Registration and use

Ownership of marks

Who may apply for registration?

Parties that use or intend to use a mark may apply for registration under Section 25(1) of the Trademarks Act 1976.

Scope of trademark

What may and may not be protected and registered as a trademark?

The Trademarks Act 1976 

Section 3 of the Trademarks Act 1976 defines as registrable:

  • brands;
  • headings;
  • labels;
  • tickets;
  • names;
  • signatures;
  • words;
  • letters;
  • numbers; 
  • devices; or
  • any combination of the above.      

This can include:

  • word marks;
  • slogans;
  • signs;
  • symbols;
  • numbers; and
  • packaging trade dress.

Trademarks can be registrable if they contain or consist of at least one of the following:

  • the name of a person or entity represented in a special or particular manner;
  • the applicant’s signature;
  • invented words;
  • a word with no direct reference to the character or quality of goods or services which is not a geographical name or surname according to its general meaning; or
  • a distinctive mark (Section 10(1) of the Trademarks Act 1976).

A mark or part of a mark cannot be registered if:

  • its use is likely to deceive or confuse the public or would be contrary to the law;
  • it is offensive or would be unentitled to protection by any court of law;
  • it is prejudicial to the national interests or security;
  • it is identical to or nearly resembles a mark which is well known in Malaysia for the same type of goods or services of another proprietor;
  • it is well known and registered in Malaysia for other goods or services and its use would indicate a connection with the proprietor of the well-known mark and the interests of the proprietor are likely to be damaged by such use;
  • it contains a geographical indication of goods not originating in the territory indicated;
  • it is a mark for wines which contains a geographical indication identifying said wines;
  • it includes the words ‘patent’, ‘patented’, ‘by royal letters patent’, ‘registered’, ‘registered design’ or ‘copyright’ or such words in any language;
  • it is identical to a trademark belonging to a different rights holder for the same or closely related goods or services; or
  • it closely resembles another trademark and is likely to deceive or cause confusion (Sections 14, 15 and 19 of the Trademarks Act 1976).

Certification marks are registrable in Malaysia if:

  • the goods or services achieve certain standards regarding their origin, material used, quality, accuracy and other characteristics; and
  • the mark is inherently capable of distinguishing between goods or services (Section 56(2) of the Trademarks Act 1976).

The Trademarks Act 2019

Non-traditional marks will be registrable under the Trademarks Act 2019, which is likely to come into force by the last quarter of 2019 or early 2020.

Section 3 of Trademarks Act 2019 defines a ‘trademark’ as any sign capable of being represented graphically which can distinguish between the goods or services of different undertakings.

Under Section 2 of the act a ‘sign’ can include:

  • letters;
  • words;
  • names;
  • signatures;
  • numbers;
  • devices;
  • brands;
  • headings;
  • labels;
  • tickets;
  • the shape of goods or their packaging;
  • colours;
  • sounds;
  • scents;
  • holograms;
  • positionings;
  • motion sequences; or
  • any combination of the above.

Under the Trademarks Act 2019, the following signs cannot be registered:

  • signs which cannot be represented graphically and thus cannot distinguish between different goods or services;
  • trademarks which are not distinctive;
  • trademarks which consist exclusively of signs or indications of the type, quality, quantity, intended purpose, value, time of production, geographical origin or other characteristics of goods or services;
  • signs which consist exclusively of signs or indications that have become customary in the national language or in the bona fide and established practices of the market in question;
  • signs which consist exclusively of a shape which:
    • results from the nature of the goods or which is necessary to obtain a technical result; or
    • gives substantial value to the goods;
  • signs which consist exclusively of a country’s name or recognised geographical indications;
  • trademarks that are likely to deceive or cause confusion to the public or that are contrary to any written law;
  • signs which could deceive or mislead the public as to the nature, quality or geographical origin of the goods or services on offer;
  • signs which are contrary to the public interest or morality;
  • signs which are scandalous, offensive or which would be unentitled to protection in any court of law;
  • signs which are or might be prejudicial to the national interest or security;
  • the name or representation of another person (either living or dead) without their consent or that of the deceased’s representative;
  • signs that contain:
    • the flag of a country;
    • national emblems;
    • insignia; or
    • royal arms;
  • a word which is commonly used for a chemical element or single chemical compound, or which the World Health Organisation has declared an international non-proprietary name; or
  • signs featuring the words 'patent', 'patented', 'by royal letters patent', 'registered', 'registered design' or 'copyright' or such words in any language (Section 23 of the Trademark Act 2019).

The registrar will refuse to register a trademark if:

  • it is identical with an earlier trademark and for identical goods or services;
  • there is a likelihood of confusion with:
    • an identical earlier trademark for similar goods or services;  
    • similar earlier trademarks for identical or similar goods or services;
    • identical or similar well-known trademarks (not registered in Malaysia) for identical goods or services;
    • identical or similar well-known trademarks (registered in Malaysia) that indicate a connection with a well-known registered proprietor and create a likelihood of confusion that is likely to damage the well-known registered proprietor’s interests; or
  • its use is prevented by rule of law protecting unregistered trademarks (including law for passing off, copyright and industrial designs) (Section 24 of the Trademarks Act 2019).

