Summary

MALAYSIA TRADEMARK 

Definition:
A trademark is a sign used for the purpose of indicating a connection between a person having the right to use the sign and his goods or services. A sign includes words, logos, labels, names, letters, numbers or a combination of the above.

Criteria:
A trade mark has to fulfil the following conditions in order to claim protection.

• it must be distinctive
• it cannot be generic
• it cannot be deceptively similar to a previous or existing trademark.
• It cannot be a geographical name or surname
• It cannot be deceptive or confusing
• It cannot be scandalous or offensive
• it cannot have direct reference to the character or nature of the goods/services

Membership:
Malaysia is a member of the Paris Convention from 1989, whereby applications from convention countries will be subject to the same priority date in Malaysia. The application for priority has to be made within six months of the first application in a convention country.

Eligibility:
The owner of the mark is the only competent person to file an application for the registration of a mark.

Applicants not residing or carrying on business in Malaysia, have to nominate a Malaysian Registered Trademark agent to act on their behalf.

Rule of Priority:

"First to Apply" is the rule followed by Malaysia in determining priority of trademarks.

Procedure

Malaysia Trademark: Application Procedures

1.Searching
This is the first step before an application is made for the registration of a trademark. Although a prior search is optional it helps in determining the existence of previous marks.

2.Application
Every applicant is required to submit an application containing  the following information.

• Full name and address of applicant
• Sample of Trademark
• List of products/ Services sold under the mark.
• Class of the trademark.
• If priority is claimed, certified copies of the priority documents.

3.Examination
On submission of the application, the Trade Marks office will examine the application for previous marks and statutory compliances. Such examinations could lead to the formation of objections. Applicants will be informed and also given an opportunity to reply to such objections.

4.Publication
A trade mark will after examination be published in the government gazette subject to the satisfaction of the registrar.

5.Opposition
The criteria of publication often provides an opportunity for third parties to oppose the application within two months of publication. Opposition's are headed by a senior registry officer and involves an exchange of formal statements and written evidence.

6.Registration
On completion of objections and opposition a Certificate of Registration will be issued by the trade marks office subject to the payment of a fee. The duration of registration takes a minimum period of 2 -3 weeks. The registration is effective from date of application.

7.Protection
A trade mark once registered is valid for a term of 10 years and can be renewed every  10 years.

8. Enforcement Remedies
Infringement proceedings are instituted in Courts of law and often contain remedies of final injunction, delivery up, damages, account of profits, costs and aggravated damages. Alternatively out of court settlements and various pre-emptive actions are also available. They include temporary injunctions, Anton Piller order and Mareva Injunction.

Charges

Trademark Application In Malaysia

Documents Required For Filing A Trademark Application

Basic Requirements 

Additional Documents for Claiming Convention Priority