trademark assignment in malaysia

Malaysia Trademark Registration – Process, Timeline & Benefits

• Post published: June 6, 2023
• Post category: Malaysia

Trademark registration in Malaysia is essential for companies because a trademark is a company’s identification. It’s used to set a product or service apart from the competition. A trademark combined with a creative branding plan may help a corporation make millions, if not billions, of dollars. Given the value of a trademark, a knowledgeable entrepreneur will always make trademark registration a top priority.

Any symbol capable of being expressed graphically and capable of differentiating one undertaking’s goods or services from those of other undertakings is referred to as a trademark. 

Any letter, word, name, signature, numerical, device, trademark, heading, label, ticket, shape of goods or their packaging, color, sound, aroma, hologram, placement, sequence of action, or any combination thereof is considered a sign. 

A collective mark is a symbol that distinguishes the goods or services of members of the association that owns the collective mark from those of other businesses.

A certification mark is a sign indicating that the goods or services in connection with which it is to be used have been certified by the proprietor of the mark in terms of origin, material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics by the proprietor of the mark.

TABLE OF CONTENTS

WHAT YOU ARE ALLOWED TO TRADEMARK, AND WHAT YOU ARE NOT ALLOWED TO TRADEMARK?

The following marks are registrable under the Malaysian TradeMarks Act 2019 

• Certification symbol for trademarks 
• Collective marks

When a trademark is not registrable, the Trademarks Act 2019 gives both absolute and relative grounds: 

• Identical to or confusingly similar to a previously registered brand; 
• Likely to deceive or confuse the public or to be in violation of any established law; 
• Deceive or mislead the public about the nature, quality, or origin of the goods or services; 
• Incompatible with the public good or morality; 
• Contains or is made up of anything scandalous or objectionable.

WHO HAS THE AUTHORITY TO REGISTER A TRADEMARK?

A trademark registration can be applied for by any

• individual, 
• business organization, 
• institute, or 
• legal entity. 

While it is not required by Malaysian law to register a trademark before utilizing it, it is strongly advised to do so to avoid trademark hijacking.

Companies incorporated overseas can apply for trademarks as well as Malaysia-incorporated companies. However, the nature of trademark protection is geographical. Your trademark is only protected in Malaysia if it was registered there.

APPLYING FOR TRADEMARK IN MALAYSIA

You must fill out Form TM5 and submit it to the Malaysian Intellectual Property Corporation (MyIPO). 

Refer link for the application form. Online applications are also available at https://iponline.myipo.gov.my/iponline/

RM370 is the application fee.

WHAT MUST BE INCLUDED IN THE TRADEMARK FOR IT TO BE REGISTRABLE?

According to Section 10 of the Trade Marks Act of 1976 (the “TMA”), a mark must include at least one of the following elements in order to be registrable:

• The signature of the applicant for registration or of a predecessor in his business; 
• The name of a person, business, or firm represented in a special or particular style;
• An invented word or words, 
• A word that doesn’t directly correspond to the nature or caliber of the goods or services and isn’t a geographical name or surname by definition, or 
• Any other distinctive mark.

STEPS TO APPLY FOR A TRADEMARK IN MALAYSIA

To register a trademark, follow these simple steps. 

Step 1: Design a Trademark

A trademark is any sign that can be represented graphically and can be used to identify the goods or services of one company from those of others. This includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of the goods or their packaging, color, sound, scent, hologram, positioning or sequence of motion, or any combination of these.

A trademark should not only be imaginative and visually appealing but also comply with all requirements set forth in the Malaysian Trade Marks Act 2019, particularly the absolute and relative grounds of refusal.

Step 2: List Down the Goods / Services Under the Trademark and Determine the Classification

The precise list of goods and/or services being offered under the trademark must be carefully considered. Then, locate the pertinent Classification categories.

This phase is essential since the description of the goods or services determines the extent of the trademark’s protection. On products or services not covered by the registration, the trademark may not be protected. 

Step 3: Prepare and File Trademark Application

Generally, filing a trademark application in Malaysia requires the following information:

1. Full name of the trademark applicant

2. Full address of the applicant

3. List of goods and services provided under the trademark

4. Class number (Nice Classification for filing in Malaysia)

5. A softcopy of the trademark in high resolution

6. Priority information, if priority right is being claimed

7. Certified translation of the trademark if it contains non-Roman characters.

Step 4: Examination by Trademark Examiner

The Registrar of Trademarks will conduct a thorough examination of the trademark after the formalities have been completed in order to determine if the trademark is eligible for registration under the Trademarks Act 2019. An examination of a trademark application by the Malaysian Registrar of Trademarks typically takes six to twelve months.

The Registrar will issue a refusal notice if the trademark application does not adhere to any standards outlined in the Trademarks Act 2019. In fact, the applicant will have the chance to address the refusal in question or revise the trademark application as appropriate.

Step 5: Publication in Malaysian IP Official Journal

The trademark application will be accepted and move forward to publication in the Malaysian IP Official Journal once the Registrar determines that it complies with the Trademarks Act 2019 requirements. The general public is granted the chance to oppose trademark registration within two months after the date of advertisement.

The trademark application will engage in a separate opposition proceeding to determine the registration in the event that someone challenges the trademark registration. In this procedure, the parties exchange statutory declarations, counter statements, notices of opposition, and legal arguments. The trademark will be registered in relation to the products or services if no objection is raised.

Step 6: Registration of Trademark

When a trademark is registered, the Registrar must provide a notification of registration with their seal. The registrar will issue the certificate of registration, which is comparable to the notification of a trademark, upon request from the registered proprietor if he wants one.

