What can be the best way for Trademark Protection in Malaysia?
The Intellectual Property Corporation of Malaysia (MyIPO) is an authority under the extension of the Ministry of Domestic Trade, Co-operatives and Consumerism accountable for the development and management of the intellectual property rights (IPR) system in Malaysia. With a concept “To Be One of The Leading Intellectual Property Organisations”, MyIPO allocated to carrying out its mission “To provide effective legal infrastructure and efficient administration to enhance greater creativity and exploitation of intellectual property (IP)”. Trademark protection is governed by the Trade Marks Act 1976 and the Trade Marks Regulations 1997.
The Act protects registered trademarks and service marks in Malaysia. Once registered, no person or enterprise other than its proprietor or approved users may practice them. The infringement action can be admitted against abusers. The duration of protection is ten years, renewable for a period of every ten years consequently. The proprietor of the trademark or service mark has the advantage to deal or assign as well as to license its use.
Procedure To Trademark Protection in Malaysia
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Formal examination for trademark protection in Malaysia
MyIPO examines the application concerning compliances to formality requirements such as proper filling in of the application form (Form TM5) and the payment of a prescribed fee.
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Substantive examination for trademark Protection in Malaysia
MyIPO examines your application to verify whether it complies with all the legal requirements for registration (for instance, whether your marks fall into a category which is excluded from registration on absolute grounds and whether your mark is in conflict with any prior mark on the Trade Marks Register in the relevant or related class(es). MyIPO will thereafter issue either an acceptance letter (Form TM29) or an objection letter (Form TM70).
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Publication and opposition
If the examiner accepts your mark or if the objections are overcome, you will receive an acceptance letter inviting you to pay the prescribed publication fee of RM450. On payment of the fee and the provision of the requisite artwork, your mark will be advertised in Warta Kerajaan (Government Gazette). Following this, there are two months for anyone who wishes to oppose your registration.
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Registration
If there is no opposition within the prescribed period, or if an opposition is overcome, your mark will be entered in the Trade Marks Register and a certificate of registration will be issued to you. The initial registration is valid for 10 years from the date of application.
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Renewal
The mark may be renewed indefinitely by completing a renewal form (Form TM12) and paying the required renewal fee of RM420, but the registration may be canceled entirely for certain goods or services if the trademark has not been used for three years. Where the renewal form was not filed before the expiration of the last registration but was filed within one month from the date of expiration of the last registration, an additional fee of RM630 must be paid accompanied by Form TM 13. In that case, the Registrar will renew the registration without removing the mark from the Register. Once removed, registration must be restored before it can be renewed, subject to a restoration fee of RM670 as well as a penalty fee being paid.
Prosecution procedure for Trademark Protection in Malaysia
All applications are formally examined to ensure that they comply with all appropriate formalities and subsequently are examined based on absolute and relative grounds. The applicant has a time limit of two months to react, and if the application is admitted, it proceeds to publication. The publication opens up 2 months for any interested third party to oppose the application and if no opposition is jumped against the application, it proceeds to registration, and the registration certificate is published. A smooth application to the registration process may take at least 13 months to accomplish.
Expedited Examination Procedure
This option enables the application to be registered within 7 months from the date of application/priority date, considering that the request is filed within one month from the date of filing. A request for consent for speedup examination may be filed within 4 months from the date of application together with a lawful declaration, giving reasons in support of the application.
Justifications considered acceptable by the Registrar of Trade Marks (Registrar) are:
- It is in the national/public interest;
- There are infringement actions taking place or evidence showing potential infringement with regards to the trademark being applied;
- Registration of a trademark is a condition to obtain financial benefits from the Government or institutions acknowledged by the Registrar;
- Any other reasonable grounds which support the request.
Once the Registrar approves the request, the applicant will need to file the request for expedited examination within five working days together with the required fee. If the application does not comply with the Act or formal requirements, the expedited timeline will no longer apply. If the applicant appeals against any condition imposed on the registration or if there is opposition by the third party to its registration, the expedited timeline will not apply as well.
Period of registration
Trademark registration in Malaysia is valid for 10 years and maybe kept considerably, provided that it is renewed every 10 years. The mark is considered abandoned when the proprietor fails to renew the mark within the specified time frame or when the proprietor withdraws the mark.
It is also possible to remove the mark from the Register of Trade Marks if there was no bona fide use of the mark by the proprietor or registered user on goods or services under the registration, for a continuous period of not less than three years from the registration date.
Conclusion
Malaysia’s trademark registration system implements comprehensive protection for trademark proprietors through a suitable and effective trademark registration process. Though Malaysia is not yet a member of the Madrid Protocol, there are plans to join very shortly. This is a move that will no uncertainty improve further the productiveness of Malaysian trademark registration on an international scale while giving more options for local and international applicants seeking trademark registration.
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