1. Basic Knowledge of Trademarks in Malaysia

A trademark in Malaysia is a unique sign used to distinguish the source of goods or services. It can include traditional elements such as names, words, phrases, logos, symbols and designs, as well as non-traditional types like colors, scents and sounds. When in use, registered trademarks can be marked with "®", while unregistered ones are marked with "™".

Trademarks provide exclusive rights of use to the right holders, who can authorize others to use the trademarks and collect fees. Meanwhile, they can effectively prevent unfair competitors such as counterfeiters from using similar signs. Among them, registered trademarks are protected by law, and right holders can file lawsuits against infringement acts; unregistered trademarks are protected in accordance with the provisions related to "passing off" in Malaysia's common law.

The official authority in charge of trademark affairs in Malaysia is the Intellectual Property Corporation of Malaysia (MyIPO). Malaysia follows the Nice Classification (11th edition), which categorizes goods into Classes 1-34 and services into Classes 35-45. It supports multi-class applications and is a member of both the Paris Convention and the Madrid System.

2. A Key Step Before Trademark Application: Search

Conducting a comprehensive search before submitting a trademark application is crucial. It helps confirm the registrability of the trademark and avoid objections or rejections in the later stage.

2.1 Types of Searches

• Trademark search: It can be conducted for word marks, device marks, numeral marks and labels, in accordance with the Nice Classification and the Vienna Code Classification (applicable to device marks).
• Extended search: In addition to trademark search, it is also recommended to conduct company name search and domain name search for the intended trademark to fully identify potential conflicts.

2.2 Search Channels

• The online search tool (IP online search) on the official website of MyIPO.
• The ASEAN TMview, a platform that provides trademark data of ASEAN member states.
• The Global Brand Database of the World Intellectual Property Organization (WIPO).

3. Types and Processes of Trademark Application in Malaysia

3.1 Types of Applications

(1). Ordinary application: It does not claim priority and can be submitted either online (via MyIPO's official website) or offline (by submitting paper forms). Both single-class and multi-class applications are supported.

(2). Convention application (priority application): If an applicant has already filed a trademark application in a member state of the Paris Convention, they can file an application in Malaysia claiming priority within 6 months from the date of the first application, and enjoy the same filing date as the first application.

3.2 Application Process

(1). Submission of application: Prepare materials such as applicant information, trademark representation and a list of goods/services, and submit them to MyIPO.

(2). Examination stage: Examiners will check whether the application meets legal requirements. If an objection is raised or modifications are required, the applicant must provide a written response within the specified time; otherwise, the application will be deemed abandoned. If the applicant is dissatisfied with the examination result, they can appeal to the court.

(3). Publication stage: After the application passes the examination, it will be published in the official gazette. Within the publication period (2 months from the publication date), any third party can file an opposition.

(4). Opposition handling: If an opposition notice is received, the applicant must submit a counter-statement within 2 months. Subsequently, both parties need to submit statutory declarations with evidence. The opponent can also respond to the applicant's evidence. Finally, MyIPO will make a decision to approve registration, approve registration with conditions or reject registration.

(5). Registration and certificate issuance: Applications with no opposition or unsuccessful opposition will be approved for registration. The validity period of the trademark is 10 years from the filing date, and a registration certificate will be issued after registration.

4. Validity Period and Renewal of Trademarks

The validity period of a registered trademark in Malaysia is 10 years, calculated from the filing date. Before the expiration of the validity period, the right holder can apply for renewal, and each renewal is also valid for 10 years, ensuring long-term protection of the trademark.