Registering A Trademark In Malaysia

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Registering A Trademark In Malaysia

The Trademarks Act 2019 (“TA 2019”), the Trademarks Regulations 2019, and applicable case law (related to trademarks) decided by the courts govern trademark disputes in Malaysia.

Although trademark registration is not required, it is highly recommended. This is because the statutory rights granted to the owner of a trademark under the TA 2019 only apply to registered trademarks. This includes the ability to sue the putative trademark infringer for trademark infringement. If a trademark is not registered, its owner may only file a passing off action (rather than a trademark infringement action) against anyone who uses a mark that is similar or identical to it. However, compared to trademark infringement, the chance of success in a passing off action is lower because it depends on the ability of the owner of an unregistered trademark to meet the passing off conditions.

Depending on the goods and/or services for which the trademark is being used/ intended to be used, any person who claims to be the bona fide proprietor of a trademark may apply for registration of that trademark in the relevant classes for registration under the Goods and Services (Pre-Approved) List. There are 45 different trademark registration classes. Trademarks used for commodities are covered by Classes 1 to 34, while trademarks used for services are covered by Classes 35 to 45.

A trademark registration in a specific class only grants that trademark exclusive rights and protection in that class. As a result, trademark owners should register their marks in all applicable classes to ensure that their rights are protected.

Registration Procedure of a Trademark

A trademark registration application must be submitted to use the appropriate form and accompanied by the prescribed fee. The data of the trademark applicant, the trademark representations, the trademark description, the classifications of goods and services, and the specifications of the goods and services are all required to be supplied in the application form.

The trademark application will be formalized and substantively examined by the Registrar of Trademarks (“Registrar”) when it is filed. During the substantive examination, the Registrar will look to see if the trademark application meets the TA 2019’s registration requirements. The Registrar will refuse to register a trademark if it violates any of the following conditions:

  1. within any of the absolute grounds for refusal of registration under Section 23 of the TA 2019 including but not limited to the following:


    1. signs which are not capable of being represented graphically and not capable of distinguishing goods or services of one undertaking from those of other undertakings;

    2. trademarks which are devoid of any distinctive character;

    3. trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics of goods or services or the time of production of goods or of rendering of services; or

    4. trademarks which consist exclusively of signs or indications which have become customary in the current language of the territory or in the bona fide and established practices of the trade.

  2. within any of the relative grounds for refusal of registration under Section 24 of the TA 2019 including but not limited to the following:


    1. if there exists a likelihood of confusion on the part of the public-

(aa) where the trademark is identical with an earlier trademark and is to be registered for goods or services similar to the earlier trademark; or

(bb) where the trademark is similar to an earlier trademark and is to be registered for goods or services identical with or similar to the earlier trademark;

  1. if it is identical with or similar to a well-known trademark which is not registered in Malaysia and it is to be registered for the identical goods or services of the proprietor of the well-known trademark.

If the Registrar determines that the trademark application meets the TA 2019’s registration requirements, he will accept the trademark application for registration and publish it in the Intellectual Property Official Journal for a period of two (2) months. During this time, any party may file an opposition to the trademark’s registration on any of the grounds listed in the TA 2019. If no one objects to the brand being registered within these two (2) months, the trademark will be registered.

A notification of registration after a trademark is registered. By filling the specified form and paying the prescribed fee, the registered trademark proprietor can acquire a certificate of registration of the trademark.

Once a trademark is registered, the TA 2019 grants to the owner of such registered trademark:

  1. the exclusive right to use the trademark in relation to the goods or services for which the trademark is registered in Malaysia; and
  2. the exclusive right to authorize other persons to use the trademark in relation to the goods or services for which the trademark is registered in Malaysia.

Maintaining a Trademark in Malaysia

Trademark registration is valid for a period of ten (10) years from the date of its application and may be renewed every ten years. To keep the rights earned by trademark registration, the registration must be renewed within the time frame specified. A registered trademark owner must also ensure that the registered trademark is used (in relation to the goods and/or services for which the trademark is registered). If the registered trademark proprietor (or with his consent) does not use the trademark in good faith in Malaysia within three (3) years of the date of issuance of the notification of registration, the trademark registration may be revoked by the Court on an application by an aggrieved person on the grounds of non-use.

Trademark protection is geographically limited. If trademark owners intend to export their products or services to other countries, they should either register their trademark directly in each country of interest (with the relevant national intellectual property office) or use the Madrid Protocol Concerning the International Registration of Marks (“Madrid Protocol”).

*** Other Articles***

– You could visit here to see Trademark Registration in Malaysia.

– You could visit here to check 04 Notable Questions About Filing Trademark In Malaysia here.

– You could read Procedure of Trademark in Malaysia here.

– You could visit here to see Required documents of filing trademark in Malaysia here.

– You could read 07 Notes To Malaysia Trademark Registration You Should Know here

Contact AAA IPRIGHT: Email: info@aaaipright.com

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