Here's everything you need to know about trademarking in Malaysia.
What are Trademarks ?
Trademarks Act 2019 replaced the Trade Marks Act 1976.
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.
Popular examples of trademarks include Coca-Cola, Starbucks, Google, Apple etc.
The Changes by the Trademarks Act 2019
Malaysia’s Accession to the Madrid Protocol - International trademark registration is now available under the Madrid Protocol system which allows trademark owners to apply for trademark protection in up to 122 member countries by filing one single application in one language and one paying fee.
Recognition of non-conventional trademarks - The new act essentially defines shapes, sounds, colour and scents as signs and expands the definition of a trademark to include any sign capable of being represented graphically and not just the word and logo mark.
Multi-class applications would be allowed under the new act.
Trademark infringement - Infringement action can now be taken against any unauthorized third party for use of a sign that is identical with a registered mark. Burden of proof of showing that the offending use of trademark use is now up to the potential defendant to show that the use of the trademark was used as a descriptor or other non-trademark use.
Registrar’s Provisional Refusal (substantive examination conducted premised on absolute and/or relative grounds). The applicant has one opportunity to opt to submit a written submission in reply of the Registrar’s Provisional Refusal, or, request for an ex-parte Hearing in the event a Provision Refusal is issued.
Lower Official Fees at the Application stage if Goods/Services are picked from “pre-approved list”. Previous trademark laws provide for one standard filing fee which was payable when a new trademark application is filed.
The Importance of Trademarks
Origin - A trademark helps to identify the source and those linked to the products and services trade in the market.
Choice - A trademark assists consumers to choose goods and services with ease.
Quality - Consumers define a certain trademark for its known quality.
Marketing - Trademarks play a significant role in promoting and marketing. It’s common for consumers to make purchases based on continuous effect of advertising.
Economic - Recognized trademark is an asset. Trademarks may be licensed or franchised.
Exclusive Rights - Registered trademark owners have exclusive right to use their marks in trading. They also have the right to take legal action for infringement under the Trademarks Act against others who use their marks without consent. They can either take civil action or lodge complaints to the Enforcement Division for appropriate actions under the Trade Description Act 1972.
Legal Evidence - Registration certificate issued by Registrar Office is a prima facie evidence of trademark ownership. A certificate of registration serves as an important document to establish the ownership of goods exported to other countries.
Types of Trademarks
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Word | Stylised Word | Device | Device & Word |
The representation for the word mark shall be in standard font including Times New Roman or Arial.
Shape of Goods / Packaging
Registration of a shape as a trademark in relation to goods or services, which includes the shape of the packaging. For example, the CocaCola bottle and Lego Man gives its owner exclusive rights to the shape for 10 years. This is subject to the shape of goods or the packaging being unique and identifiable.
Sound
It is mandatory to provide electronic sound file (sound record). Acceptable format is MP3. In addition, the applicant may submit to the Registrar the musical notation.
Single Colour & Combination of Colours
The new Trademarks Act allows for both single colours and combinations of colours to be registered in association with goods or services. Colour may be an aspect of the packaging or applied to the goods. Successfully registered colour trademarks are the robin’s-egg blue of Tiffany’s or the deep purple of Cadbury.
Scent
It is mandatory to provide the Registrar with the description of the scent. The applicant may also provide the Registrar with the chemical composition or formula of the scent.
Hologram
An applicant shall provide the Registrar a graphic or photographic reproduction containing a maximum of six (6) views which are necessary to sufficiently identify the holographic effect in its entirety. The applicant may submit to the Registrar a video file in MP4 or AVI format. The size of the video file shall not exceed 50MB.
Positioning
An applicant shall provide the Registrar with a solid line on the part where the applicant wants to claim registration and dotted line to denote the part where the applicant does not want to claim. An example of this is the luxury shoe designer, Christian Louboutin’s signature placement of the brand’s trademarked red colour on the soles of the shoes.
Motion
The applicant shall provide the Registrar with a graphic representation of the sequence of motion in the form of a series of still images of the mark to show the movement in all different views. The views provided by the applicant shall be numbered or accompanied by a description explaining the sequence and detailed description explaining the movement of the motion mark.
Series Mark
Examples of series mark (words):
a) Differences in statements or representations as to the goods or services in relation to which the trademarks are used or intended to be used. (eg. Fanta Orange, Fanta Apple)
b) Differences in statements or representations as to number, price or quality. (eg. BUTTERFLY 1, BUTTERFLY 2)
Differences in standard fonts which does not substantially affect the identity of the trademarks.
Certification Mark
Rules to register a certification mark :
a) the persons authorized to use the certification mark
b) the characteristics to be certified by the certification mark
c) how the proprietor is to test those characteristics
d) how the proprietor supervises the use of the certification mark; and
e) the procedures for resolving disputes between the proprietor and authorized user.
Collective Mark
Rules to register a certification mark :
a) the persons authorized to use the collective mark
b) the conditions of membership of the association
c) the conditions of use of the collective mark, if any; and
d) any sanctions against misuse of the collective mark, if any
The Overview of Trademark Registration Process
MyIPO Goods and Services (Pre Approved)
There are 45 classes of goods and services listed under this list. The applicant is not encouraged to list or claim the entire class heading of each class of goods or services in the application form.
Example: Toiletry and sanitary preparations, as well as general cleaning preparations, are usually in Class 3, the main exception being when they are used for medical purposes, in which case they are in Class 5. While soaps and shampoos in general belong to Class 3, medicated soaps and shampoos are in Class 5.
Preliminary Search
Any person may file an application to the Registrar for preliminary advice and search result under section 13 of the Trademark Act together with payment of the prescribed fee.
A preliminary search and advice is done to ensure that the trademark is registrable i.e. does not bear similarities to another trademark / is not made up solely of generic words which have common and widespread use.
The trademark may be refused on two grounds – absolute and relative grounds of refusal.
Absolute Grounds of Refusal- Marks which are non distinctive / descriptive. For shape marks, shapes that are prohibited are shape marks resulting from the nature of goods themselves / necessary to obtain technical results / give substantial value to the goods.
Relative Grounds of Refusal - Similar or identical Mark which has been filed earlier.
Trademark Registration
After the preliminary search and advice, If there are no refusals from the Registrar then the applicant may proceed to file an application for registration of trademark on the MyIPO website.
Application for registration of trademark may be done by adopting from pre-approved list or without adopting from pre-approved list.
The trademark size must not exceed 10 cm x 10 cm.
If an agent is making the trademark application, the agent authority application must be filed.
The application for registration of trademark shall contain, for each class of goods or services to which the application relates. The applicant may apply more than one class in single application (multiple classes).
The average processing time from filing to trademark registration in Malaysia is 12-18 months.
The validity term of a trademark registration in Malaysia is ten years from the date of filing.
The Malaysian trademark is subject to renewal every ten years.
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