Collective marks and certification marks are registrable under the Trademarks Act 2019.

Unregistered trademarks

Can trademark rights be established without registration?

Yes. In Malaysia the first user of a trademark is the common law proprietor of said mark (Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia; Pendaftar Cap Dagangan Malaysia (Interested Party) [2015] 9 CLJ 125, FC). 

The owner of an unregistered trademark may initiate a tort of passing off action against infringers.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Well-known trademarks are accorded protection in Malaysia. The following factors are considered when determining whether a mark is well known.

The criteria of well-known marks includes:

  • the degree of knowledge or recognition of the mark among the relevant sector of the public;
  • the duration, extent and geographical area of the mark’s use, promotion or application;
  • the mark’s enforcement record and recognition of its status by the competent authorities; and
  • the mark’s associated value (Regulation 13B of the Trademarks Regulations 2011).

These factors are neither mandatory nor exhaustive (X1R Global Holdings Sdn Bhd & Anor v Y-Teq Auto Parts (M), Sdn Bhd [2016] 6 MLRH 41; [2017] 3 CLJ 454 (CA)).

As noted in the ‘Scope of trademark’, the proprietor of a well-known mark may oppose a mark’s registration. Further, the rights holder can initiate an infringement action based on tort of passing off to prohibit the use of an infringing mark and claim for damages.

Under Section 4 of the Trademarks Act 2019, a ‘well-known trademark’ is defined as any trademark that:

  • is well-known in Malaysia; and          
  • belongs to a national of or a person domiciled in a Paris Convention signatory state or who has a real and effective industrial or commercial establishment in a Paris Convention signatory state (whether or not that person carries out business or has goodwill in Malaysia).

This definition also expressly provides that a well-known trademark is entitled to protection irrespective of registrations or applications in Malaysia or whether the rights holder carries out business or has goodwill in Malaysia.

The benefits of registration

What are the benefits of registration?

The registered owner of a trademark has the exclusive right to use the mark for the relevant goods and services and to exploit its trademark through licensing or assignment (Sections 35, 48 and 55 of the Trademarks Act 1976).

Trademark registration is prima facie evidence of the validity of registration in any proceeding and will be deemed proof of the mark’s validity for seven years (Section 36 and 37 of the Trademarks Act 1976).

Under Section 53 of the Trademarks Act 2019, a registered mark is deemed evidence of its validity for five years.

The registered proprietor may initiate a trademark infringement action under Section 38 of the Trademarks Act 1976 (and Section 56(1) of the Trademarks Act 2019).

Remedies for trademark infringement include interim or permanent injunctions, the consignment or deletion of the offending mark, damages and a share of the infringer’s profits.

The following remedies will be available under the Trademarks Act 2019:

  • an injunction to prevent infringing goods from entering the market;
  • damages;
  • a share of the infringer’s profits;
  • additional damages (for infringements involving the use of counterfeit trademarks);
  • an order to delete the offending mark;
  • consignment of the infringing goods; and
  • an order for disposal (Sections 56, 58, 59 and 60 of Trademarks Act 2019).

Border measures are available under the Trademarks Act 1976 (Part XIVA) and the Trademarks Act 2019 (Part XIII). Any party can file an application with the registrar to object to the import of unauthorised goods. The registrar’s approval will be valid for 60 days. In the event of the seizure of unauthorised goods, the applicant must initiate an infringement action.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

Form TM5 (application form) and statutory declaration are required to file trademark applications.

A mark’s representation must be clear and durable and if it exceeds the space provided in Form TM5, it must be mounted on durable material not exceeding 10cm by 10cm and attached to the form.

Electronic filing is available and trademark searches (online or manual searches) are also offered. Trademark searches prior to application are not mandatory. However, it is common practice.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The usual timeframe from filing a mark application to the issue of a certificate of registration is  approximately 12 to 18 months. An expedited examination process is available, under which the general time from filing to the issue of the certificate of registration is approximately eight months.

The typical official filing fees for trademark registration are as follows:

Normal route

(per mark per class)

Expedited examination process

(per mark per class)

Manual filing

Electronic filing

Manual filing

Electronic filing

RM1,065

 

RM970

RM2,515

RM2,230

  • There is an additional RM50 charge for the third and subsequent series of a mark.
  • Attorney or agent fees may vary.
  • The estimated time and costs may increase if an objection is filed by the Intellectual Property Corporation of Malaysia (IPCM) or a third party.

Following a successful registration, a mark takes effect from the date of application (Section 30 of the Trademarks Act 1976).

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Malaysia follows:

  • the International Classification of Goods and Services (Nice Classification); and
  • the Madrid Protocol.