The owner of the registered trademark may now use the ® sign alongside the trademark. The trademark is now protected, and for a period of ten years from the date of filing, the owner is permitted exclusive use of the trademark in relation to the registered products or services. If renewed every ten years, trademark registration is technically permanent. 

From the date of filing, a smooth trademark registration procedure typically takes between 12 and 18 months. If there are any office actions or opposition proceedings throughout the registration process, it will take longer.

BENEFITS OF MALAYSIA TRADEMARK REGISTRATION

Trademark registration in Malaysia offers several benefits to individuals and businesses, including:

• Exclusive rights – Trademark registration provides the owner with exclusive rights to use the trademark in connection with the goods or services for which it is registered. This prevents others from using or registering a similar or identical trademark.
• Legal protection – Registered trademarks are protected under Malaysian law, and the owner has the right to take legal action against any unauthorized use or infringement of the trademark.
• Brand recognition – A registered trademark can help create brand recognition and establish a unique identity for a product or service in the market.
• Business asset – A registered trademark can be considered a valuable business asset and can be sold, licensed or assigned to others.
• International protection – A registered trademark in Malaysia can be used as a basis for obtaining protection in other countries through international trademark registration.
• Deterrent effect – The existence of a registered trademark can act as a deterrent to potential infringers, as it shows that the owner is serious about protecting their intellectual property rights.

Here are the needed documents:

• Five(5) copies of the properly completed Form TM5 with the intended trademark to be registered attached to the forms;
• one (1) original copy of a Statutory Declaration with the intended trademark to be registered linked to it; 
• If the applicant is a company, one copy of Form 49/D/Company details from the company registration; 
• one (1) copy of the priority date claimed (if applicable); and
• a copy of the trademark’s transliteration and translation if the trademark is not in the form of a Roman character.

To register a trademark application in Malaysia, you’ll need the following items: 

• High-resolution softcopy of the trademark in.jpeg or.pdf format. 
• Full name and identification number of the applicant (for Malaysian applicants) 
• Address of the applicant 
• A comprehensive list of the goods and/or services that are covered 
• If the trademark is not in Roman characters, a certified translation into the Malaysian national language or the English language is required.

What Are My Options For Enforcing My Exclusive Trademark Rights Against Any Infringer?

As the owner of a registered trademark, you have a limited number of options for enforcing your exclusive rights. They are as follows: 

• By filing a legal action against the infringer in the High Court; 
• By requesting a Trade Description Order (“TDO”) from the Court, which declares that the infringer’s use of your registered trademark is a false trade description and allows Ministry officers to seize goods bearing the trademarks and prosecute the infringer; and 
• By filing a complaint with the MDTCC (Ministry of Domestic Trade, Cooperatives, and Consumerism). When the complaint is received, a raid and seizure action will be taken. The violator may face legal action from the Public Prosecutor.

What Are Some Of The Possible Trademark Infringement Defenses?

The TMA provides for a variety of defenses, including but not limited to the following: 

• The use in good faith by a person of his or her own name, the name of his or her place of business, or the name of any of his or her ancestors’ place of business; 
• the use in good faith by a person of a description of the nature or quality of his goods or services, which is not a description that would be likely to be interpreted as implying any reference to the registered proprietor in the case of commodities;
• the use of the registered trademark by the registered proprietor, by his predecessor in business, or by a registered user of the trademark; or
•  the registration of the trademark, whichever is earlier

If you are interested in knowing more about starting a new business in Malaysia, refer to Malaysia company incorporation for more information. 

Reach out to us at Relin Consultants to take advantage of our skilled trademark protection services.

Is it possible for me to assign my trademark?

Yes, just like any other property, a trademark can be granted. The term “assignment” refers to the transfer of ownership. A trademark assignment must be made in writing and signed by all parties involved. Oral agreements do not constitute a legitimate assignment.

Is it necessary to register the assignment?

Yes, the transfer’s assignee must apply to the Registrar to get the trademark title registered in his name. The assignment is only considered affected once this is completed.

What will I receive once my registration has been approved by myIPO?

MyIPO will issue you a Certificate of Registration of Trade Mark if your application to register your trademark is approved. Your brand will also be registered in the Trade Marks Register.

Is it possible to withdraw my trademark registration?

Yes, if you haven’t used your registered trademark for three (3) years or more since the date of registration, your registration may be erased.

Can a foreigner register a trademark in Malaysia?

Yes, a foreigner can register a trademark in Malaysia through a local agent who is a registered trademark agent in Malaysia.

How can I check registered trademarks in Malaysia?

You can check registered trademarks in Malaysia by searching the Malaysian Intellectual Property Corporation (MyIPO) database. The database is accessible online through the MyIPO website (https://www.myipo.gov.my/en/home/) and allows you to search for trademarks using keywords, class of goods or services, or the trademark owner’s name.

How do I register a trademark in Malaysia?

To register a trademark in Malaysia, the following steps can be followed:

Conduct a trademark search to ensure that your trademark is available for registration.

File a trademark application with the Malaysian Intellectual Property Corporation (MyIPO) through a registered trademark agent in Malaysia.

The trademark application will be examined by MyIPO, and if there are no objections, the trademark will be published in the government gazette.

After the publication, there is a two-month opposition period where anyone can object to the registration of the trademark.

If there are no oppositions or the opposition is successfully overcome, MyIPO will issue a certificate of registration, and the trademark will be officially registered.

How much is trademark registration in Malaysia?

The cost of trademark registration in Malaysia varies depending on various factors, such as the number of classes of goods and services the trademark will cover, the nature of the trademark, and whether the applicant is an individual or a company.

