Registering A Trademark In Malaysia

• Published date: 02 May 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Azmi & Associates
• Author: Mr Khairul Fazli Abdul Kadir, Azarith Sofia Aziz and Nur Aina Syafiqah Azawawi

What is Trademark

"Trademark" is defined as any sign capable of being represented graphically, which is capable of distinguishing goods or services of one undertaking from those of other undertakings¹.

Such signs include any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof.²

In Malaysia, trademark matters are governed by the Trademarks Act 2019 ("TA 2019"), the Trademarks Regulations 2019 as well as the relevant case law (related to trademark) decided by the courts.

Registering a Trademark

Registration of a trademark is not necessary, but is highly advisable. This is due to the fact that the statutory rights granted under the TA 2019 to the owner of a trademark apply only to registered trademarks. This includes the right to commence trademark infringement action against the alleged trademark infringer. In case of unregistered trademark, its owner may only bring passing off action³ (instead of trademark infringement action) against any person using a mark which is similar or identical to its trade mark. However, the likelihood to succeed in passing off action is more difficult compared to trademark infringement action as it will depend on the owner of unregistered trademark's ability to satisfy the requirements of passing off⁴.

Any person⁵ who claims to be the bona fide⁶ proprietor of a trademark may apply for the registration of its trademark with the Intellectual Property Corporation of Malaysia ("MyIPO") in the relevant classes for registration under the MyIPO's Goods and Services (Pre-Approved) List⁷, depending on the goods and/or services that the trademark is being used/ intended to be used by the trademark owners. In total, there are 45 classes for trademark registration. Classes 1 to 34 covers trademark used for goods, while Classes 35 to 45 deal with trademark used in respect of services.

Registration of a trademark in a particular class only gives that trademark, the exclusive rights and protection in that particular class. As such, it is important for trademark owners to register their trademark in all relevant class(es) so as to ensure that their rights are secure.

Registration Procedure of a Trademark

An application for the registration of a trademark must be filed with the MyIPO using the prescribed form and accompanied with the prescribed fee. The information required to be submitted in...