A registrable trademark is one that can include a distinctive logo or symbol, image, name, signature, word, letter, numeral or any combination thereof.
Non-Traditional Marks (NTMs) such as smells, sounds, colours, shapes, moving images, tastes and textures are now also registrable in Malaysia. Get in touch with us if you’d like to find out whether your marks are registrable in Malaysia.
No, unlike copyright and industrial design law which confers first ownership to the creator of the intellectual property, trademark law confers ownership based on a first-use basis.
In Malaysia, trademark protection can be obtained through registration or through use. In some countries, you can only establish rights in trademarks when you actually register them.
Registration is not compulsory in Malaysia to establish rights in a mark, nor is it required to begin use of a mark. An unregistered mark may still be protected under the common law action known as “passing-off”. However, it is highly advisable to register your trademark, as registration provides distinct advantages beyond the rights acquired by merely using a mark.
A trademark search allows you to check and determine whether the mark you intend to register is available for registration in Malaysia under the relevant class of goods/services. This helps ensure that there are no other possible conflicting marks in the class.
With a search, you will be able to change your brand if there is a similar brand already on the register or pending registration in Malaysia.
The registration will be valid for ten (10) years from the date of filing of the trademark.
Yes. The trademark registration is renewable for an extended period of ten (10) years by submitting the prescribed form and payment for renewal.
No, trademark protection is territorial in nature. If you registered your mark in Malaysia, your mark is only protected in Malaysia.
No, being a registered proprietor of a trademark means you have the exclusive right over your trademark. This would prevent any unauthorized use of your trademark by any third party. You may however choose to licence the trademark.
Nonetheless, you may seek professional advice if you believe that someone is infringing your trademark. An intellectual property expert would be the right person to give you information on the existing options in Malaysia and, presumably, also in neighboring countries to initiate action against counterfeiting and infringement and will provide you with advice on how to enforce your rights.
1. Application Form (TMA 2).
2. One clear print for a black-and-white mark; 15 prints for a colour mark.
3. A list of goods or services (which closely follow the Nice International Classification 11th Edition).
4. The full name and address of the applicant, company, country/state of incorporation.
5. For marks that contain non-English words, a certified transliteration and translation.
6. If convention priority is claimed, a certified copy of the priority application (with a certified English translation where documents are not in English).