As of 2023, the official fee for filing a trademark application in one class for an individual is MYR 330 (approximately USD 80), while for a company, it is MYR 370 (approximately USD 90). However, additional fees may apply, such as fees for the examination, publication, and issuance of the certificate of registration.

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• Jun 9, 2021

Can I Transfer My Trademark? How?

This is one of the commonly asked questions by trademark owners about trademark. The answer is yes, a trademark is an intangible asset which can be transferred from one to another. The process is generally known as, assignment of trademark.

Section 64(1) of the Malaysian Trademarks Act 2019 ("Trademarks Act") provides that, a registered trademark shall be transmissible by assignment or assignment in the same way as other personal or movable property, and shall be so transmissible either in connection with the goodwill of a business or independently"

"Wait, does it mean only registered trademark can be assigned? What happened to unregistered trademark?"

Fret not, unregistered trademark can be assigned too! Section 64(6) of the Trademarks Act provides that, nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trademark as part of the goodwill of a business. (Phew!)

How to assign a trademark ownership?

To kickstart the process, the original owner of the trademark ("Assignor") and the new owner of the trademark ("Assignee") should sign a deed of assignment, a legal instrument that transfer the trademark from the Assignor to the Assignee. One deed of assignment may include multiple trademarks. The deed of assignment contains the terms and condition to transfer the trademark. Generally, it should include the identity of parties, the details of trademark to be transferred, effective date of transfer, and the consideration, ie. the transfer price. The consideration may be a nominal sum.

Once the parties have signed the Deed of Assignment, the document should be filed with the Government Trademark Office, with the prescribed official form (Form TMH-1) and fees.

Upon filing the documents, the Malaysian Trademark Office will usually take a few months to record the assignment into the database of the registry.

Although it seems like may take some time, but the effective date of transfer of ownership is based on the date of deed of assignment, not the date of recordal by the Trademark Office. So the rights of the parties are not affected, despite the heavy workload in the Trademark Office.

Who should be responsible to file the assignment?

There are no hard and fast rules as to whether the deed of assignment and/or application for recordal of assignment should be done by the assignor or assignee. The parties may decide on a case-to-case basis.

International Assignment of Trademarks

Since registration and protection of trademark is territorial based, the recordal of trademark assignment will also be done country by country.

In some countries, a universal deed of assignment is acceptable. Hence the same document may be used to apply for recordal of trademark assignment in a few countries and save some legal fees in drafting a separate deed of assignment in each country.

However, in some countries, there are specific requirements on format or languages of the Deed of Assignment.

So, it is always safe not to assume and you should seek consultation from your trademark agent .

When is the best timing to assign trademark ownership?

There are many reasons that prompt the need of assignment of trademark. For example, sale of trademark, corporate restructure, moving a business from sole proprietorship to private limited company (Sdn. Bhd.) or vice versa & etc.

Once you have decided any of the above moves, the assignment of trademark should be done immediately without any delay.

There are many instances that the assignment of trademark has been delayed due to procrastination or overlook. This may lead to serious and unwanted consequences.

For instance, after a few years, upon realizing the need of doing the deed of assignment, if the assignor has ceased to operate or passed away (for individual assignor), this may complicate the process of recordal of assignment due to the difficulty in locating the assignor to sign the documents.

Another example is, there may be a problem when the assignee needs to take legal action against trademark infringer, as the legal ownership of the assignee on the trademark is questionable.

Looking for assigning the ownership of your trademark? Don't wait! Contact us today!

Written by,

Li Yen Seow

IP Legal Executive

Bachelor of Laws

Lawrence Tan

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP Advocate & Solicitor (Non-Practising)

Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.

Copyright reserved 2021 © IP Gennesis Sdn Bhd

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Malaysia: 10 Highlights Of The Malaysia Trademarks Act 2019

It has been close to 2 years now since the Malaysia Trademarks Act 2019 (the new Act) came into force on 27 December 2019, replacing the Trade Marks Act 1976 (the old Act). The new Act introduces substantial changes that seek to bring Malaysia in line with international trademark practices and present-day commercial trends.

In this newsletter, we highlight the 10 key takeaways that can be gleaned from the new Act and the ways in which they have departed from the old Act:

