PATENTS
New invention
The following information are provided for your general use:
Trade Mark Registration - Procedure
Trade Mark Registration - Duration
Application Stage - Filing Requirements
Renewal Stage - Filing Requirements
Recordal of Change of Name - Filing Requirements
Recordal of Change of Address - Filing Requirements
Recordal of Assignment - Filing Requirements
Objection
Opposition
* You are advised to seek further professional advice before making any decision *
FLOWCHART from the MyIPO
[STAGE 1] PRE-FILING SEARCH
Optional but strongly recommended
You may not want to discover that your mark cannot be registered, after spending a lot of money on brand promotion
[STAGE 2] APPLICATION STAGE
* Can use the ™ symbol from now on *
Filing with the MyIPO and secure a Filing Date and an Application Number
[STAGE 3] SEARCH & EXAMINATION BY THE MYIPO
Compare with prior mark(s) and check on Registrability
RESULT 1: OBJECTION
Decide whether to counter or to give up. If the MyIPO maintains on the objection, can appeal to the High Court of Malaya
RESULT 2: ACCEPTED FOR REGISTRATION
Within two months from the date of advertisement, any parties can oppose to the application
[STAGE 4] RENEWAL STAGE
* Can use the ® symbol from now on *
Upon registration, a trade mark will be retrospectively protected for a period of 10 years calculated from the Filing Date and renewable every 10 years thereafter
Power to caution and to place others on notice.
CLIENT CHARTER from the MyIPO
FROM FILING TO REGISTRATION
For a straightforward case, it will take between 2 to 5 years:
a) First 1 to 2 years for first result (accepted for registration)
b) Another 1 to 3 years from filing artwork to getting Certificate of Registration
There are provisions for expedited examination. Reason(s) in Statutory Declaration form must be provided with prescribed fee.
An Applicant may request the Registrar to undertake an expedited examination within 4 months from the Filing Date. A Statutory Declaration stating the reasons and prescribed fee. The Registrar may accept the following reasons:
a) it is in the national or public interest;
b) there are infringement proceedings taking place or evidence showing potential infringement in respect of the trade mark applied for;
c) registration of the trade mark is a condition to obtain monetary benefits from the Government or institutions recognized by the Registrar; or
d) there are other reasonable grounds which support the request.
However, it is entirely at the discretion of the MyIPo whether to expedite the matter.
1) Full name and address of the Applicant
2) Specimen of the mark (maximum size: 7cm x 7cm)
a) for Black-and-White mark: one specimen in JPEG format
b) for Colour mark: 10 original specimens (this is to avoid any discrepancy of the colour desired from
our printing)
3) Date of first use of the mark in Malaysia
It is OK if the mark is not yet in use
4) Specify the goods / services
Malaysian trade mark registrations are on a single class basis (One Mark in One Class)
Assistance needed?
a) You may use the Trade Mark Classification Search page from the UK IP Office
b) Please click here to download (Trade Mark) Nice Classification from the WIPO
5) If Priority Claim is intended
Please provide:
a) country
b) application number
c) filing date
Certified priority document with certified English translation is required (to be filed within 12 months
from the Filing Date)
6) Please download the following relevant Statutory Declaration to be signed by a representative of the Applicant:
[If the Applicant is a Malaysian]
For Individual / Sole Proprietor
For Partnership
For Company
[If the Applicant is a non-Malaysian]
For Individual / Sole Proprietor
For Partnership
For Company
* to be legalized by a Commissioner for Oaths (Malaysian signatory) / Notary Public (Foreigner signatory)
* original form is needed for filing
* one copy of the form is sufficient for the same mark in several classes
* for Partnership, all partners have to sign the form
Three conditions:
a) the trade mark is not used / registered by others
You may conduct a search to find this out
b) the trade mark is not prohibited by the Trade Marks Act
c) the trade mark is acceptable by the Trade Marks Act
(Refer Objection for more details)
Trade Marks are often associated with businesses / brands. Successful brands easily catch the attention of potential customers. Established brands therefore have goodwill worthy of protection.
It is easier to prevent another trader from using a registered Trade Mark than an unregistered one. Many traders forgot to register their brand (Trade Mark). In that situation, they have to rely on the Common Law to protect their unregistered rights through court actions.
Also, a registered Trade Mark proprietor can allow others to use the registered Trade Mark for a fee or royalty.
1) Full Name and Address of the Proprietor
2) Registration Number
3) No document is needed for trade mark renewal
1) The date of actual change in name
2) Documentary proof of the change in name (e.g. extract from the Commercial Register)
1) The date of actual change in address
2) No document is needed for recordal of change of address
1) Deed of Assignment (DOA) signed by the Assignor and the Assignee (witnessed by a third party, no legalization is required), must have the following particulars:
a) Full name and address of the Assignor and the Assignee
b) Trade Mark Number and its Class Number
c) Assignment is with goodwill of the business (*or without goodwill of the business)
d) Consideration of the Assignment (a token sum of $1.00 is suffice)
2) For assignment without goodwill of the business
In addition to a DOA, a copy of an advertisement in the local (Malaysia) newspaper to that effect
Registrable Trade Marks (Section 10 of the Trade Marks Act 1976)
a) the name of an individual, company or firm represented in a special or unique manner
b) the signature of the Applicant or of some predecessor in his business
c) invented word(s)
d) word (geographical name or surname of which its ordinary meaning) has no direct reference to the character or quality of the goods / services
e) distinctive mark (capable of distinguishing)
Prohibition on Registration (Section 14 of the Trade Marks Act 1976)
a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law
b) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law
c) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation
d) if it is identical with or so nearly resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor
e) if it is well-known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for
f) if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods
g) if it is a mark for wines/spirits which contains or consists of a geographical indication identifying wines/spirits
Identical Trade Marks (Section 19 of the Trade Marks Act 1976)
a) that is identical with a trade mark of a different proprietor applied/registered for the same goods or description of goods or in respect of services that are closely related to those goods
b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion
1) Copy of the Certificate(s) of Registration outside Malaysia. When the objection is based on Identical Trade Marks, please indicate in which country both the marks are co-registered
2) Copies of (randomly selected) sales receipts, invoices, catalogues, product brochures, pamphlets, advertisement and other such items showing:
a) Sales for the past 2 years in Malaysia and/or Worldwide
b) Expenses in promoting mark/goods in Malaysia and/or Worldwide
c) Distribution list, store list in Malaysia and/or Worldwide
1) Filing a Notice of Opposition by the Opponent within 2 months from the date of advertisement
2) Filing a Counter-Statement by the Applicant
3) Filing Evidence in Support of Opposition by the Opponent
4) Filing Evidence in Support of Application by the Applicant
5) Filing Evidence in Reply by the Opponent [THIS STEP IS OPTIONAL]
6) Upon completion of the 5 steps, the Registrar shall give notice to the parties that they may send to him a Written Submission [THIS STEP IS OPTIONAL]
Each step is given a period of 2-month to respond. If any party does not respond within the deadline given, it is deemed to have abandoned the case. In each step, either party may apply for extension of time by paying a prescribed fee.
