Trademark FAQs
1. What is a trademark?
Trademark in Malaysia: A trademark is essentially a sign (mark) used to distinguish products/services from other traders. A sign can be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging and now also includes sound, scent, hologram, sequence of motion and etc or any combination thereof.
2. Who can apply for a trademark in Malaysia?
Any person, business entity, association and government body including foreign business entity. All applications will be treated with the same priority regardless of the nationality.
3. How to register a trademark in Malaysia?
Basically, there are two main stages in applying or registering a trademark.
(a) Trademark Search
You can choose to conduct a trademark search to determine if your trademark is available for registration. A full search report will be provided by a qualified trademark agent usually within a week.
(b) Application Filing and Registration
If the search results are positive, a formal application can then be filed with the Registrar (MyIPO). It will then take around 12 months to obtain registration if there is no objection from the Registrar. During the 12 months period, there will be a process called publication where your trademark will be published in the public journal for the purpose of opposition for a 2-month period.
If there is objection or opposition during the application process, an appeal or response will have to be filed to overcome the objection or opposition.
4. What is a trademark Classification (Class)?
Malaysia follows the Nice Classification which is an international classification of goods and services applied for the registration of marks. Different types of goods and services are categorized according to different Classes. There are a total of 45 Classes whereby Class 1 – 34 are for goods and Class 35 – 45 are for services. Applicant has to designate his Classes of interest specifically for registration of his trademark.
5. Can I register multiple Classes under one application?
Yes, pursuant to the new Trademarks Act 2019, an applicant can now register more than one class under a single application. It means that a trademark application can now contain 2 or more classes.
6. Can I group several similar marks together and register them under one application?
Yes, it is possible to do so by filing them as series of marks. Note that those marks must resemble each other in material particulars.
7. Should I register my trademark in a particular colour(s) or black-and-white?
It is advisable not to restrict your trademark to any particular colour(s) because when a trademark is registered without limitations as to colour, it shall be deemed to be registered for all colours.
8. What trademark can be accepted for registration?
– signs which are capable of being represented graphically, capable of distinguishing goods or services and distinctive
9. What should be avoided in a mark for registration?
– Name of a place (i.e. Paris, Italy, Malaysia)
– Single or dual letter of the alphabet (e.g. X, CK) as it is too common
– Simple numerical combination (e.g. 437, 595) as it is too common
10. What cannot be registered in accordance to Malaysian laws?
– The words “Bunga Raya” (hibiscus) and the representations of hibiscus
– The representations of any of the royal palaces or of any building owned by the Government
– The word “ASEAN” and the representation of the ASEAN logo
– The representations of the “national emblem” [National Emblem (Control of Display) Act 1949] or “specified emblem” [Emblems and Names (Prevention of Improper Use) Act 1963]
– The words “Red Crescent” or “Geneva Cross” and representations of the Red Crescent, the Geneva Cross and other crosses in red, or the Swiss Federal Cross in white or silver on a red ground
11. What are the benefits of obtaining a trademark registration?
– You will obtain the exclusive right to use the trademark for the registered goods or services to the exclusion of others
– Prevent third party from registering a similar/identical mark which might affect your rights. The Registrar will block any confusingly similar trademarks from registering
– Prima facie evidence of ownership. To prove ownership of the trademark
– Easy enforcement (e.g. raid) against fake products / services
– Able to license or assign your trademark
– Comply with the requirements of advertising, international trade and e-commerce
12. If I register my trademark in Malaysia only, will it be protected in other countries?
No, as trademark protection is territorial in nature. You will need to register separately (or via Madrid protocol) in each countries of your interest in order to obtain trademark protection in those particular countries. We do assist our clients to obtain trademark registration in foreign countries.
13. How long will a registered trademark be protected in Malaysia?
A registered trademark will be protected for 10 years and renewable only after 10 years. It can be renewed continuously without limitation.