• Accession to the Madrid Protocol  – Malaysia is now part of the Madrid Protocol which is an international system for obtaining trademark protection in countries that are signatories by way of a single application and paying a single set of fees. The Madrid Protocol platform benefits both local and foreign brand owners; local brand owners can now file one single international application designating multiple countries while foreign brand owners can now designate Malaysia in their international applications. Previously, local and foreign brand owners were required to submit individual applications via the national IP Office(s).
• Non-traditional marks and collective marks   now registrable  – Non-traditional trademarks such as shape or packaging of goods, colour, sound, scent, hologram, positioning and sequence of motion are now registrable in Malaysia. Previously, only traditional marks (such as a device, brand, heading, label, ticket, name, signature, word, letter, numeral) were registrable. Collective marks for associations such as clubs, trade unions and societies (previously not available), are now recognized and regulated under the new Act.
• Multi-class applications now available  – Trademark owners will now have the option to file their trade mark as a multi-class application that covers several classes in a single application. This allows an easier administration of their trademark portfolio. Accordingly only one form is required for matters such as renewals, amendments, assignments etc. which greatly reduces paperwork compared to single-class applications under the old Act.
• Filing date  – Under the new Act, the filing date is the date the Registrar receives the trademark application, barring any deficiencies or irregularities during the filing of the application. Priority dates are no longer deemed as filing dates. For trademarks claiming priority of an earlier date,  it will be the filing date (and not the priority date) which will be deemed to be the registration date of the trademark.
• Formality requirements –  A Statutory Declaration is no longer required for purposes of completing the trademark filing requirements under the new Act. Where trademarks consisting of words not in Roman characters, English or Malay are concerned, the Registry also no longer requires the applicant to submit a translation and transliteration of the mark certified by a translator. That said, an ordinary translation and transliteration of the mark is now required to be submitted at the time of filing and for the purpose of securing a filing date. Where the translation and transliteration is submitted after the trade mark has been filed, the application will only be accorded a filing date when the translation and transliteration are received by the MyIPO.
• Applicants will have only one strike at the examination stage  – Upon examination, only one opportunity is afforded to the applicant to respond to the Registrar's provisional, either by way of filing written submissions or requesting for a hearing. If after considering the applicant's response, the Registrar refuses to register the trademark, the applicant will be required to file an appeal with the High Court. This differs from the old Act, where the applicant had two opportunities, first by filing written submissions and then followed by a request for hearing before the Registrar, before finally filing an appeal with the High Court. Under the new Act, there will no longer be appeals to the Registrar.
• Licensing regime replaces the registered user system  – The registered user system under the old Act is now abolished and replaced with the licensing regime under the new Act. A licence shall not be effective unless it is in writing and is signed by or on behalf of the grantor. It is also a registrable transaction and once entered in the Trademarks Register, every person shall be deemed to have notice of the licence.
• Recognition of trademark as a form of security interest  – The new Act now recognizes a trademark as a personal or moveable property and may be the subject of a security interest in the same way as other personal or moveable property. This opens opportunities for trademark owners who can now use their trademarks as collateral for financial assistance.
• Groundless threats of infringement proceedings  – the new Act now offers protection to recipients of threats of infringement actions that are made without good basis, by enabling them a right to commence court actions against persons issuing such threats. A cease and desist letter should therefore be drafted with caution. The mere notification that a trademark is registered, however, is not considered a threat of proceedings.
• Wider scope of Infringement  – the new Act now allows registered trademark owners a right to bring an action for infringement of goods and services that are similar to the goods and/or services protected under the registration. Previously under the old Act, an action for infringement may only be brought against goods and/or services that are listed within the scope of the registration.

Originally published 8 October, 2021

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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10 Highlights of the Malaysia Trademarks Act 2019

It has been close to 2 years now since the Malaysia Trademarks Act 2019 (the new Act) came into force on 27 December 2019, replacing the Trade Marks Act 1976 (the old Act). The new Act introduces substantial changes that seek to bring Malaysia in line with international trademark practices and present-day commercial trends.

In this newsletter, we highlight the 10 key takeaways that can be gleaned from the new Act and the ways in which they have departed from the old Act:

• Accession to the Madrid Protocol – Malaysia is now part of the Madrid Protocol which is an international system for obtaining trademark protection in countries that are signatories by way of a single application and paying a single set of fees. The Madrid Protocol platform benefits both local and foreign brand owners; local brand owners can now file one single international application designating multiple countries while foreign brand owners can now designate Malaysia in their international applications. Previously, local and foreign brand owners were required to submit individual applications via the national IP Office(s).
• Non-traditional marks and collective marks now registrable – Non-traditional trademarks such as shape or packaging of goods, colour, sound, scent, hologram, positioning and sequence of motion are now registrable in Malaysia. Previously, only traditional marks (such as a device, brand, heading, label, ticket, name, signature, word, letter, numeral) were registrable. Collective marks for associations such as clubs, trade unions and societies (previously not available), are now recognized and regulated under the new Act.
• Multi-class applications now available – Trademark owners will now have the option to file their trade mark as a multi-class application that covers several classes in a single application. This allows an easier administration of their trademark portfolio. Accordingly only one form is required for matters such as renewals, amendments, assignments etc. which greatly reduces paperwork compared to single-class applications under the old Act.
• Filing date – Under the new Act, the filing date is the date the Registrar receives the trademark application, barring any deficiencies or irregularities during the filing of the application. Priority dates are no longer deemed as filing dates. For trademarks claiming priority of an earlier date,  it will be the filing date (and not the priority date) which will be deemed to be the registration date of the trademark.
• Formality requirements – A Statutory Declaration is no longer required for purposes of completing the trademark filing requirements under the new Act. Where trademarks consisting of words not in Roman characters, English or Malay are concerned, the Registry also no longer requires the applicant to submit a translation and transliteration of the mark certified by a translator. That said, an ordinary translation and transliteration of the mark is now required to be submitted at the time of filing and for the purpose of securing a filing date. Where the translation and transliteration is submitted after the trade mark has been filed, the application will only be accorded a filing date when the translation and transliteration are received by the MyIPO.
• Applicants will have only one strike at the examination stage – Upon examination, only one opportunity is afforded to the applicant to respond to the Registrar’s provisional, either by way of filing written submissions or requesting for a hearing. If after considering the applicant’s response, the Registrar refuses to register the trademark, the applicant will be required to file an appeal with the High Court. This differs from the old Act, where the applicant had two opportunities, first by filing written submissions and then followed by a request for hearing before the Registrar, before finally filing an appeal with the High Court. Under the new Act, there will no longer be appeals to the Registrar.
• Licensing regime replaces the registered user system – The registered user system under the old Act is now abolished and replaced with the licensing regime under the new Act. A licence shall not be effective unless it is in writing and is signed by or on behalf of the grantor. It is also a registrable transaction and once entered in the Trademarks Register, every person shall be deemed to have notice of the licence.
• Recognition of trademark as a form of security interest – The new Act now recognizes a trademark as a personal or moveable property and may be the subject of a security interest in the same way as other personal or moveable property. This opens opportunities for trademark owners who can now use their trademarks as collateral for financial assistance.
• Groundless threats of infringement proceedings – the new Act now offers protection to recipients of threats of infringement actions that are made without good basis, by enabling them a right to commence court actions against persons issuing such threats. A cease and desist letter should therefore be drafted with caution. The mere notification that a trademark is registered, however, is not considered a threat of proceedings.
• Wider scope of Infringement – the new Act now allows registered trademark owners a right to bring an action for infringement of goods and services that are similar to the goods and/or services protected under the registration. Previously under the old Act, an action for infringement may only be brought against goods and/or services that are listed within the scope of the registration.

