The In-depth Guide to Register a Trademark In Malaysia

Trademarks in Malaysia are governed by The Trademarks Act 2019 and the Trademarks Regulations 2019, which replaced the Trademarks Act 1976 and the Trademarks Regulations 1997, came into force on December 27, 2019 and abolished the Trademarks Act 1976 and the Trademarks Regulations 1997. The Malaysian Intellectual Property Corporation is responsible for the administration and enforcement of these laws.

Malaysia is also a signatory to a number of WIPO-administered trademark treaties, including the following:

• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (27 December 2019);
• the Nice Agreement Concerning the International Classification of Goods and Services (28 September 2007);
• the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (28 September 2007); and
• the Paris Convention for the Protection of Industrial Property (1 January 1989).

Since 1 January 1995, Malaysia has been a signatory to the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights.

Registered marks

According to Section 17 of the Trademarks Act, anybody who claims to be the actual owner of a trademark may apply for its registration if:

• the person is using or intends to use the trademark in the course of trade; or
• the person has authorised or intends to authorise another person to use the trademark in the course of trade.

A representative or trademark agent is not necessary to have a power of attorney before filing, as was the case under the former law.

The legislation has finally taken the enormous leap of broadening the types of trademarks recognized for registration in Malaysia, in the spirit of long-overdue modernization. Non-traditional trademarks, such as shape, color, sound, scent, hologram, positioning, and sequence of motion marks, have long been regarded customary in many mature IP markets, with the proviso that they must be signals capable of being graphically depicted.

Collective markings, which are defined as “a sign differentiating the goods or services of members of the association which is the proprietor of the mark from those of other companies” under the new legislation, are now protected in the same way as registrable marks are.

Archaic trademark ideas such as ‘defensive marks’ and ‘association of marks’ have been removed under the new legislation due to some trimming of the Trademarks Act 1976.

While the 2019 legislation recognizes a wide range of what can be protected, it also excludes a large number of things. Some of the marks that will be rejected registration by the registrar for the absolute grounds currently stated in Section 23 of the act are, among others:

• trademarks devoid of any distinctive character;
• signs consisting exclusively of a shape resulting from the nature of the goods themselves, necessary to obtain a technical result or shape giving substantial value to the goods;
• trademarks that are of such a nature as to deceive or mislead the public regarding the nature, quality or geographical origin of the goods or services;
• trademarks that are contrary to public interest, morality, interest or security of the country;
• trademarks consisting of the flag of a country, national emblem or royal arms; and
• trademarks consisting of an international non-proprietary name as declared by the World Health Organisation.

Procedures of Trademark Registration process In Malaysia

Trademark Search

The trademarks register shall be made accessible for public inspection (subject to certain conditions) upon submission of an application using the registrar’s form and payment of the statutory fee.

Preliminary advice and searches by the registrar are still accessible under Section 13 of the Trademarks Act. When the registrar receives such a request, the registrar may give advice and search results to anybody who wants to file for a trademark registration on whether the mark is prima facie a registrable trademark. The advice and findings will be kept private and will not be made accessible to the public. Despite this, the registrar may issue a refusal stating that the trademark is not registrable after additional research or review. In such cases, the applicant will be entitled to a refund of any fees paid on the application’s filing if the application is revoked within a certain period of time.

Application filling

Allowing numerous classes to be indicated in a single application, rather than having to file one application per mark, per class, is another move taken by the act to make trademark administration more efficient. The unification of classes will save money, time, and effort in the form of paperwork and official examinations. Along with this beneficial shift comes the ability for trademark owners to divide and merge applications, allowing them to better manage their portfolio.

It is possible to submit a series of trademarks (i.e., a single application including no more than six representations of a mark that are similar in material particulars).

Regardless of the priority claimed from a Paris Convention application, the application date of a trademark in Malaysia should be its filing date, according to one clause of the legislation. Any such priority date is only used to determine which rights take precedence throughout the examination.

Application Examination

A trademark application will be examined by the registrar in accordance with Section 29 of the act, which may include a search of prior trademarks if necessary. In the name of expediency, the act currently allows a trademark applicant just one strike in the form of a temporary denial of the application by the registrar based on absolute (inherent registrability) and/or relative (conflict with previous or well-known marks) grounds. Within the timeframe given in the written notification from the registrar, the applicant has the option to make arguments, modify the application, or provide proof or information. If the registrar maintains the denial notwithstanding the applicant’s one-time remarks, the registrar will issue a complete provisional rejection, forcing the applicant to appeal to the High Court for another round of arguments.

Opposition

The Trademarks Act and its rules establish a comprehensive opposition procedure that includes back-and-forth exchanges of information and documents between the parties as well as before the registrar. Within two months after a trademark’s publication, the opponent must file its grounds and notice of opposition. After the objection is filed, the applicant has two months to file a counter-statement after receiving the notification. The opponent must file their proof in support of the opposition by way of statutory declaration within two months of receiving the statement. It will be the applicant’s turn two months later to file their statutory statement in response to the contested mark and to support it.

The opponent can then file a new evidence-in-reply that is solely in response to the applicant’s statement. After that, neither party may file any more evidence unless the registrar grants permission. The registrar will ask both parties to provide written submissions after the evidence has been completed. The registrar has the authority to issue an order to:

• refuse to register the trademark;
• register the trademark absolutely; or
• register the trademark subject to such conditions or amendments that they think fit.

The registrar’s decision is subject to appeal to the High Court.

The registrar has strict control over how long the appropriate deadline can be extended at each step of the opposition proceedings in order to avoid any unnecessary delay or misuse of the process by the parties. In order to avoid misunderstandings, a party must file an affidavit of service with the registrar within three days of serving a copy of the essential documents to the opposing party.

The Trademarks Act gives a registered trademark owner specific grounds for resistance to use against the registrar in administrative procedures. It even permits a successor-in-title to a trademark to continue opposing it in procedures that were started by its predecessor. The legislation codifies the registrar’s present practice of deferring any opposition proceedings upon request by the opposing parties, as long as the criteria are met.

Registration

The registrar will only issue a sealed notification upon successful registration. If the registered owner wants a certificate of registration, he or she must submit a request together with the required cost. The presumption that a registration is legitimate and conclusive will begin five years after registration (with exclusions), rather than seven years as it did under the 1976 act. Multiple class registrations can be renewed selectively, however classes that will not be renewed must be removed by filing a division.

Removal from register

Aside from the owner’s voluntary cancellation, registered owners should be aware that their registrations may be contested in a variety of ways under the Trademarks Act. The registrar has the authority to revoke a registered trademark within 12 months of the date of registration if the grant was erroneous. More importantly, the registration could be revoked by the court (on an aggrieved person’s application) under a variety of circumstances, including three years of non-use from the date of issuance of the notification of registration, or suspension of use for a continuous three-year period without proper reasons.

A court can also invalidate a registered trademark based on absolute or relative reasons under the act, fraud or deception in the registration process (on an aggrieved person’s application).