Trademark registration fee in Malaysia

In recent years, Malaysia has seen a significant growth in trademark registrations. Trademark registration fees in Malaysia play an important role in the process of registering a trademark. Malaysia is a country with clear regulations on collecting trademark registration fees, to ensure fairness and transparency in business activities. In the following article, Viet An Law will present the regulations on trademark registration fees in Malaysia.

Legal basis

• Malaysian Trademarks Act 2019.

Definition of trademark under Malaysian law

According to Malaysian trademark law, a trademark is a sign used to distinguish the goods and services of one entity from the goods and services of another entity. Types of regulated trademarks include:

• Common trademark;
• The appearance of the goods or their packaging;
• Other types of marks: sounds, scents, holograms, positioning, motion sequences, colors;
• Collective trademark;
• Certification trademark.

These signs cannot be trademarked in Malaysia

Trademarks containing words, or words with similar meanings or expressions with the following meanings will not be registered as trademarks:

• “Patented” or “registered”;
• Similar or duplicate words and images related to the king, queen, royal family, royal army, royal police of Malaysia;
• Words and images similar or related to royal crowns, crests, coats of arms, medals;
• Words and images related to the Red Crescent and Red Cross organizations, white or silver on a red background;

• Words or images related to the ASEAN organization and the national flags of each member country.

The subject has the right to apply for trademark registration in Malaysia

Any entity regardless of nationality, who is the owner of a trademark that has been or will be used by them in Malaysia can apply for trademark registration in Malaysia.

However, in the case of direct application, foreign enterprises cannot apply directly but must do so through an intellectual property representative in Malaysia. This representative must be headquartered and legally operating in Malaysia. At the time of application, the applicant must appoint a representative to apply on his/her behalf in Malaysia according to the prescribed form.

How to register a trademark in Malaysia?

Trademark registration applicants can choose one of the following two forms:

• Submit directly to the Malaysian Intellectual Property Office (MyIPO) via the online application receiving system https://www.myipo.gov.my/en/home/ or submit in person.
• Submit international applications through the Madrid system.

Currently, Vietnam is a member of the Madrid Protocol and the Madrid Agreement, however, Malaysia just became a member of the Madrid Protocol on December 27, 2019. Therefore, clients who want to register their trademarks to be protected in Malaysia will follow the procedures set out in the Madrid Protocol.

Required information when registering a trademark in Malaysia

• Name, address, and nationality of the applicant (if the applicant is an individual, it must clearly state the individual, if it is a company, the type of company and business code must be clearly stated);
• Type of mark (trademark for goods, services, collective mark, certification mark…); Is the trademark color single or multi-colored?
• International classification of goods and services associated with trademarks according to the Nice Classification;
• Priority information if requested in the application;
• Full name and address of the Malaysian representative;

Previously, under the Trademark Act in 1976, Malaysia established rights to trademarks under the principle of “first use”, so applicants also need to provide evidence of the date and place where the mark was first used; The date the trademark was first used in Malaysia. The Trademark Act 2019 has redefined the principle of “first-to-file” to replace the principle of first use, i.e. similar to the mechanism for determining rights in Vietnam recently.

Documents required when registering a trademark in Malaysia

• Trademark registration application according to Form TM5;
• 09 trademark samples (high-resolution soft copy);
• Company information in the company registration application (if the applicant is a company) according to the prescribed form;
• Translation or transliteration of the mark if the mark is not in Latin, English, Malay or Chinese;
• Documents claiming priority rights under the Paris Convention;
• Notarized English language affidavit that the applicant is the owner of the trademark applying for registration (affidavit form provided by the intellectual property representative);

Trademark registration fee in Malaysia

For applications submitted directly through the national application receiving system, the state fees are prescribed as follows:

For applications submitted via the Madrid system (international applications), the state fees are regulated as follows:

Note:

• The number of goods and services in a class is not limited.
• In case of misclassification, the applicant will have to pay an additional reclassification fee according to regulations (about 30 USD).
• The above fees do not include notarized translation fees, fees for amending application information, extending responses (if any), etc.

Trademark registration process in Malaysia

• Step 1: Select a trademark sample that does not contain unprotected elements, classify accompanying goods and services and perform a trademark search. Conduct a preliminary search using MyIPO’s database or an in-depth search (with fee) upon request sent to the intellectual property representative or MyIPO.
• Step 2: Prepare registration documents and submit trademark registration application.
• Step 3: Trademark examination
  • The application will be reviewed in the formality examination stage (checking whether all required information and documents are complete).
  • Substantive examination of the trademark registration application: The registration agency will then consider whether the trademark is distinctive or not – and research whether the trademark is identical or similar to a previously registered trademark or the mark under another application with an earlier filing date. If the application meets all statutory requirements, the registration authority will issue a notice accepting registration of the application.
  • In case the application does not meet the requirements, MyIPO will issue a notice of refusal of the application and set a time limit for the applicant to amend or object to the notice.
  • The application review period will last from 12 – 18 months from the date of application.
• Step 4: Publication of trademark applications is carried out in the Official Journal of Intellectual Property of Malaysia for applications accepted for registration. Application publication time is from 3-6 months. Receipt of objections to the registration application is carried out within 2 months from the date of publication.
• Step 5: Grant trademark protection certificate:
  • If no subject objects to the application, the registration agency will issue a Trademark Registration Certificate.
  • The time to register a trademark in Malaysia from application to registration is 18-25 months (not including the time to oppose and correct the application).

Note when using trademarks in Malaysia

• The owner of a registered trademark may use the ® symbol in conjunction with the trademark to confirm legal registration.
• Failure to use the trademark for 3 years or more from the date of registration may result in the protection title being invalidated.
• The trademark protection period is 10 years from the date of application and can be renewed multiple times.

Trademark registration in Malaysia under the Madrid Protocol

• Basis of registration: Based on the submitted application or Trademark Registration Certificate issued in the country of origin.
• Application language: English, French
• Filing conditions: Enterprises can file an international trademark registration application immediately after filing a trademark registration application in their home country without having to wait until the trademark registration certificate is issued in the country.
• International registration validity: Within 18 months from the filing of a valid application, an internationally registered trademark will be accepted for protection in the country designated in the application if the application is not refused protection by the designating country within the specified period.
• Protection term: 10 years and can be extended.
• Conversion of an international application to a national application: Applications for designation in countries remain valid and retain the designation date in case the application in the country of origin is suspended in whole or in part goods/services class if the designation is made within three months of the filing date in the country of origin.

Trademark registration in Malaysia service of Viet An Law Firm

With reputable lawyers and many years of experience in the field of intellectual property, Viet An Law Firm would like to provide clients with trademark registration services in Malaysia as follows:

• Advise clients on trademarks and the possibility of trademark protection;
• Conduct a preliminary trademark search;
• Connect with partner network of intellectual property representatives in Malaysia to support clients with legal procedures and representation in applying for a trademark registration certificate in Malaysia;
• Receive the trademark protection certificate and return it to the client.

Clients who need to register a trademark in Malaysia and other countries around the world, please contact Viet An Law Firm for the fastest support, at the most reasonable cost!