If you would like to have further information on this write-up, please contact:

Audrey Yap (Ms.) Regional Managing Partner D (65) 6358 2865 F (65) 6358 2864 [email protected]

Wong Dan Yi (Ms.) Partner Unit 33-08, Tower A, Menara UOA Bangsar, No. 5, Jln Bangsar Utama 1, Taman Bangsar, 59000 Kuala Lumpur, Malaysia T: (603) 22023388 F: (603) 22023366 [email protected]

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I ntroduction

The registration of trade marks in Malaysia is governed by the Trade Marks Act 1976 (the “TMA”) and Trade Marks Regulations 1997. With effect from 1 December 1997, service marks are also registrable. For convenience, the term "trade mark" when used herein also includes "service mark" unless indicated otherwise. Any mark used/proposed to be used in relation to goods or services to indicate a connection in the course of trade between the goods or services and the person having the right to use the mark can be registered. In this regard "mark" includes any device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these elements. Marks in other than English or Malay are also prima facie registrable although where the marks contain non-Roman character(s) a certified translation and transliteration of the character(s) will be required to be furnished.

Applicant for registration of a trade mark

Any person (an individual, corporation or business) who claims to be the bona fide proprietor of the mark may apply for trade mark registration.

Reasons for registering a trade mark

Registration of a trade mark confers exclusive rights on the registered proprietor to use the mark on the goods/services for which the mark is registered. The proprietor of a registered mark has, prima facie, the right to take legal action against wrongful use of the registered mark or any confusingly similar mark in relation to the goods/services in respect of which the mark is registered. If the trade mark is not registered, the proprietor of the mark will have to rely on the common law remedy of passing off, which can be more difficult and expensive to establish.

Criteria for registration as a trade mark

A mark must be sufficiently distinctive in order to be registrable, in that the mark must be able to distinguish the goods/services bearing the mark from goods/services which do not. Generally, marks which have direct reference to the character or quality of the goods/services, geographical names and surnames may not be considered distinctive and therefore may not be registrable. Also, marks which are confusingly similar to a prior mark or which are deceptive or contrary to law or morality may not be registrable.

By virtue of amendments to the TMA which came into force on 1 August 2001, a mark shall not be registered if it is identical with or so nearly resembles a mark well-known in Malaysia for the same goods or services of another proprietor or if it is well-known and registered in Malaysia for goods or services not the same as those of the subject application provided that use of the mark in relation those goods or services would indicate a connection between the goods and services of the proprietor of the well-known mark and the interests of the proprietor are likely to be damaged by such use.

There is no express definition of a well-known mark in the Act. However, it is provided that Article 6bis of the Paris Convention and Article 16 of the TRIPs Agreement shall apply for the purpose of determining whether a mark is well-known.

Likewise, a mark shall also not be registered if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication for such goods in Malaysia will mislead the public as to the true place of origin of the goods.

A similar prohibition of registration is also provided in respect of a mark for wines or spirits which contains or consists of a geographical indication identifying wines or spirits, not originating in the place indicated by the geographical indication in question.

However, a mark shall not be refused registration by reason of it containing or consisting of a geographical indication as expressed above if the application was made in good faith, or if the mark had been continuously used in good faith in the course of trade by the applicant or his predecessor in title either before the commencement of the Geographical Indications Act 2000 (which came into force at the same time as the relevant amendments to the TMA, that is, 1 August 2001) or before the protection of the geographical indication in its country of origin.

Application for registration

An application for registration of a trade mark may be made by any person claiming to be the proprietor of the mark. In brief, an application shall be filed with the Intellectual Property Corporation of Malaysia (MyIPO) and includes:

1. a completed Form TM5, signed by the applicant or his agent;

2.where an agent is appointed, Form TM1 in respect of the address for service;

3. a representation of the mark;

4. a list of goods or services; and

5. the prescribed filing fee(s).

Upon filing and if the documents are in order, an application number and filing date are allocated. The applicant is also required to file a Statutory Declaration affirming that the applicant is the bona fide proprietor of the mark and that the application is made in good faith. This Declaration can be filed either with the initial application or subsequently. Thereafter, the application awaits its turn to be examined.

Examination of an application serves to check whether the mark applied for meets the requirements for registration as provided in the TMA. If the examination is successful, the application is advertised in the Government Gazette after the filing of Form TM31 and payment of an official fee. There is a two-month period after advertisement during which the application may be opposed. If the application is not opposed, it will then proceed to registration and a Certificate of Registration will be issued. If an opposition is filed, registration of the mark will depend upon how the opposition is decided.

In the event any objections are raised at the examination stage, the applicant will receive an official letter setting out the objections and will be given a period of two months to respond with submissions. The response period can be extended, if necessary. Following the filing of a response to the objections, the application will either be accepted for advertisement, or the objections maintained. In the latter case, the applicant may request for a hearing.

The necessary forms, including those mentioned above, are available from http://www.myipo.gov.my .

The above summary of the trade mark registration process is necessarily simplified. Numerous detailed requirements that must be met either at the outset, or before an application can proceed to registration, are set out in the TMA and Regulations. For this reason, it is strongly recommended to engage a registered trade mark agent to advise you on the protection of a trade mark and to represent you before the Registrar of Trade Marks when your application is filed and examined. Many members of MIPA are registered trade mark agents.

