TRADEMARK IN MALAYSIA

Protecting time of trademark in Malaysia is 10 years from the registration date.

Although the proof of the use is not compulsory in Malaysia, the holder needs to use their trademark in practice to protect their trademark. The reason is because if the trademark is not utilized by the owner within the following 3 years from one month before the application date., their trademark can be attacked on the ground of non-use. In this case, if others give requirement of cancelation to the Trademark Division, the holder is able to loss their trademark if they do not prove the use of trademark by commercial actions such as advertising, establishing business locations or at least providing a single sale. Therefore, if not have proof for the use for five consecutive years, the effectiveness of the trademark shall be terminated upon request of other third party.

After registering the trademark successfully, the owner will have following rights: exclusive right to use registered trademark, right to oppose subsequent conflicting applications, right to request cancellation against subsequent conflicting applications, right to license the third party using the trademark, right to claim customs authority for seizure of counterfeit goods and right to assign Trademark in other countries which are members of Paris Convention.

It can be seen that the rights above bring total protection for the trademark. The owner does not hardly prove for ownership when an infringement occurs because the trademark is registered in this jurisdiction.

Time frame of registering Trademark is often from 12 to 18 months approximately. After this period, the holder shall receive the protection certificate of their trademark if registering the trademark successfully.

Before registering the trademark filing a trademark application to the Trademark Office, a private pre – filing search is recommended. This can help the holder save time, effort and even state fees in order to consider and decide whether they should fil trademark application in Malaysia.

Malaysia uses the rule “first to use” to determine the time of rights for trademark established.

This means that rough the use of the trademark, they can have rights and benefits with their trademark in fact, no matter anyone registers such trademark in by the Trademark Division before them. However, when dealing with infringement, the holder must spend a lot of money to prove their ownership. That is why registering the trademark is necessary as an evidence for the prove. Besides, there are many countries which also applies this rule such as United States, Myanmar, Brunei, Hong Kong SAR, India, Australia, New Zealand, Singapore and Canada.

With the economic integration, taking part in international agreements and treaties relating to trademark such as Paris Convention; Nice Agreement; Vienna Agreement, Madrid Protocol, make the protection for the trademark in Malaysia better for international applicants filing application in host country and national applicants filing their trademark application to other countries.  Moreover, with being a member of Paris Convention and Madrid Protocol, the holder can register their trademark in other countries through WIPO and enjoy the priority for the first application filed in the host country with 6 months priority.

In Malaysia, trademark registration is not forced with anyone and using an unregistered trademark is legal. Especially, rights for the trademark originate from the use of trademark. However, as said above, the registration is extremely essential for the owner, and it brings many benefits to the holder. For example, it can help the holder easily prove the ownership and validity in order to tackle the infringement from using the trademark illegally and generate royalty for others in licensing. Hence, this helps the holder save much cost to deal with these things.