By Raymond Mah, Cassandra Nicole Thomazios,  Tommy Wong & Fatin Hafiza

Trademark is essentially a form of identity used by a trade and/or that represents a company or product in the course of trading. It is used to distinguish one product from another by way of a recognizable sign, design or expression to identify a product or service. Each Trademark would encompass its own unique characteristics or features. For example, the golden arched letter M is a trademark used by the McDonald’s fast food restaurant chain all around the world. Trademark can consist of words, symbol, logo, letter, signature, numeral or any combination of these. Once registered, it gives the proprietor full and exclusive rights over the trademark.  

How do I register my trademark?

You need to file an application at the Intellectual Property Corporation of Malaysia (MyIPO) by filling up Form TM5.

The form can be found at http://www.myipo.gov.my/en/apply-for-trade-marks/?lang=en. You can also apply online at https://iponline.myipo.gov.my/iponline/. The application fees is RM370.

What other documents are needed when applying for registration?

  • Five (5) copies of the duly executed Form TM5 with the intended trademark to be registered to be affixed with the forms;
  • One (1) original copy of a Statutory Declaration with the intended trademark to be registered attached to it;
  • If the applicant is a company, one copy of Form 49/D/Company details from the company register;
  • One (1) copy of priority date claimed (if applicable); and
  • If the trademark is not in the form of a roman character, a copy of the transliteration and translation of the said trademark.

Is there any type of mark that is prohibited from being registered?

Yes, under the law, these marks are not registrable:

  • if the use of which is likely to deceive or cause confusion to the public or would be contrary to law;
  • if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;
  • 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;
  • 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;
  • if it is well known and registered in Malaysia for goods or services not the same as those in respect of which registration is applied for: Provided that the 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 well known mark, and the interests of the proprietor of the well known mark are likely to be damaged by such use;
  • 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; or
  • 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.

What must be included in my trademark for it to be registrable? 

Section 10 of the Trade Marks Act 1976 (“TMA”) provides that for a mark to be registrable, it must contain 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 of 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; or
  • any other distinctive mark.

Must I be the creator of the trademark for me to apply to register the mark under my name? 

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.

How long does the registration last?

The registration will be valid for ten (10) years. The filing date will be the date of the registration.

Can the registration be renewed? 

The registration is renewable for an extended period of ten (10) years by filling up Form TM12. The prescribed fees is RM420.

Is the registration valid in another country? 

No, trademark protection is territorial in nature. If you registered the mark in Malaysia, your mark is only protected in Malaysia.

Is there anything I need to do before filing my application to register my trademark?

It is best that you conduct a trademark search at myIPO website. If the trademark you are intending to register has already been registered or your mark is similar to another registered trademark, your application might be rejected.

What will I get once my registration is complete and accepted by myIPO?

If your application to register your trademark is granted by myIPO, you will get a Certificate of Registration of Trade Mark. Your trademark will also be entered into the Register of Trade Marks.

Is it possible for my trademark registration to be revoked?

Yes, non-use of a registered trademark for a period of three (3) years or more from the date of registration might be a reason why your registration may be expunged.

Who can apply to have my trademark revoked or expunged for the basis of non-use? 

Under the law, an ‘aggrieved person’ can apply to the High Court, supported with an Affidavit to have your registered trademark to be expunged from the Register. An aggrieved person may be a person who intends to use a trademark which is identical or similar to the mark that you own.

Can other people use my trademark once I’ve registered it? 

No, being a proprietor of a registered trademark means you have the exclusive right over the trademark. This includes the prevention of any unauthorized use of your trademark by any third party. You may however choose to licence the trademark.

How to I enforece my exclusive rights over my trademark against any infringer? 

There are few ways you as an owner may enforce your exclusive right over your registered trademark. They are:

  • By commencing a legal suit at the High Court against the infringer;
  • By applying a Trade Description Order (“TDO”) at the Court, the TDO declares that the usage of your registered trademark by the infringer is a false trade description and with this order, the officers of the Ministry can seize goods affixed with the trademarks and prosecute the infringer;
  • By lodging a complaint at the Ministry of Domestic Trade, Cooperatives and Consumerism (“MDTCC”). Upon receipt of the complaint, a raid and seizure action will be conducted. The Public Prosecutor may prosecute the infringer.

What are the possible defences against trademark infringement? 

The grounds for defence that are provided under the TMA include but are not limited to the following:

  • the use in good faith by a person of his own name or the name of his place of business or the name of the place of business of any of his predecessors in business;
  • the use in good faith by a person of a description of the character or quality of his goods or services, and in the case of goods not being a description that would be likely to be taken as importing any reference to the registered proprietor;
  • the continuous use by a person of a trade mark in relation to goods or services in respect of which he has by himself or his predecessors in business, from a date before:
    • the use of the registered trade mark by the registered proprietor, by his predecessor in business or by a registered user of the trade mark; or
    • the registration of the trade mark, whichever is earlier;
  • use by a person in relation to goods which form part of the bulk of goods connected in the course of trade with the registered proprietor or registered user, where the registered proprietor or registered user has applied the trade mark and has not removed or obliterated it;
  • where use is expressly or impliedly consented to by a registered proprietor or registered user;
  • where use is expressly or impliedly consented to by a registered proprietor or registered user;
  • use in relation to goods or services adapted to form part of, or to be an accessory to, other goods or services in relation to which the trademark has been used without infringement, if the use is reasonably necessary to indicate that the goods or services are so adapted and such use does not have the purpose or effect of indicating otherwise than in accordance with the facts in connection in the course of trade between any person and the goods or services; and
  • use of one of two or more registered trademarks which are substantially identical, in exercise of the right to the use of that trademark given by registration.

May I assign my trademark? 

Yes, trademark, like any other property can be assigned. Assignment means transfer of ownership. Assignment of trademark must be made in writing and signed by all parties. Assignment by oral agreement is not valid.

Must the assignment be registered?

Yes, the assignee of the transfer must apply to the Registrar to register the title of the trademark to his name. Only when this is done, the assignment is deemed to be affected.

Is registration necessary for protection under the law? 

Registration guarantees that you have a sole and exclusive ownership over the trademark. However, you can still take an action against any party who uses your unregistered trademark under the common law tort of passing off. To succeed in an action for passing off, the following must be proved to the court:

  • the Plaintiff has goodwill or reputation attached to the goods or services by association with the trademark;
  • the Defendant has misrepresented to the public which leads or is likely to lead the public to believe that the Defendant’s goods or services are the goods or services of the Plaintiff; and
  • the Plaintiff must prove that he suffers, or in a quia timet action, he is likely to suffer damage by reason of the defendant’s misrepresentation.

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