||Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as amended on 28 September 1979)
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (28 September 2007).
|Trade Mark Authority
||Intellectual Property Corporation of Malaysia (MyIPO)
|Types of Trade Marks available
|Non-Traditional Trade Marks Available
- Non-traditional Trade Marks are generally not registrable, however:
- A Trade Mark may be limited in whole or in part to one or more specified colours for the purpose of determining whether the Trade Mark is distinctive; and
- Non-functional three-dimensional (3D) shape Trade Marks may be registrable.
|Paris Convention Deadline:
||Six (6) months from the earliest claimed priority date.
|Provisions for Filing of Multi-Class Applications
|Excess Goods/Services Fee
|Registrable Trade Marks
- The Name and Address of the Applicant (an individual, company or firm represented in a special or particular manner);
- The signature of the Applicant for registration or of some predecessor in his/its business;
- An invented word or words;
- A word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or
- Any other distinctive Mark.
|Non-Registrable Trade Marks
- Trade Marks where use is likely to deceive or cause confusion to the public or would be contrary to law;
- Trade Marks that contain or comprise any scandalous or offensive matter or that would otherwise not be entitled to protection by any Court of law;
- Trade Marks that contain matter which, in the opinion of the Registrar, is or might be prejudicial to the interest or security of the nation;
- Trade Marks that are identical with or so nearly resemble Mark(s) which are well-known in Malaysia for the same goods or services of another proprietor;
- Trade Marks that are well-known and registered in Malaysia for goods or services that are not the same as to those in respect of which registration is applied for, provided that the use of the Mark(s) in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known Mark(s), and the interests of the proprietor of the well-known Mark(s) are likely to be damaged by such use;
- A Trade Mark that contains or consists of a Geographical Indication with respect to goods not originating in the territory indicated, if use of the indication in the Mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods;
- Trade Marks for wines which contain or consist of a Geographical Indication identifying wines, or which are Marks for spirits which contain or consist of a Geographical Indication identifying spirits, not originating in the place indicated by the Geographical Indication in question; and
- Trade Marks which contain or consist of any of the following Marks or a Mark so nearly resembling any of those Marks as is likely to be taken for that Mark: the word or words “Patent”, “Patented”, “By Royal Letters Patent”, “Registered”, “Registered Design” and “Copyright” or a word or words to the like effect in any language whatsoever; and
- Any Mark which is specifically declared by the Minister in any Regulations made under Malaysian Trade Mark Law to be a prohibited Mark.
- Applicant’s Name and Address, State and Country of Incorporation (if applicable);
- Specification of the goods and/or services in relevant Nice classes;
- A clear representation of the Trade Mark;
- A Statutory Declaration from the Applicant affirming that it is the bona fide proprietor of the Mark and that the Application is made in good faith, signed before a Commissioner of Oaths or Notary Public;
- For Marks containing non-English words, a certified transliteration and translation;
- If Convention Priority is claimed, the Number, Date, Country and details of the Basic Application;
- If Convention Priority is claimed, a certified copy of the priority Application with a certified translation accompanying documents that are not in English, must be filed within one (1) month of the filing date; and
- Government filing fee.
|Initial Trade Mark Term
||A Trade Mark is protected for ten (10) years from the date of filing, and is renewable every ten (10) years thereafter.
|Search and Examination
- Examination of a Trade Mark Application is automatic
- A Trade Mark Application is generally examined around twelve (12) months from the date of filing
- Expedited Examination is available, provided the request is filed within four (4) months from the filing date of the Application in the form of a reasoned request and the payment of Government fees. Examination may be expedited on the following grounds:
- National or public interest;
- Evidence of potential infringement or ongoing infringement proceedings;
- Registration as a condition to obtaining monetary benefits from the Government or institutions recognized by the Registrar; or
- Other reasonable grounds.
- If no objections are raised against the Application, the Mark will proceed to advertisement (for Opposition) and subsequently to registration, if no Opposition is filed.
- If an objection is raised, an initial objection letter will issue, to which the Applicant must respond within two (2) months. An extension of time in which to reply to the objection letter may be requested on payment of extension fees, but the grant of any extension is not automatic and is subject to the Registrar’s discretion.
- If, after filing responding submissions, the objection is maintained, the Applicant may request a Hearing before the Registrar. Any decision of the Registrar is appealable to the High Court.
|Amendment of Goods and Services
- Amendments are allowed to:
- Correct an error or enter any change in the Name, Address or description of the Registered Proprietor of a Trade Mark;
- Cancel the entry of a Trade Mark in the Register;
- Change the Specification of the goods or services in respect of which the Trade Mark is registered, or to enter a disclaimer or memorandum relating to the Trade Mark, without extending in any way the rights given by the existing registration of the Trade Mark, and
- Make any consequential amendment or alteration in the Certificate of Registration.
|Third Party Oppositions and Applications
- Opposition to registration of a Trade Mark.
- Application to remove a Trade Mark from the Register because it has not been used.
||Restoration may be allowed at the discretion of the Registrar if the request is filed within one (1) year from the date of expiration of the Registration, and on payment of a restoration fee and a penalty fee.
- Renewal fees fall due from the tenth (10th) anniversary of the filing date.
- Renewal fees are then due each tenth (10th) anniversary thereafter.
- If the renewal date lapses, an Application for late renewal payment may be filed within six (6) months with payment of an additional fee.
- Multiple Class filings are not available in Malaysia.
- There is no need for a Power of Attorney to support the filing of an Application.