Bird's Eye View For Trademark Protection In Malaysia

• Law Firm: Azmi & Associates
• Subject Matter: Intellectual Property, Trademark
• Author: Ms Amera Mohd Yusof and Nurul Izzah Huda Romli
• Published date: 27 January 2023

Governing Laws

Trademark Protection in Malaysia is mainly governed under the Trademarks Act 2019 ("TMA") and the Trademark Regulations 2019 ("TMR"). On 27 December 2019, the TMA and TMR came into force, repealing the previous Trade Marks Act 1976 and Trade Mark Regulations 1983. Both of these governing laws are administered by the Intellectual Property Corporation of Malaysia, also known as MyIPO. Being an agency under the purview of the Ministry of Domestic Trade, Co-operatives and Consumerism, MyIPO is responsible for the development and management of the intellectual property system in Malaysia. To further assist the trademark matters in Malaysia, MyIPO has also issued the Manual of Trade Marks Law and Practice in Malaysia, Guidelines of Trademarks 2019 and Practice Directions¹ which shall be read together simultaneously with the TMA and TMR.

Definition of Trademark

According to Section 3 of TMA, "Trademark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one trader from those of another. The concept of a 'sign' here can be divided into two categories, i.e. traditional and non-traditional. For the traditional trademark, it consists of any letter, word, name, signature, numeral, device, brand, heading, label, ticket, or any combination thereof.² Meanwhile, the non-traditional would include the shape of goods or their packaging, color, sound, scent, hologram, positioning and sequence of motion, or any combination thereof.³

1. The following are the examples of traditional trademarks:
   
2. The following are the examples of non-traditional trademarks:
   

In addition to the examples mentioned above, a trademark may also refer to a collective mark or certification mark.⁴ Generally, a collective mark can be understood as a sign distinguishing the goods or services of members of the association which is the proprietor of the collective mark from those of other undertakings.⁵ As an example, the Malaysian Bar Council logo, i.e. '' is used to distinguish the goods and/or services provided by the members of the Malaysian Bar Council with the others'. On the other hand, a certification mark is a sign indicating that the goods or services in connection with which it shall be used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.⁶ The example for certification mark would be the JAKIM...