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. Signs that can be registered as trademarks include words, logos, images, symbols, trademarks, names, letters, numerals, or combinations of such elements provided that they are distinctive, do not cause confusion or deception, are not contrary to law or morality, and are not similar or identical to well-known marks.
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”; “registered”, “copyright”;
- 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 organizations, the Swiss Cross, and the Swiss Confederation in red, 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 to register a trademark 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. However, foreign businesses cannot apply directly. Under Malaysian law, all foreign trademark applications must be filed through a Malaysian trademark agent. 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.
- What type of trademark is the trademark applying for registration (trademark for goods, services, collective trademark, certification mark…);
- Does the trademark seeking protection have color limitations?
- International classification of products and services according to the Nice classification;
- List of products or services registered;
- The date and place where the mark was first used;
- Date the mark was first used in Malaysia (if applicable);
- 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 must be clearly stated);
- Full name and address of the Malaysian representative;
- Whether the application claims priority or not;
Documents required when registering a trademark in Malaysia
- 09 trademark samples for registration;
- Translation or transliteration of the mark if the mark is not in Latin, English, Malay or Chinese;
- Copy of the first application if the application claims priority under the Paris Convention;
- Notarized English affidavit that the applicant is the owner of the trademark sought to be registered (affidavit form provided by the intellectual property representative)
The Malaysian registry’s official filing fee for a trademark is RM250 (Malaysian currency). The above fees do not include representation fees and other costs incurred if a complaint is filed.
- The application will be reviewed for form (checking whether all required information and documents are complete).
- Examining the content of the trademark registration application: The registration agency will then consider whether the trademark is distinctive or not – and look up 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.
- The application review period will last from 12 – 18 months from the date of application.
- Applications accepted for registration will be published in the official gazette. Application publication time is from 3-6 months.
- 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.
Trademark registration in Malaysia under the Madrid Protocol
Currently, Vietnam is a member of the Madrid Protocol and Madrid Agreement, however, Malaysia became a member of the Madrid Protocol on December 27, 2019, so businesses want to register trademarks to be protected. Households in Malaysia will follow the procedures set out in 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. there.
- 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 period. specified time.
- Protection term: 10 years and can be extended.
- Conversion of international application to 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 category if the designation is made within three months of the filing date in the country of origin.
Trademark registration service in Malaysia of Viet An Law Firm
With reputable lawyers and many years of experience in the field of intellectual property, Viet An Law would like to provide customers with trademark registration services in Malaysia as follows:
- Advise customers on trademarks and the possibility of trademark protection;
- Conduct a preliminary trademark search;
- Through a large partner network of law firms, intellectual property representatives in Malaysia support customers with legal procedures and representation in applying for a trademark registration certificate in Malaysia;
- Get diploma trademark protection and return it to the customer.
Customers who need to register a trademark in Malaysia and other countries around the world, please contact Viet An Law for the fastest support, at the most reasonable cost!