGHT: Email: [email protected]

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