Category: Malaysia

Q15. What is the overall flow of trademark registration?

A: After application, a formality examination will be conducted. If it is deemed that the formalities are being observed, the process proceeds to a substantive examination to determine whether or not registration is permitted and if the registration is approved, it will be announced in the official gazette and registered.

Q14. Is there any way to check whether there are any trademarks that are similar to the one we are planning to apply for and which have already been registered or are pending?

A: We can check with the following methods.

(1) Method of submitting Form TM4 to the Registrar with a prescribed commission fee of 360 RM and a copy of the trademark indication

(2) A method in which the applicant or his / her representative conducts a manual inspection at the Kuala Lumpur Trademark Office

(3) Method using Online Search & Filing System of Intellectual Property Corporation of Malaysia (MyIPO) (http://www.myipo.gov.my/en/home/)

Q13. Are there any languages or characters restrictions for trademark registration?

A: There are no restrictions, but if the trademark contains characters in languages other than Malay or English, it is necessary to endorse the exact translation of the language and determine the original language in the application.

Q12. What is the status of accession to major intellectual property related to treaties or institutions?

A: As of July 2019, it is as follows. () Is the year of membership

• Paris Convention for the Protection of Industrial Property (1989)
• Berne Convention for the Protection of Literary and Artistic Works (1990)
• Patent Cooperation Treaty=PCT (2006)
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (2007)
• Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (2007)
• WIPO Copyright Treaty = WCT (2012)
• WIPO Performances and Phonograms Treaty = WPPT (2012)
• Agreement on Trade-Related Aspects of Intellectual Property Rights = TRIPS Agreement or TRIPs Agreement (2015)

A. Malaysia is not a member of the Madrid Agreement adopted in June 1989, which allows a single application to be filed with the Japanese Patent Office and allows applications to other countries. Therefore, you must apply directly to the Malaysian Trademark Registration Office or apply electronically through the Malaysian Intellectual Property Corporation website.

A: Go and submit the application to the trademark registration office or send the application to the registry by postage.
Also, applicant can use e-application. If the applicant use e-application, he/she can get the discount of the fees.

A: The following rights has given to trademark owner.

(1) Right to transfer a trademark
(2) Right to use a trademark exclusively
(3) Right to file the trademark infringement suit against unauthorized use of trademark

A. First, a trademark is defined as the things to use a mark, brand, title, label, ticket, name, signature, word, letter, number, or a combination of these in relation to goods or services.
For this reason, the following six types are able to be registered in Malaysia currently and do not include odors, sounds, monochromatic colors or holograms and so on.
(1) Character trademark
(2) Graphic trademark
(3) Symbolic trademark
(4) Three-dimensional trademark
(5) Combined trademark
(6) Color trademark

A. A mark consisting of at least one of the following elements or including one of the following elements can be registered.

(1) Name of an individual, company or enterprice displayed in a special or unique manner
(2) The registration applicant or the person who takes over the business of the person must have a signature.
(3) coined words
(4) Words that do not directly refer to the nature or quality of goods or services, and that are not geographical names or human surnames according to their normal meanings. (“Pesticide-free tomato” and “Malaysia tomato” and so on as be used for tomato)
(5) Other distinctive marks

Marks corresponding to the following cannot be registered.
(1) Marks that confuse or deceive the public
(2) A defamatory or aggressive mark
(3) Marks that impair national interests or national security
(4) Mark representing the royal emblem
(5) Marks whose names and emblems of international organizations, countries, states and cities are elements of the trade mark unless consent is given
(6) Mark including description of goods or services
(7) Marks claiming intellectual property rights (e.g. “copyright”, “patented”, “patent”)
(8) Mark representing or referring to the king or head of state
(9) Mark representing a government-owned building
(10) The word “ASEAN” and its logo mark
(11) The word “RED CRESCENT” or “GENEVA CROSS” and their logo mark

A: There are the laws related Intellectual property law below in Malaysia.
・Patents Act(1983)
・Industrial Design Act(1996)
・Trade Marks Act (1976)
・Trade Descriptions Act(2011)
・Optical Discs Act(2000)
・Copyright Act(1987)
・Protection of New Plant Varieties Act(2004)
・Geographical Indications Act(2000)
・Layout-Designs of Integrated Circuits Act(2000)
・Communications and Multimedia Act(1998)
・Digital Signature Act(1997)
・Electronic Commerce Act(2006)
・Intellectual Property Corporation of Malaysia Act(2002)
・Malaysian Communications and Multimedia Commission Act(1998)
・Telemedicine Act(1997)