Trademark Registration in Malaysia: Process, Benefits & Needs

In today’s competitive business world, building a brand that stands out from the crowd is crucial for success. A trademark is an essential tool for establishing a unique brand identity and protecting it from infringement.

Trademark registration in Malaysia is a crucial step for companies intending to build or safeguard their brand values. By registering a trademark, businesses in Malaysia can secure legal protection, exclusivity, and increased brand recognition, while also creating a valuable intangible asset that can be licensed, sold, or transferred.

Moreover, trademark registration in Malaysia not only provides legal protection within the country but also offers international protection through the Madrid Protocol. This allows businesses to expand their reach and protect their trademark in multiple countries, providing opportunities for global growth and expansion.

Although the process of trademark registration in Malaysia may seem complex, with the right guidance and support, it can be a straightforward and effective way to protect your intellectual property. By following the step-by-step process and working with a reputable trademark agent, businesses can ensure a smooth and successful registration process.

This article will provide an in-depth overview of trademark registration in Malaysia, covering everything from the application process to the benefits of registration.

Need to Register a Trademark in Malaysia

Intending to register a trademark in Malaysia can provide several benefits and protections for businesses and individuals. 

Here are some reasons why you might want to consider registering a trademark in Malaysia:

• Exclusive rights: By registering a trademark in Malaysia, you will have the exclusive right to use the trademark in connection with the goods or services you have registered it for. This signifies that you are authorized to restrict others from utilizing our trademark or an identical trademark in a way that could create confusion among consumers.
• Legal protection: If anyone utilizes your trademark without letting you know, you are allowed to take a lawful step against that person to prevent them from using your trademark and seek damages for any harm done to your firm.
• Brand recognition: Registering a trademark can help build brand recognition and value for your business. A trademark can be a valuable asset that puts your goods or assistance separated from such opponents.
• International protection: If you intend to take your firm abroad, a trademark can assist you in saving your brand in further nations that are signatories to multinational treaties, such as the Madrid Protocol.
• Licensing and franchising opportunities: Enlisted trademarks could make it easier to license or franchise your business, as it demonstrates that you have legal ownership of the trademark and can authorize others to use it.

Trademark Registration Process in Malaysia

Here is a step-by-step trademark registration process in Malaysia:

Step 1: – Conduct a trademark search

Before applying for trademark registration in Malaysia, it is recommended to conduct a trademark search to ensure that your proposed trademark is not identical or similar to existing registered or pending trademarks in Malaysia.

You can perform a trademark search online using the Malaysian Intellectual Property Corporation (MyIPO) database or hire a professional trademark search company.

Step 2: – Prepare and file the application

Once you have confirmed that your proposed trademark is available for registration, you can apply with the Intellectual Property Corporation of Malaysia (MyIPO). The application can be filed online through the MyIPO website or in person at the MyIPO office.

Step 3: – Provide the necessary information

The application will need you to give entire details about your trademark, containing the trademark name, trademark class, and a clear image of the trademark. You must also send your information or the data of your company.

Step 4: – Pay the application fee

You will need to pay the application fee to complete your trademark registration application. The fee could be settled online or submitted to the MyIPO office.

Step 5: – Wait for the examination

Once you have submitted your trademark registration application and paid the fee, MyIPO will examine the application to ensure that it meets the registration requirements.

Step 6: – Respond to office actions

If the MyIPO examiner raises any concerns or objections to your application, you will receive an office action that outlines the issues that need to be resolved. You will have the opportunity to respond to the office action and provide additional information or make amendments to your application.

Step 7: – Publication of the trademark

If your application meets all the registration requirements, it will be published in the Malaysian Trademark Journal for opposition purposes. If there is no opposition to your trademark, it will proceed to registration.

Step 8: – Receive the registration certificate

As the trademark has been enlisted, you will receive a certificate of registration from MyIPO. 

Note that, the entire trademark registration process in Malaysia can take several months to a year, depending on the complexity of your application and any objections or oppositions raised during the process.

