How can you protect your IP rights?

Protect your trademarks in Malaysia

There is only one route of protection of marks in Malaysia—the national route. The international route or protection via the Madrid Protocol is not yet available in Malaysia, but accession to the Protocol is expected in 2017. The national route is excellent if you want to protect your mark in Malaysia, and even if Malaysia is not yet a member of Madrid Protocol, a national mark will be needed if you are thinking of protecting your mark abroad eventually.

The Intellectual Property Corporation of Malaysia (MYIPO) is the national agency in charge of registering trademarks.

The contact details of the office are as follows:

Intellectual Property Corporation of Malaysia
Tower B, Menara UOA Bangsar
No. 5 Jalan Bangsar Utama 1
59000 Kuala Lumpur
Malaysia
Tel: +603-2299 8400; +603-2299 8989
Email: ipmalaysia@myipo.gov.my
Website: http://www.myipo.gov.my

A mark is defined as a sign that distinguishes the goods and services of one trader from those of another. A mark may include words, logos, pictures, names, letters, numbers or a combination of these.

Certification marks may also be registered in Malaysia.

  • The application must be filed using the prescribed application form.
  • The filing languages are English and Malay.
  • The Office accepts paper and online applications.
  • MYIPO accepts single class applications. The Office accepts the Nice classification, the ASEAN List of Goods, and the Common-EU Madrid List of Goods and Services. The terms accepted by MYIPO may be accessed at www.asean-tmclass.org.

Any person, whether Malaysian citizen or not, who owns a mark already in use or proposed to be used, may file may an application for the registration of a mark in Malaysia.

If the applicant does not reside or carry on business in Malaysia, the application must be filed by a resident agent who will provide an address for service in Malaysia

The following are the minimum requirements for a filing date:

  • Name and address of the applicant (or local address for service of agent);
  • List of goods or services (one class per application);
  • Representation of the mark;
  • Declaration of good faith and signature;
  • Filing fee.

The registrar shall determine whether the mark meets the formality requirements before conducting the substantive examination of the mark.

If the representation does not meet the requirements, the applicant may be required to submit further representations of the mark. Where the application is for a series of marks, all the marks must likewise be represented.

Where a trademark contains a word/s not in English or Malay, such word/s shall be required to be translated or transliterated.

For a mark to be registrable, it shall contain or consist of at least one of the following:

  • the name of an individual, company, or firm represented in a special or particular manner;
  • the signature of the applicant for registration or some predecessor in his business;
  • an invented word or words;
  • a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname;
  • any other distinctive mark.

A name, signature, or word, which is not included in the preceding enumeration, but is shown to be distinctive, i.e., capable of distinguishing goods or services may also be registered.

The Registrar shall refuse to accept any application for the registration of a mark upon which any of the following appears:

  • the words "To counterfeit this is a forgery", "Registered Trade Mark", "Registered Service Mark", or any words to the like effect in any language;
  • the words "Bunga Raya" and the representations of the hibiscus or any colourable imitation thereof;
  • representations of or words referring to Seri Paduka Baginda Yang di-Pertuan Agong, Ruler of a State or any colourable imitation thereof;
  • the representations of any of the royal palaces or of any building owned by the Federal Government or State Government or any other government or any colourable imitation thereof;
  • the word "ASEAN" and the representation of the ASEAN logotype or any colourable imitation thereof;
  • the words "Red Crescent" or "Geneva Cross" and representations of the Red Crescent, the Geneva Cross and other crosses in red, or of the Swiss Federal Cross in white or silver on a red ground, or such representations in a similar colour or colours.

Where the representation of a crescent or a cross in any colour is not one of those mentioned above, the Registrar may require the applicant, as a condition for acceptance of the application, to undertake not to use the crescent or cross device in red or in white or silver on a red ground, or in any similar colour or colours.

The Registrar shall not register a mark or part of a mark where:

  • the mark or part of the mark is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of Malaysia to be well-known in Malaysia, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services;
  • the mark or part of the mark is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known, which is registered in Malaysia with respect to goods or services whether or not similar to those with respect to which registration is applied for, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the proprietor of the registered mark, provided further, that the interests of the proprietor of the registered mark are likely to be damaged by such use;
  • the mark or part of the mark is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
  • the mark or part of the mark is likely to mislead the public if it is a mark for wines which contains or consists of a geographical indication identifying wines, or is a mark for spirits which contains or consists of a geographical indication identifying spirits, not originating in the place indicated by the geographical indication in question.
Once the substantive examination of the mark has been completed, the mark shall be advertised in the Gazette. Within two months from the date of the advertisement, any person may file an opposition to the registration of the mark. If no opposition is filed within the period, the mark shall be registered and the certification issued by the registrar.
The registration is valid for 10 years counted from the filing of the application. The trade mark owner may renew the registration of the mark for consecutive periods of ten years, subject to the payment of the renewal fee.