Expedited examination

For applications filed on or after 15 February 2011, there are formal provisions for requesting expedited examination, provided the request is filed within four (4) months from the application filing date. The request must be reasoned and an official fee is payable. The grounds on which expedited examination may be considered are:

1.national or public interest;

2. evidence of potential infringement or ongoing infringement proceedings;

3. registration is a condition to obtaining monetary benefits from the Government or institutions recognized by the Registrar; or

4.other reasonable grounds.

Upon approval of the request by MyIPO a further, substantial official fee is payable within 5 working days to commence expedited examination. It should be noted that what is expedited is the timeframe within which the mark gets examined. The application is still subject to the normal and remaining stages leading up to registration.

Classification of goods and services

In respect of goods and services, MyIPO generally follows the latest edition of the International Classification of Goods and Services ("ICGS") published by the World Intellectually Property Organisation ("WIPO") which sets out 34 classes of goods and 10 classes of services.

Priority claim

The applicant may claim the priority of an earlier corresponding application filed in a Paris Convention country within the 6-month period immediately preceding the filing of the Malaysian application.

Period of registration

A mark once registered is valid for 10 years from the date of filing (or priority date, if any) and may be renewed every 10 years thereafter.

Effect of registration and expungement for non-use

Once a mark is registered, registration is deemed to date back from the date of application (or priority date, if any) and the registration is valid for 10 years from that date.

The registered proprietor has exclusive rights to use the mark in respect of the goods/services for which it is registered. Any person who uses the registered mark or confusingly similar mark in respect of the goods/services for which it is registered without the consent of the proprietor would be infringing the registration and the proprietor has the right to take action for such infringement.

Upon registration, the proprietor should ensure that the mark is or continues to be used. This is because the TMA provides that upon the application of an aggrieved person, a registration may be expunged from the Register if the registered mark has not been used in good faith for a continuous period of three years or more up to a month before the date of the application for expungement.

Licensing and transfer of trade marks

In cases where the proprietor of a trade mark licenses or authorises another to use his trade mark, the other person should be recorded in the Register as a Registered User of the trade mark. The effect of this is so that use by the Registered User will enure to the proprietor, thereby protecting the mark from expungement for non-use. This is because “permitted use” under the TMA refers only to use by the registered user.

The TMA provides for trade marks to be assigned/transmitted with or without the goodwill of the business concerned and requires any person who becomes entitled by assignment/transmission to a trade mark to register such an assignment/transmission in the Register. Unless directed by the Court, no document of title shall be admissible in Court to prove title to a registered trade mark if the assignment has not been recorded and entered in the Register.

Assignment of a trade mark that has not been used in good faith in Malaysia without the goodwill of the business is deemed invalid, save in limited circumstances (where the mark was registered with the intention of it being assigned to a body corporate yet to be formed, or in respect of permitted use where the user has been registered within 6 months from registration of the mark and the mark has been used during that period).

In respect of an assignment without goodwill of the business, the assignment shall not be deemed to have taken effect unless the assignment has been advertised in the prescribed manner and the application for assignment accompanied by the advertisement has been sent to the Registrar.

Protection of well-known trade marks

Other than the provisions prohibiting the registration of a trade mark that is similar or identical to a well-known trade mark as explained earlier, well-known trade marks are given further protection under the TMA. The proprietor of a well-known trade mark is entitled to restrain by injunction the use in Malaysia in the course of trade and without the proprietor’s consent of the trade mark which is identical with or nearly resembles the proprietor’s mark in respect of the same goods or services where the use is likely to deceive or cause confusion.

A mark may be well-known in Malaysia irrespective of whether the proprietor carries on business or has any goodwill in Malaysia.

Any person may conduct a search of prior marks, either in person at MyIPO in Kuala Lumpur, or via online access to MyIPO’s IP Online database. Official fees are payable. A search serves to check on the availability for registration of a proposed mark, as well its availability to be used without infringing third party rights acquired through registration.

Passing off

Unregistered trade marks, trade names, get-up and trade dress may be protected in Malaysia by an action for passing off. The TMA expressly preserves the action of passing off and remedies that may be claimed in respect thereof. Malaysian law in this area is generally similar to that of other common law jurisdictions. It has been established by local case law that the essential elements for a cause of action for passing off are goodwill, misrepresentation and damage (or the likelihood of damage).

Border measures

Another new feature of the amendments that came into force on 1st August 2001 is that on border measures. Essentially, the proprietor of a registered trade mark who objects to the importation of counterfeit trade mark goods may apply to the Registrar to impose prohibition on the importation of such goods for a period of sixty days. The proprietor must state in the application, among other things, the time and place in which the counterfeit trade mark goods are expected to be imported for the purpose of trade.

“Counterfeit trade mark goods” is defined to mean any goods, including packaging, bearing without authorization a trade mark which is identical with or so nearly resembles the trade mark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trade mark, and which infringes the rights of the proprietor of the trade mark under the TMA.

The provision does not extend to goods in transit.

The proprietor is required to furnish a security deposit to the Registrar sufficient to reimburse the Registrar for any liability or expense to be incurred in respect of the seizure of such goods, prevent abuse and protect the importer or pay such compensation as may be directed by the Court.

The proprietor must also institute an action in court for trade mark infringement within the period specified by the authorized officer (being a customs officer), failing which the goods seized shall be released to the importer and the proprietor may be subject to claims for compensation by the importer.

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Registering a Trademark in Malaysia

What is Trademark

“Trademark” is defined as any sign capable of being represented graphically, which is capable of distinguishing goods or services of one undertaking from those of other undertakings 1 .

