Global Trademark GO - Malaysia - Introduction to Malaysian Trademark Application

Malaysia enacted the Trademark Law in 1976, and the latest revised Trademark Law came into effect in July 2019. Malaysia's trade mark law is broadly based on UK trade mark law. Any trademark owner who has used or intends to use the trademark in Malaysian business can apply for trademark registration in Malaysia. If there is no actual use of the proposed trademark, or no intention to use the registered trademark, the applicant can prove that he has transferred the trademark to a company that will be established and will actually use the proposed trademark, or submit the registration application at the same time. A registered user can submit a trademark registration application, unless the above-mentioned company has not been established within 6 months from the date of trademark registration application, then the application will be terminated.

On September 27, 2019, the Malaysian government deposited the official text of joining the Madrid Protocol to the Director General of the World Intellectual Property Organization. Malaysia became the 106th member state of the Madrid Organization. The Madrid Protocol was officially launched in 2019. It came into effect in Malaysia on December 27, 2019. The new Malaysian Trademark Act in 2019 updated the meaning of "trademark" and "logo" and introduced non-traditional trademarks and collective trademarks. From then on, non-traditional trademarks and collective trademarks can be protected in Malaysia. It also allows applications for multiple categories of trademarks under one standard. For trademarks under application or registered, trademark rights holders can apply for division or merger, making the trademark application process more flexible. Applications for trademarks under one standard and one category can be merged to reduce trademark maintenance. cost.

The Trademark Act 2019 abolishes the trademark user registration system and stipulates that trademark users can use trademarks after obtaining written authorization from the trademark owner. Trademark use licenses can be registered and filed, and registration and filing are not mandatory. Unregistered well-known trademarks will be The scope of protection is extended to identical/similar goods/services.

1. Trademark authority

• Intellectual Property Office of Malaysia: Intellectual Property Corporation of Malaysia
• English: Intellectual Property Corporation of Malaysia
• Website: Trademark Basic – The Official Portal of Intellectual Property Corporation of Malaysia (myipo.gov.my)
• Trademark Search: Search Trade Marks – The Official Portal of Intellectual Property Corporation of Malaysia (myipo.gov.my)

2. How to apply for trademark registration

• Paper submission, electronic submission (mail)

3. Trademark registration application language

• English

4. Documents required for trademark registration application

• Applicant information;
• Trademark pattern;
• List of goods and/or services.
• If priority is claimed, a certified copy of the priority document must be provided. If the priority document is not filed in English, a certified English translation must be submitted within one month of filing the trademark application.
• A power of attorney is not required for trademark registration in Malaysia.

5. Malaysian trademark registration application process

• The main process of trademark application in Malaysia is: application-acceptance-examination-announcement-approval-issuance of certificate. Applications will be processed 1-2 weeks after submission. The examiner will conduct formal and substantive examination of the application. The formal examination mainly examines whether the application requirements and classification information comply with the regulations; the substantive examination includes examination of the distinctiveness of the trademark, whether it violates the prohibition of notation and prohibition, and whether it conflicts with prior trademarks. If the review fails, a rejection notice will be issued and the applicant will be required to respond within the time limit specified in the rejection notice. If the substantive review is passed, an announcement will be made. There is an objection period of 2 months from the date of announcement, and any interested person or prior rights holder may raise an objection. If there is no objection within the announcement period or the objection is not established, registration will be approved and a registration certificate will be issued.

6. Documents required for trademark change/transfer

• Trademark registration certificate
• Transfer Certificate/Agreement
• Application for Transfer of Registered Trademark (TM15)

7. Trademark cancellation

• If a trademark is not used for three consecutive years, it may be revoked.

8. Trademark objections

• Any interested party has the right to raise objections to the announced trademark within 2 months from the date of trademark announcement. The examiner will make a ruling based on the written documents, evidence and reasons submitted by the parties, and no further hearing will be held. This period can be extended.

9. Authorization, validity period and trademark renewal

• The authorization fee must be paid within 2 months after the announcement. In Malaysia, trademark registration is valid for 10 years from the date of application. Malaysian trademarks are renewed every 10 years. If the renewal fee is not paid within the deadline, it shall be paid within one month after the expiration date.

10. Average time for trademark authorization

• If the trademark registration process goes smoothly, the average time for trademark registration in Malaysia is 12-18 months.

11. Other matters needing attention

• A request for accelerated examination can be made within 4 months after the first submission of a trademark registration application. In addition to submitting the regular form, a statutory declaration (Statutory Declaration) is also required to explain the reasons for applying for accelerated examination and pay relevant fees.