What is trademark in Malaysia Law?. Malaysia is one of the countries with very good economic records in Asia, with an average GDP growth of 6.5% for nearly 50 years. What drives Malaysia’s economy are its natural resources, science, trade and tourism. The country also pays a lot of attention to intellectual property. Hereinafter, we would like to advise you on the basic of trademark registration in this country
What is a trade mark in Malaysia ?
A trade mark is a sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises.
In Malaysia, any distinctive words, letters, numerals, devices, brands, headings, tickets, names, signatures, labels or combinations used to distinguish goods or services may be considered a trade mark (See Sections 3(1) and 10(1) of Trade Marks Act 1976). Marks in other than languages are also registrable, provided that a certified translation and transliteration are provided.
- Slogans could be considered as trade marks if they are inherently distinctive or have acquired distinctive characters through use. Slogans consisting of laudatory phrases or merely advertising phrases giving purely promotional information are not registrable.
- Single colour marks are registrable in Malaysia if they can be represented graphically using an internationally recognized colour identification code and the marks have become capable of distinguishing the goods or services of one undertaking from another through very extensive use. However, there is so far no single colour mark being allowed registration in Malaysia.
- Three-dimensional marks, audio marks and smell marks are not registrable as trade marks in Malaysia. Trade Marks Act 1976 is currently being reviewed. It is expected that three-dimensional marks will be registrable under the new revised Trade Mark Act 1976.
Who is authorized to apply for trade mark registration?
In general, any person who intends to use a trade mark or to have it used by third parties can apply for registration. It can be either an individual or a legal entity.
Where to register the trademark in Malaysia?
You can register your trademark in Malaysia at: The official postal of intellectual property corporation of Malaysia (My IPO)
When MYIPO receives your application it allocates an application number to your application. The following further steps would be taken by MYIPO to register a trade mark:
- Formal examination
- Substantive examination
- Publication and opposition
What advantages does registration provide to your company?
- Registration, under the Trade Marks Act 1976, gives you the exclusive right to prevent others from marketing identical or similar products under the same or a confusingly similar product anywhere in the country. In contrast, a passing-off action is limited to the territory where the trade mark is actually being used.
- It makes trade marks easier to enforce, as it reduces the burden of proof in legal proceedings: (a) the trade mark is presumed to be distinctive; and (2) the owner of a registration is presumed to be the owner of the mark for the goods and services specified in the registration. In contrast, in a passing-off action, the owner of the mark needs to show that the trade mark is distinctive, which is not always easy to prove.
- A registered trade mark may be more easily licensed to other companies, thus providing an additional source of revenue for your company, or may be more easily the basis for a franchising agreement.
- On occasion, a registered trade mark with a good reputation among consumers may also be used to obtain funding from financing institutions that are increasingly aware of the importance of brands for business success.