Documents Required for the Application of Trademark Registration in Malaysia

To apply for trademark registration in Malaysia, you need to present the necessary documents:

• Application form: You will need to complete the trademark application form, which can be obtained from the Malaysian Intellectual Property Corporation (MyIPO) website or office.
• Power of Attorney: A signed Power of Attorney (POA) authorizing a trademark agent to act on your behalf is required if you are using a trademark agent.
• Representation of the trademark: You must submit a clear representation of the trademark that you wish to register.
• Details of the applicant: You should provide your personal details or the details of your company, including your name or the name of your company, address, and contact information.
• Details of the trademark: You should provide details of the trademark, including the trademark name, trademark class, and a report of the goods or assistance that the trademark would be employed for.

Applicable Fees for Trademark Registration in Malaysia

Here is a table of the applicable fees for trademark registration in Malaysia: 

What information should an application for trademark registration in Malaysia contain?

A clear representation of the trademark, including the trademark name and any distinguishing features, such as colour or design. The application should also specify the goods or services that the trademark will be used for, as well as the trademark class(es) that the goods or services fall under.

However, if the applicant is claiming priority based on an earlier filed application in another country, the application should include details of the earlier application, such as the application number, filing date, and country of origin.

Eventually, the applicant must sign a POA authorizing the trademark agent to act on the applicant’s behalf is required if the applicant is using a trademark agent. If the candidate is involving himself, then a POA is not required. 

Lastly, the application should include the appropriate filing fee, which can be paid online or in person at the Malaysian Intellectual Property Corporation (MyIPO) office.

It is important to ensure that all information provided in the application is accurate and up-to-date, as any errors or omissions may result in delays or rejection of the application. It is recommended to seek the assistance of a professional trademark agent to ensure that your application is properly prepared and to guide you through the registration process.

Benefits of Trademark Registration in Malaysia

There are several benefits of trademark registration in Malaysia, including:

• Trademark registration makes it easier for the owner to enforce their rights against infringers, as it provides evidence of ownership and helps to establish a prima facie case of infringement.
• An enlisted trademark is a priceless corporation asset that could be licensed, traded, or transferred. It might even be utilized as collateral for loans or financing.
• An enlisted trademark might help to increase consumer trust and confidence in the grade and authenticity of the goods or assistance affiliated with the trademark.
• The existence of a registered trademark can act as a deterrent to potential infringers, as they will be aware of the legal consequences of infringing on a registered trademark.
• A registered trademark can help to expand business opportunities by allowing the owner to license the trademark to third parties for use in connection with their goods or services.

Grounds for Refusal of Trademark Registration in Malaysia

There are several grounds for the refusal of trademark registration in Malaysia, such as the following listed below:

1. Descriptiveness or lack of distinctiveness: A trademark that is too generic, descriptive, or lacks distinctive character may be refused registration.
2. Similarity to existing marks: A trademark can be refused registration if its features are too identical to those of existing enlisted or uncertain trademarks.
3. Misleading or deceptive marks: Trademarks that are likely to mislead or deceive consumers about the nature, quality, or origin of goods or services may be refused registration.
4. Contravention of public policy or morality: A trademark that is contrary to public policy or morality may be refused registration.
5. Use of prohibited words or symbols: The use of prohibited words or symbols in a trademark may lead to refusal of registration.
6. Conflict with prior rights: If the use of a trademark would infringe on the rights of a prior user or owner of a trademark, it may be refused registration.
7. Non-compliance with formal requirements: Failure to comply with formal requirements, such as submitting the application in the correct format or providing the necessary documents, may result in the refusal of registration.

Conclusion

Ultimately, trademark registration in Malaysia is an important investment for enterprises of all sizes. By establishing a unique brand identity and securing legal protection for it, businesses can differentiate themselves from competitors, build customer loyalty, and create a valuable asset for future growth.

With the right strategy and approach, trademark registration can help businesses to achieve their long-term goals and secure their place in the marketplace. It is best advised to consult with a professional expert from OnDemand International to help you register a trademark in Malaysia.