TRADEMARKS FILING AND PROSECUTION IN MALAYSIA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Malaysia may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. Unregistered trademarks are protected under common law of passing off in Malaysia.
|Relevant office||Intellectual property corporation of Malaysia(MyIPO)|
|Nice classification||Yes (11th edition)|
|Multi class system||Yes|
|Documents required for filing a trade mark application||Applicants details, representation of the mark, list of goods and service|
|Prosecution process||Filing publication of the mark in the trade mark journal opposition(within 2 months from the publication date) registration renewal|
|Registration term||10 years from the date of filing|
|Renewal term||10 years|
Trademark searches in Malaysia
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Malaysia can be conducted for word marks, device marks, numeral and labels. Trademark searches in Malaysia can be conducted through official website of Intellectual Property Corporation of Malaysia as it provides three modes for conducting search. First one is IP online search, second one is asean TMview (this platform provides all the data of ASEAN member states), third one is Global brand database, WIPO. To avoid future conflicts it is advisable to conduct trademark searches.
Trademark word search edition of Malaysia follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Malaysia to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Malaysia. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Malaysia can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in Malaysia
A person may file multi-class or single class trademark application in Singapore.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Malaysia
Ordinary trademark applications filed in Malaysia are applications without claiming any priority. Ordinary applications in Malaysia are filed manually and online as well. On the official there are various forms available for filing trademarks manually and the website also provides with the option filing trademarks via online and through MyIPO IP online search and filing option ordinary applications can be filed online. Multi class trademark applications may also be filed in Singapore. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Malaysia/Convention trademark applications Malaysia:
A priority trademark application may be filed in Malaysia. A priority trademark application should be filed in Malaysia within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Malaysia within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Malaysia follows the nice classification of classes. Intellectual property corporation of Malaysia uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
The official website of Intellectual Property Corporation of Malaysia lists down all the classes with the description of goods and services for the reference of the users. The applicant is not encouraged to use the entire class heading or cover all the goods and services covered under the class.
Trademark examination in Malaysia
Once the application for the registration is submitted it goes through the examination process. The examiner will check the application if it has all the legal requirements of registration. If the registrar objects the application or require any limitation, modification or condition it must be conveyed to the applicant. The onus of proof to show that the mark is registrable is on the applicant. The applicant is given limited time to reply in writing or through submissions. If the applicant does not reply within the stipulated time then in this case the application is deemed to have been abandoned.
The registrar will take the decision on the basis of the applicant’s response and the decision will be conveyed in writing to the applicant.
In case the applicant is aggrieved by the decision of the registrar he can appeal the decision to the court.
Trademark opposition in Malaysia
On the successful completion of the examination period the application for the registration is accepted and is published in the official gazette for the observation by the third parties. any parties interested within 2 months from date of publication in official gazette may file a notice of opposition. On the receipt of the notice of opposition by the applicant, the applicant is given two months time to file the counter statement. The counter statement must sets out the grounds on which the application of the applicant relies and also the facts alleged by the opponent.
After this the evidence stage comes into the proceedings. The opponent is asked to file the statutory declaration along with the evidence in support of notice of opposition and after that applicant is asked to file the statutory declaration along with the evidence in support of the application. On receipt of the statutory declaration of the applicant, the opponent has chance to again to reply to the applicant’s evidence. After this the evidence stage is completed and no further evidence can be filed except by leave of the registrar.
Once the evidence stage is over the decision is issued by the registrar. The registrar may refuse to register the mark, register it absolutely, or register it subject to such condition, modifications, amendments or limitations.
Trademark registration in Malaysia
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of filing of the application and the registration certificate is issued.