Trademarks in Malaysia are regulated by the Trade Marks Act 1976 and the Trade Marks Regulations 1997. Under this regulation, a person, whether an individual, corporation or a business, who has declared themselves as a proprietor may apply for the registration of a trademark.
Why Register for Trademark in Malaysia?
For any business that offers goods or services for sale to the public, protecting the rights to those goods and services is important. By registering for a trademark in Malaysia, the mark would convey that the goods or services is exclusively the right of the proprietor to whom the mark is registered to.
A proprietor with a trademark in Malaysia would then have the rights to take legal action against any wrongful use of the registered trademark. Legal action could also be taken against any confusingly similar mark in relation to the proprietor’s goods and services.
Without the trademark to protect the goods and services being offered, any business or proprietor would have a much harder time defending their goods and services and prevent it from being misused by any other third party with no legal backing to support them.
What Qualifies to be Registered as a Trademark in Malaysia?
For goods or services to qualify for a trademark, they would first have to fulfil the following criteria:
- The goods or services would have to be sufficiently distinctive if it is to be considered registrable.
- The goods or services much have qualities that clearly distinguish and define them from other goods and services who are not trademarked.
- Trademarks generally have a direct reference to the character or quality of the said goods and services.
- Trademarks must not have geographical names or surnames.
- Trademarks which are confusingly similar to prior trademarks, misleading, contrary to law or morality are not eligible for registration.
How to Apply for a Trademark in Malaysia
All trademarks in Malaysia need to be filed with the Intellectual Property Corporation of Malaysia by the person who claims to be the proprietor of the goods or services intending to be registered.
The proprietor would have to:
- Complete Form TM5 which needs to be signed by either the applicant for the trademark or an approved appointed representative.
- If an agent is appointed to represent the proprietor, Form TM1 would need to be filed.
- Produce a list of goods or services intended for the trademark registration.
Once the documentation has been filed in order, an application number and filing date will be allocated to the proprietor for the registration of the trademark. A Statutory Declaration would also need to be filed by the said application which declares that the applicant is in fact the owner and proprietor of the mark. The Statutory Declaration can either be filed together with the rest of the application documents, or subsequently at a later time. Find out more on Trademark Registration in Malaysia.