Trademark Registration in .
Malaysia is known for its beaches and rainforests that attract tourists all over the world. Keeping that in mind, the tourism industry is rapidly growing along with other industries as well. The booming economy has fierce competition, with a diverse range of businesses and brands competing to get to the top of the marketplace. One of the ways in which businesses can showcase their distinctiveness and authenticity is through a Malaysian Trademark. By registering a Malaysian Trademark, a business protects itself legally from infringements and counterfeiting, while uplifting its brand image.
To understand the trademark registration process in Malaysia, let us have a look at the process in detail.
Trademark registration services in the Malaysia
Malaysia follows a first-to-use system which means that an applicant that has commercially used the trademark first first will have superior rights over another applicant or if there is no prior user of an identical or similar trademark. To register a Malaysian Trademark, the applicant can file an application online with the Intellectual Property Corporation of Malaysia (MyIPO). Malaysia allows multiple class filings.
To register your trademark in Malaysia, all the documents submitted must be in English or Malay. However, if the documents or application are submitted in any language other than English or Malay, a translation has to accompany the application.
Types of Trademarks
Types of trademarks in Malaysia
There are different types of trademarks that can be registered in Malaysia. This includes slogans, shapes, names, phrases words, images, 3D shapes, holograms, smells, colors, or a combination of these. The most important factor to look for when registering a trademark is to see if it is distinguishable, distinctive, and can be easily recognized by the public.
Similarly, some Malaysian Trademarks cannot be registered, including state symbols, flags, public figures, trademarks that are deceptive, trademarks that go against the public interest, trademarks going against moral grounds, descriptive trademarks.
How to register a trademark in Malaysia?
It is always good to search for existing trademarks to understand the available trademarks’ intricacies. This also helps in understanding why a trademark might have been refused or if you are infringing on someone else’s trademark. A thorough trademark search will also let you know of similar and identical trademarks.
MyIPO does accept multiple class application filing thus the applicant does not have to file individual applications everytime for each additional class, saving time and money. There are 5 forms that need to be submitted to file an application and these are available over MyIPO’s website. They forms are referred to as TM5.
There are certain requirements set by MyIPO for the application. This includes:
- The name and address of the applicant;
- If the applicant is a business, then the type of legal entity it is;
- Details of the trademark and if it contains design elements then a drawing of the trademark will also be needed;
- List of goods and services offered;
- The class or classes under which the goods and services offered fall.
Other than these details, to process the application the official fee has to be timely paid.
If a priority is claimed, the priority document is also required at the time of filing.
Once the application is filed, it is given to an examiner who checks the application on absolute and relative grounds. The trademark registration application is checked if its complete, if there are an inaccuracies, and if the trademark is registrable in the first place or not. Your trademark is also checked for distinctiveness.
The examiner also checks if there are similar or identical trademarks already registered or applied for, and if the trademark complies with all the regulations.
If there is any problem with the application, the examiner sends an official notice to the applicant containing the reasons for refusal. The applicant is given time to respond to any objections raised in due time.
If the examination is successful, or if the applicant responds to the objections raised accordingly and clarifies the issues raised, the application gets advertised in the Gazette. The publication is done for 2 months. To publish your trademark in the Gazaette, you have to file TM31 form. This form will cost you around RM 650-700 or USD 154-166.
The publishing of application allows interested parties to oppose the trademark that can be based on various reasons. Opposing parties are encouraged to first contact the applicant to settle the dispute before actually filing an opposition. If the opposing parties feel they cannot resolve the issue then they can file a Notice of Opposition.
Once an opposition is filed, the applicant has two months to respond via filing. If the applicant fails to file a response then the trademark application will be deemed abandoned.
If the applicant files a counter statement and provides the relevant evidence then the opponent has another two months to repond to the applicant and the decision is taken accordingly by the authority.
If there is no opposition filed, if the dispute is resolved or if the the decision is in favour of the applicant, the trademark gets registered and MyIPO issues a certificate of registration.
The entire trademark process can take around 12-24 months after the initial application.
Price of Trademarks
Trademark registration cost in Malaysia
The cost may vary according to the legals fees and the number of classes. The cost of filing the application can also greatly increase depending on the legal fees. The overall cost to register a trademark in the Malaysia ranges from $200 to $800.
Age of Trademarks
How long does the Malaysian Trademark last?
Trademark in Malaysia lasts for 10 years.
A Malaysian Trademark can be renewed by filing TM12 form. The renewal can also be processed one month after the expiration date, by paying an additional fee.
The cost to renew a Malaysian Trademark is $100 per class. If the trademark is not used within 3 years of registration then it gets invalidated.
It is important to understand the extent of which a trademark protects its owner from infringements and counterfeiting. It provides exclusivity to the trademark owner over the goods and services and offers authenticity infront of the customers, building the overall goodwill of the business.
At Trademark International, we provide hassle-free trademark registration services catered to your needs, in compliance with the international requirements and standards. Trademark registration in Malaysia doesn’t have to be complicated, and that’s why Trademark International is here to assist with all of your intellectual property needs.
*What to do? How to do it? When to do it? Will it work?*
If these are the questions that come to your mind when thinking of registering a trademark, you have come to the right place. We, at Trademark International, answer these questions and more! Offering multiple trademark services, we guarantee client satisfaction. For expert advice and consultation, contact us now!
Frequently Asked Questions
The process for registering a trademark varies from country to country. To file for a trademark in the US, you can file an online application with the USPTO. The USPTO entertains two types of applications: ‘In-use’ and ‘Intent to use’. The online application is known as Trademark Electronic Application System (TEAS).
Just like every country has its own registration process, the cost varies as well. Depending on the legal fees and the length of the process, the cost can go up or down. In the US, the price of registering a trademark ranges from $500 to $3000.
You need to file an application which should contain: your name and address, if it’s a business then the type of legal entity it is, details of the trademark, list of goods and services, the details of the class(es).
Yes, you can file for both: a local and an international trademark. Some countries entertain a single application to register a trademark locally as well as internationally.
Yes. It is possible to register a trademark in multiple countries with a single application but it depends on which union the country is part of. You can do this through the Madrid Protocol or EUIPO.
Countries have different laws regarding what can be registered as a trademark. In the US, the types of trademarks that can be registered are slogans, shapes, names, phrases words, images, 3D shapes, holograms, smells, and colors.