Trademark registration in Malaysia

Trademarks, not only a symbol of uniqueness but also a key that opens the door to market recognition and interaction. In Malaysia, the trademark registration process is not only an important step in protecting intellectual property rights but also an opportunity for businesses to express their identity and scope in a diverse and evolving business environment. Malaysia, with its strategic position and developed economy, is attracting the attention of international business. The trademark registration procedure here is strictly regulated to ensure that the interests of owners are protected fairly and effectively. Viet An Law Firm will guide customers preliminarily through the procedures for trademark registration in Malaysia.

Legal basis

• Trademark Regulations 2019;
• Trademark Act 2019 (No. 815).

Conditions for trademark registration in Malaysia

According to the regulations of the Intellectual Property Office of Malaysia (MyIPO), in order to be registered as a trademark in Malaysia, a trademark must meet the following conditions:

• Exclusivity: A trademark must be able to distinguish the trademark owner’s goods or services from those of others.
• Non-identical or confusingly similar: A trademark must not be identical or confusingly similar to a registered trademark or trademark that is being lawfully used in Malaysia.
• In accordance with legal provisions: A trademark must not include elements prohibited from registering a trademark, such as the national flag, coat of arms, symbols of the state, signs of international organizations,…

Types of trademarks that can be registered in Malaysia:

• Word trademark: A word trademark is a trademark made up of letters, numbers, or other characters.
• Image mark: A picture trademark is a trademark made up of images, logos, or other signs.
• Incorporated trademark: A combined trademark is a trademark that includes both words and images.
• Holographic brand: A three-dimensional trademark is a trademark made up of three-dimensional shapes.

Trademark registration documents in Malaysia

A dossier for trademark registration in Malaysia includes the following documents:

• Trademark Application Form (TMA2): The trademark application form can be downloaded from the Intellectual Property Office of Malaysia (MyIPO) website via the following link: https://www.myipo.gov.my/en/trade-marks-form-fees/?lang=en
• Brand samples are not larger than 10 cm x 10 cm;
• Authorization form: If the applicant files a trademark application through a representative, the applicant needs to provide an authorization form;
• Proof of trademark use: If the applicant has used his/her trademark in Malaysia, the applicant needs to provide proof of trademark use. Evidence of use may include invoices, contracts, or photographs of the trademark being used;
• Trademark registration fee: The trademark registration fee depends on the type of trademark, the number of groups of goods or services protected.

Trademark Application Processing in Malaysia

• Trademark Lookup: Perform a trademark search through MyIPO’s database to ensure the trademark selected by the applicant is not registered. Note, customers can submit a request for trademark lookup at the National Office of Intellectual Property of Malaysia.
• Prepare documents: Complete the trademark application form (TMA2) and other required documents.
• Filing: Apply online or in person at MyIPO’s office.

To file for trademark protection in Malaysia, you can file using the following filing methods:

• Direct Submission: Clients can come directly to the office of the Intellectual Property Office of Malaysia at Level 5, Menara MyIPO PJ Sentral, Lot 12, Persiaran Barat, Seksyen 52 46200 Petaling Jaya Selangor to submit the application and related documents.
• By Post: You can send your application form and all required documents via postal service or courier service to the address of the Intellectual Property Office of Malaysia.
• Apply online via website: https://iponline2u.myipo.gov.my/ When applying online you should pay attention to the payment of the relevant fee as per the instructions of the Intellectual Property Office of Malaysia.
• Due Diligence: MyIPO will review the applicant’s application to ensure compliance with legal requirements.
• Publication of the gazette and objection: If the application passes the review, the applicant’s trademark will be published in the Trademark Gazette within 3 months for potential objections. Anyone with a legitimate interest can file an objection.
• Grant of protection certificate: If no objection petition is filed or all objection petitions are resolved, the applicant’s trademark will be registered and the petitioner will receive a protection certificate.

The fee for registering a trademark

In Malaysia, the fee depends on the type of trademark, the number of groups of goods or services, and the method of filing. Trademark Type:

• Word brand: RM250 for one group of goods/services, additional RM50 for each additional group.
• Image brand: RM300 for a group of goods/services, increased by RM50 for each additional group.
• Combined brand: RM300 for one group of goods/services, additional RM50 for each additional group.
• Holographic brand: RM350 for a group of goods/services, increased by RM50 for each additional group.

Validity of protection titles in Malaysia

The validity of a trademark protection title in Malaysia is 10 years from the date of submission of the application. A protection title may be renewed several times, 10 years each, as long as the trademark owner submits the renewal application and the associated fees before the protection title expires.

To renew a trademark protection title in Malaysia, the trademark owner needs to apply for renewal at least 6 months before the expiration date of the patent. The renewal form should include the following information:

• Name and address of the trademark owner;
• Number of protection titles;
• List of protected goods or services;
• Renewal fees.

The fee for renewal of a trademark protection title in Malaysia depends on the number of groups of goods or services protected.

• First group of goods/services: RM250
• Each additional group of goods/services: RM50

Trademark registration service in Malaysia of Viet An Law Firm

• Perform the search and notify customers in writing the results of trademark search in Malaysia;
• Prepare dossiers and directly file and monitor the status of trademark application filings in Malaysia on behalf of trademark owners;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Malaysia;
• Support monitoring, representing the resolution of objections and feedback with intellectual property representatives to carry out procedures in Malaysia.
• Receive dispatches, certificates and hand over to customers (if any).

If customers want to file a trademark application in Malaysia, please contact Viet An Law for the most effective support