There is only one route protection of industrial designs in Malaysia—the national route. The international route via the Hague Agreement is still not available in Malaysia.

The Intellectual Property Corporation of Malaysia (MYIPO) is the national agency in charge of registering trademarks.

The contact details of the office are as follows:

Intellectual Property Corporation of Malaysia
Tower B, Menara UOA Bangsar
No. 5 Jalan Bangsar Utama 1
59000 Kuala Lumpur
Malaysia
Tel: +603-2299 8400; +603-2299 8989
Email: ipmalaysia@myipo.gov.my
Website: http://www.myipo.gov.my

The application to register a design can only be filed by the owner, although the agent can file an application on behalf of an owner.

If the applicant does not have domicile in Malaysia or has principal place of business is outside Malaysia, the applicant shall appoint an agent registered in the Register of Industrial Designs Agent.

  • The application must be filed using the prescribed application form.
  • The filing languages are English and Malay.
  • The Office accepts paper and online applications.

The application to register an industrial design shall be accompanied one copy of representation of the article to which the design is applied (drawings or photograph).

One application can be made for two or more industrial designs, provided they relate to the same class of the Locarno Classification or to the same set or composition of articles.

The application shall contain a statement of novelty in respect of the industrial designs subject of the application, except if the application is for the registration of wallpaper, lace, or textile articles

The application for the registration of an industrial design shall be accorded provided the following requirements are met:

  • identity of the applicant/s;
  • the representations of the article to which the industrial design is applied; and
  • the prescribed filing fee is paid.
An application may, pursuant to any international treaty or convention to which Malaysia is party, contain a declaration claiming the priority of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any state party to the said treaty or convention. The priority date shall be the earliest date on which such earlier national, regional or international applications were filed, provided that the application was filed within six months from such earliest date.

To be registrable, an industrial design must be new as of the date of filing of the application. A design is considered new only if it has not been disclosed or made available to the public in any way in Malaysia or elsewhere before the filing of the application.

An industrial design shall not be considered as having been disclosed to the public if within the period of six months before the filing of an application for registration, the design

  • appeared in an official or officially recognized exhibition; or
  • was disclosed by a person other than the applicant or his predecessor in title as a result of an unlawful act committed by that other person or another person.

The following cannot be registered:

  • the aesthetic appearance of an article is not significant or the design features differ only in immaterial details;
  • it is a method or principle of construction;
  • the designs are contrary to public order or morality;
  • the designs of the articles concern exclusively with how an article functions; and
  • the designs of articles that are integral parts of other articles and whose features are dependent upon the appearance of other article.

Where a portrait of Seri Paduka Baginda Yang di-Pertuan Agong or Ruler of a State, or the reproduction of the armorial bearings, insignia, orders of chivalry, decorations of flags of any country, state, city, town, society, body corporate, institution or person appears on an industrial design, the Registrar shall consider whether to refuse to accept an application for the registration of the industrial design unless a consent to the registration and use of such portrait or reproduction from such official or other person as appears to the Registrar to be entitled to give consent is filed.

Where an application for the registration of an industrial design has been accorded a filing date and the application is not withdrawn, the application shall be examined to determine whether it complies with the formal requirements.

If the application does not meet the formal requirements, the Registrar shall give the applicant the opportunity to respond and to amend the application within a specified period.

If the applicant fails to meet the requirements or to amend the application within the prescribed period, the Registrar may refuse to register the industrial design.

Where the application for the registration of an industrial design meets all the requirements, the design shall be registered and the certificate of registration issued. The registration of the design shall then be published in the Official Journal.

Any person may, at any time after the registration of the industrial design, file apply for any of the following:

  • the revocation of the registration of the industrial design on the ground that the design was disclosed before the date of filing the application;
  • the cancellation of the registration of the industrial design on the ground that the registration of the industrial design has been procured by unlawful means; or
  • the grant of a compulsory license in respect of the industrial design on the ground that the industrial design is not applied in Malaysia by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case.
A registered industrial design is given an initial protection period of 5 years from the date of filing and is extendable for further four consecutive terms of 5 years each. The maximum protection period is 25 years.
Last modified: Tuesday, 29 November 2016, 1:38 PM