How to register a trademark in Malaysia?
1. Prepare your mark/sign/logo to be registered
It goes without saying that to register a trademark, you have to have a mark/sign/logo to be registered. Your mark/sign/logo can consist of simple words, numbers, alphabets, graphics, drawings, foreign characters (including Chinese, Korean, Jawi, etc) and even sound/audio. You can either prepare the mark/sign/logo in printed hard copy (for offline filing) or softcopy (usually in JPG or PNG format for online filing). You may also want to design a suitable logo before proceeding with the registration. Do note that once the trademark is filed with the registrar, you can no longer modify your trademark unless such modification is minimal.
2. Decide on the trademark classification to register
What is classification (or class) in a trademark registration? You will note that all trademark registration is registered in accordance to a specific class of goods or services. Currently, there are a total of 45 different classes whereby classes 01 – 34 are consisting of goods and classes 35 – 45 are consisting of services. Malaysia and most of the foreign countries follow the international classification of goods and services established pursuant to the Nice Agreement of 15 June 1957.
For example, if you registered your trademark in class 03 for cosmetic products, your trademark will only be protected in class 03 alone and specifically for cosmetic products only. Such protection will not cover other classes or goods or services not specifically stated. Consequently, it is possible for a third party to register a trademark that is very much similar to yours in other classes such as class 25 for shoes and class 16 for stationery, as long as they do not clash with your products in class 03. If you register in a class that is not relevant or register the goods without sufficient clarity, you risk not being able to take legal action against any third party who is using your trademark for trademark infringement. Therefore, it is extremely important to ascertain the correct class for registration and to also properly draft a comprehensive goods or services under the said class.
The general list of all 45 classes can be found here:
* Please note that the list is only a non-exhaustive general guideline for reference as each classes possibly contain thousands of different types of goods or services.
3. Conduct a trademark search
It is highly advisable to conduct a trademark search before proceeding to file in an application to register your trademark. The purpose of conducting a trademark search is to: (i) determine the registrability of your trademark; (ii) assess the chances of successfully registering your trademark; (iii) check if your trademark complies with the requirements provided under the trademark laws; and (iv) provide suggestion to increase the chances (if needed). You can either choose to conduct a simple identical trademark search to find out if there is any identical trademark that has already been applied or registered by any third party; or to conduct a more in depth trademark search to find out if there is any identical or similar trademark that can potentially halt your registration process later.
4. Trademark application filing
If the trademark search results are satisfactory, you may then proceed with filing the application with the registrar (MyIPO). The filing of the application may be done online or offline over the counter. If the filing is to be done online, you may prepare the necessary forms (TMA2), information, and the mark/sign/logo in the form of softcopy. If the filing is to be done offline (manually), hard copies of the same are required to be submitted to the registrar. Generally, a trademark agent will have access to the online filing platform and applications can be filed easily via online.
Once the application is filed, the registrar requires around 9 months to examine the application and issue a decision. You may either receive an acceptance/publication notice or objection from the registrar. If there is objections raised by the registrar, it is highly advisable that you engage a trademark agent to handle the objections and submit an appeal. If there is no objection, you will then receive your trademark registration certificate in due course.