Multi-class applications will be available when the Trademarks Act 2019 comes into force.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The IPCM conducts a formality check and a substantive search and examination of all mark applications. (The factors that the registrar will consider are set out in ‘Scope of trademark’.)

In general, letters of consent from the proprietor of the cited mark may be taken into account to overcome any objections. However, consent may not always be the sole and conclusive determining factor.

Applicants can appeal rejected applications or conditions imposed by the IPCM via written submission. If the IPCM maintains its objection, the applicants can appeal and request an ex parte hearing.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The use of a mark need not be claimed before registration. Proof of use can be filed to establish factual distinctiveness in the event of an objection on the ground of the mark’s non-distinctiveness.

Applicants may claim the right of priority under the Paris Convention provided that the Malaysian application is filed within six months from the date of the convention application.

There is no requirement in Malaysia to file a declaration of use or non-use. However, if an applicant does not use a mark continuously for three years from the date of notification of registration, the mark may be revoked for non-use (Section 46 of the Trademarks Act 1976 and Section 46 of the Trademarks Act 2019 when it comes into force).

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The ® symbol can be used to denote a registered mark and the ™ symbol to show that the rights in a trademark are claimed by its owner. It is not mandatory for these symbols to be used with the mark. However, it is an offence to use the ® symbol on unregistered marks.

Appealing a denied application

Is there an appeal process if the application is denied?

See ‘Examination procedure’. In the event that the IPCM maintains its objection after an ex parte hearing, the applicants may file an appeal with the High Court. All parties have the right of appeal with the Court of Appeal and the Federal Court against High Court decisions.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Following IPCM approval, successful trademark applications are published in the Government Gazette.

Third parties may oppose registrations within two months from their date of publication in the Government Gazette under Regulation 37 of the Trademarks Regulations 1997.

In addition to the grounds highlighted in ‘Scope of trademark’, the following constitute a general basis for opposition grounds: 

  • the applicant is not the lawful owner of the opposed mark;
  • use of the opposed mark is unlawful (eg, due to copyright infringement and other laws); and
  • the opposed mark does not meet the registration criteria.

The official filing fees for oppositions are:

  • RM650 for manual filing; and
  • RM600 for electronic filing

Attorney fees vary.

Assuming that a mark was not opposed during the opposition period and has been registered, third parties can still file a court revocation action (Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Ltd [2012] 6 CLJ 337, FC at para 22; Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor, Registrar of Trade Marks (Intervener) [2015] 4 CLJ 20, FC at para 25 and 27; and Hakubaku Co Ltd v Asiamega Food Manufacturers Sdn Bhd [2018] 1 LNS 2077, at para 13).

Further, aggrieved parties can file court applications to revoke registered marks:

  • on the ground that the registration was made without sufficient cause (Section 45 of the Trademarks Act 1976 and Section 47 of Trademarks Act 2019). (See also ‘Scope of trademark’.)
  • on the ground of non-use (Section 46 of the Trademarks Act 1976 and Section 46 of Trademarks Act 2019).

The aggrieved party must show that:

  • the trademark was registered:
    • without the good-faith aim to use it; and
    • with no subsequent good-faith use up to one month before the date of application for removal; or
  • there was no good-faith use of the mark for the relevant goods or services for a continuous period of at least three years up to one month before the application for removal.

An ‘aggrieved party’ must be a party that has:

  • used or has a genuine and present intent to use a trademark in the course of trade which is identical or similar to the registered mark and is not a mere ‘busybody’ (McLaren International Ltd v Lim Yat Meen [2009] 5 MLJ 741); or
  • a legal interest, right or legitimate expectation in their own mark, which is substantially affected by the presence of the registered mark (Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 6 MLJ 465).
Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The registration of a mark is valid for 10 years from the date of application and is renewable. Renewal should be made prior to the expiry of registration. Late renewal is possible on the payment of a penalty. However, a mark is not renewable beyond the one-year grace period after its expiry (Section 41(3) of the Trademarks Act 1976).

The late renewal grace period under the Trademarks Act 2019 is six months (Section 39(6) of the Trademarks Act 2019). (See ‘Use of a trademark and registration’ and ‘Third-party opposition’.)

Surrender

What is the procedure for surrendering a trademark registration?

In addition to allowing a registered trademark to lapse after its expiry, rights holders may request the registrar to remove a mark from the register (Section 43(1) of the Trademarks Act 1976 and Section 44 of the Trademarks Act 2019).

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

A trademark may be protected under copyright law, provided that it falls into one of the categories eligible for copyright protection (eg, artistic works). Logos are a form of graphic work, which are considered an artistic work under the Copyright Act 1987.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

In addition to the Trademarks Act 1976 (and the Trademarks Act 2019 when it comes into force), the protection of domain names and trademarks online is governed by the Domain Name Dispute Resolution Policies set out by the Internet Corporation for Assigned Names and Numbers or the Malaysia Network Information Centre.

Law stated date

Correct on

Give the date on which the information above is accurate.

21 August 2019.