OVERVIEW OF TRADEMARK IN MALAYSIA
Trademark is a sign which distinguishes your company’s goods and services from those of another. Used as a marketing tool to differentiate your products, it includes words, logos, pictures, names, letters, numbers or their combination. For example the YouTube, Google and Volkswagen logos.
It’s important to have your trademark registered so that you as the owner have exclusive right to use it in trading. It also gives the rights to take legal action for infringement under the Trade Mark Law against others who use the marks without consent. You can either take civil action or lodge complaints to the Enforcement Division of The Intellectual Property Corporation of Malaysia (MyIPO) for appropriate actions under the Trade Description Act 1972.
Once registered, the certificate issued by the Registrar Office is a good evidence of your ownership of the trademark.
However, being registered in Malaysia doesn’t give you protection abroad. If protection of the trade mark is required in other countries, you are required to apply for registration separately in each country. However, a Malaysian application can be used a basis for claiming priority in countries which are party to the Paris Convention for the Protection of Industrial Property and the World Trade Organization (WTO).
WHO CAN APPLY TO REGISTER?
The owner, whether Malaysian citizen or not, may apply to register trademark in Malaysia.
WITH WHOM TO APPLY?
Before applying you are advised to make trademark search to avoid applying for identical or similar trademarks filed earlier. All searches can be done at the Public Search Room, MyIPO by paying RM20 per hour fee.
HOW LONG YOUR TRADEMARK OWNERSHIP LAST?
Once registered, the trademark is valid for ten years from the date of application and may be renewed every ten years.
WHAT FORMS AND DOCUMENTS TO SUBMIT?
All applications must be made in Form TM5 in 5 copies, together with the prescribed fee. For different marks, separate applications must be filed. Click here for the forms and fees
THE REGISTRATION PROCEDURE AND TIMEFRAME
The procedures are roughly as follows; Click here for more information
- Submit FORM TM5 at MyIPO Office.
- The office will check your application to ensure that all requirements have been complied with.
- If the compliance has been fully fulfilled, the office will conduct a search and examination for prior trademark.
- If there’s non-compliance, you will be required to make amendment within 12 months.
- If there’s no prior trademark, the application will be accepted and published in the Gazette.
- If, for any reason the application is refused, the applicant can make a written appeal.
- After that, the Certificate of Registration will be issued.
- If there’s objection to the registration of the trademark, a hearing will be conducted.
- A further appeal can be made to the High Court against any decision of the Corporation.
For other information on trademark in Malaysia, you can visit the MyIPO website here.