Such signs include any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof. 2

In Malaysia, trademark matters are governed by the Trademarks Act 2019 (“ TA 2019 ”), the Trademarks Regulations 2019 as well as the relevant case law (related to trademark) decided by the courts.

Registering a Trademark

Registration of a trademark is not necessary, but is highly advisable. This is due to the fact that the statutory rights granted under the TA 2019 to the owner of a trademark apply only to registered trademarks. This includes the right to commence trademark infringement action against the alleged trademark infringer. In case of unregistered trademark, its owner may only bring passing off action 3 (instead of trademark infringement action) against any person using a mark which is similar or identical to its trade mark. However, the likelihood to succeed in passing off action is more difficult compared to trademark infringement action as it will depend on the owner of unregistered trademark’s ability to satisfy the requirements of passing off 4 .

Any person 5 who claims to be the bona fide 6 proprietor of a trademark may apply for the registration of its trademark with the Intellectual Property Corporation of Malaysia (“ MyIPO ”) in the relevant classes for registration under the MyIPO’s Goods and Services (Pre-Approved) List 7 , depending on the goods and/or services that the trademark is being used/ intended to be used by the trademark owners. In total, there are 45 classes for trademark registration. Classes 1 to 34 covers trademark used for goods, while Classes 35 to 45 deal with trademark used in respect of services.

Registration of a trademark in a particular class only gives that trademark, the exclusive rights and protection in that particular class. As such, it is important for trademark owners to register their trademark in all relevant class(es) so as to ensure that their rights are secure.

Registration Procedure of a Trademark

An application for the registration of a trademark must be filed with the MyIPO using the prescribed form and accompanied with the prescribed fee. The information required to be submitted in the application form includes the details of the applicant of the trademark, the representations of the trademark, the description of the trademark, the classes of good and services as well as the specifications of the good and services.

Once filed, the Registrar of Trademark (“ Registrar ”) will conduct formality and substantive examinations on the trademark application. During the substantive examination, the Registrar will examine whether the trademark application fulfills the requirements for registration under the TA 2019. The registration of a trademark will be refused by the Registrar if the trademark falls, amongst others:

• within any of the absolute grounds for refusal of registration under Section 23 of the TA 2019 including but not limited to the following:
• signs which are not capable of being represented graphically and not capable of distinguishing goods or services of one undertaking from those of other undertakings;
• trademarks which are devoid of any distinctive character;
• trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics of goods or services or the time of production of goods or of rendering of services; or
• trademarks which consist exclusively of signs or indications which have become customary in the current language of the territory or in the bona fide and established practices of the trade.
• within any of the relative grounds for refusal of registration under Section 24 of the TA 2019 including but not limited to the following:
• if there exists a likelihood of confusion on the part of the public-

(aa) where the trademark is identical with an earlier trademark and is to be registered for goods or services similar to the earlier trademark; or

(bb)  where the trademark is similar to an earlier trademark and is to be registered for goods or services identical with or similar to the earlier trademark;

• if it is identical with or similar to a well-known trademark which is not registered in Malaysia and it is to be registered for the identical goods or services of the proprietor of the well-known trademark.

If the Registrar satisfies that the trademark application has fulfilled the requirements for registration under the TA 2019, he will accept the trademark application for registration and the same will be published in the Intellectual Property Official Journal for a period of two (2) months. During this period, any party may file with the MyIPO, an opposition against the registration of the trademark based on any of the grounds mentioned in the TA 2019 8 . If no party opposes the registration of the trademark within this two (2) months period, such trademark will proceed to be registered by the MyIPO.

Upon registration of a trademark, a notification of registration will be issued by the MyIPO. The registered trademark proprietor may obtain a certificate of registration of the trademark by filing the prescribed form with the MyIPO accompanied with the payment of the prescribed fee.

Exclusive Rights Obtained by Registered Trademark Proprietor

Once a trademark is registered, the TA 2019 grants to the owner of such registered trademark:

• the exclusive right to use the trademark in relation to the goods or services for which the trademark is registered in Malaysia; and
• the exclusive right to authorize other persons to use the trademark in relation to the goods or services for which the trademark is registered in Malaysia.

Maintaining a Trademark

A trademark registration is valid for a period of ten (10) years from the date of its application and may be renewed every ten years.

To maintain the rights obtained through registration of a trademark, the registration of the trademark must be renewed within the prescribed time. Aside from that, a registered trademark proprietor must ensure that he uses the registered trademark (in relation to the goods and/or services for which the trademark is registered). In the event the registered trademark has not been put to use in good faith in Malaysia without proper reasons by the registered trademark proprietor (or with his consent) within a period of three (3) years following the date of issuance of the notification of registration, such trademark registration may be revoked by the Court on an application by an aggrieved person on the ground of non-use 9 .

International Considerations

Trademark protection is territorial. Therefore, if trademark owners intend to export their products or services to other countries, the trademark owners should consider either registering their trademark directly in each country of their interest (with the relevant national intellectual property office) or using Protocol relating to the Madrid Agreement Concerning the International Registration of Marks (“ Madrid Protocol ”).

The Madrid Protocol is an international registration system for trademarks where trademark owners can simultaneously seek protection for a trademark in other countries through a single procedure with a single administration. In other word, trademark owners can use their Malaysia trademark application or registration as a basic mark with MyIPO to instruct the International Bureau of World Intellectual Property Organization (WIPO) to designate any other member countries of the Madrid Protocol such as Singapore, Korea and etc. Each of the countries where the protection is sought will then apply their own rules and laws to determine whether or not a trademark may be protected in its jurisdiction 10 .

In the event where a trademark owner wishes to register its trademarks in Malaysia directly with the MyIPO, but does not reside or carry on business principally in Malaysia, the TA 2019 requires such trademark owner to appoint a trademark agent registered with the MyIPO to act on its behalf.

——————–

• Section 3(1) of the TA 2019.
• Section 2 of the TA 2019.
• a tort founded in common law principles.
• as set out in the case of Reckitt & Colman Products Ltd v Borden Inc & Ors (1990) 1 All ER 873 at p 880, which case has been accepted and adopted by the Malaysian Courts such as in the case of Yong Sze Fun & Anor (t/a Perindustrian Makanan & Minuman Layang-Layang) v Syarikat Zamani Hj Tamin Sdn Bhd & Anor [2012] 1 MLJ 585.
• individual, corporation or business.
• Pursuant to Section 17(1) of the TA 2019, he must either be using or intends to use the trademark in the course of trade or has authorized or intends to authorize another person to use the trademark in the course of trade.
• a classification system used by the MyIPO to classify goods and services for the purposes of the registration of trademarks.
• Section 34 of the TA 2019.
• Section 46(1)(a) of the TA 2019.
• There is a common misconception that trademark registration via Madrid Protocol would grant a global trademark protection. However, in fact, the Madrid Protocol trademark registration would only confers national rights governed by the rules and laws of each designated member countries respectively.

Disclaimer: This article is written merely for general sharing and does not constitute any legal advice. The successfulness of the registration of each and every trademark will differ depending on the facts and circumstances and therefore will require specific legal advice. It is recommended that you consult a registered trademark agent to assist with your trademark application.

Written by:

Khairul Fazli Abdul Kadir ( Partner ) [email protected]

Azarith Sofia Aziz ( Senior Associate ) [email protected]

Nur Aina Syafiqah Azawawi ( [email protected] )

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Dear Valued Clients,

Following the national fiscal (Budget 2024) announcement, the proposed Service Tax (ST) rate will be increased from the current rate of 6% to 8% with effect from 1 March 2024, on selected taxable services including the legal services sector.

At this point, Azmi & Associates (“ the Firm ”) has outlined a tentative approach to the proposed increase in ST, pending further clarifications and implementation guidelines from the relevant Ministry and the Royal Malaysian Customs Department.

During this period, the Firm reserves the right to update or modify the information as deemed necessary.

1. Effective Date The anticipated effective date for the implementation of the new tax rate (8%) is set for 1 March 2024.

2. Transitional rules for the proposed increase in Service Tax rate a. Service Tax at 6% is applicable on taxable services provided before 1 March 2024; Service Tax at 8% is applicable on taxable services provided post 1 March 2024. b. Taxable services spanning 1 March 2024: • Service Tax at 6% for the portion of taxable services provided before 1 March 2024 • Service Tax at 8% for the portion of taxable services provided post 1 March 2024

Should you have any queries or require further clarification on this matter, please feel free to reach out to us. We highly value our client relationships and are dedicated to ensuring a seamless transition through these changes.

Corporate Communications, Azmi & Associates – 16 February 2024

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Trade Marks Act 2019 (Act No. 815), Malaysia

• Paris Convention (March 20, 1883)
• Madrid Agreement (Marks) (April 14, 1891)
• Madrid Protocol (June 27, 1989)
• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (April 15, 1994)

• Practical Law

Intellectual Property Transactions in Malaysia: Overview

• Trade Marks
• Confidentiality

Patent/Utility Innovation

• Patentable Inventions
• Non-Patentable Inventions
• Importance of Patent Registration
• Duration of Patent & Utility Innovation
• Who May Apply?
• Manual & Specification
• Sample of Patent Specification
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• Filing Patent via Online
• Expedited Examination
• Patent Cooperation Treaty (PCT) Filing
• Patent Prosecution Highway (PPH)
• ASEAN Patent Examination Co-operation (ASPEC)
• Malaysia Traditional Knowledge Digital Library (MyTKDL)
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• Patents Act 1983

Trademark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. Sign – any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, color, sound, scent, hologram, positioning, sequence of motion or any combination thereof. Collective Mark – A collective mark shall be a sign distinguishing the goods or services of members of the association which is the proprietor of the collective mark from those of other undertakings. Certification Mark – A certification mark shall be a sign indicating that the goods or services in connection with which it shall be used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

• Types of Trademark
• Non-Registrable Trademark
• Functions of Trademark
• Importance of Trademark Registration
• Duration of Registration
• Classes of Goods and/or Services
• Filing Trademark Manually
• Filing Trademark via Online
• Trademark Renewal
• Trademark Agent
• Announcement
• Search Trademark
• Applying for Trademark
• Trademark Form & Fees
• Trademark Basic
• Trademark Act

Industrial Design

• Registrable Industrial Design
• Non-Registrable Industrial Design
• Importance of Industrial Design Registration
• Period of Registration
• Filing Industrial Design Manually
• Filing Industrial Design via Online
• International Classification for Industrial Designs
• Industrial Design Renewal
• Industrial Design Agent
• Search Industrial Design
• Applying for Industrial Design
• Industrial Design Form & Fees
• Industrial Design Basic
• Industrial Designs Act 1996

Geographical Indications

• Protection of Geographical Indications
• Exclusion from Protection of GI
• Right of Use
• Period of Protection
• Filing Geographical Indications Manually
• Filing Geographical Indications via Online
• Geographical Indications Renewal
• Geographical Indications Agent
• Search Geographical Indications
• Applying For Geographical Indications
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• Geographical Indications Basics
• Geographical Indications Act 2000
• Works Eligible for Copyright
• The Rights of Copyright Owners
• Duration of Copyright
• Copyright Infringements
• Category of Work