Updated: May 18, 2021
A trademark is a sign which distinguishes the goods and services of one trader from those of another.
A mark includes words, logos, pictures, names, letters, numbers or a combination of these.
Definition of Trademark
Trademark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
Sign – any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, color, sound, scent, hologram, positioning, sequence of motion or any combination thereof.
Collective Mark – A collective mark shall be 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.
Certification Mark – A certification mark shall be 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.
Functions of Trademark
Origin – A trade mark helps to identify the source and those linked for the products and services trade in the market.
Choice – A trade mark assists consumers to choose goods and services with ease.
Quality – Consumers define a certain trade mark for its known quality.
Marketing – Trade mark play a significant role in promoting. It’s common for consumers to make purchases based on continuous effect of advertising.
Economic – Recognized trade mark is a valuable asset. Trade marks may be licensed or franchised.
Importance of Trademark Registration
Intellectual Proprietary privileges in relation to a trade mark may be established through actual use in the marketplace and registration provides for:
Exclusive Rights – Registered trademarks owners have exclusive right to use their marks in trading. They also have the rights to take legal action for infringement under the Trademark Law against others who use their marks without consent. They can either take civil action or lodge complaints to Enforcement Division for appropriate actions under the Trade Description Act 1972.
Legal Evidence – Registration certificate issued by Registrar Office is a prima facie evidence of trade mark ownership. A certificate of registration serves as an important document to establish the ownership of goods exported to other countries.
Duration of Protection
A registered trademark registration is protected for an initial period of ten years from the date of application and renewable for every ten years thereafter.
Trademark Application Procedure
• 5 copies of the completed TM5 with trade mark affixed to each copy
• One copy will be returned to customer for future reference
• 1 original copy of the statutory declaration with the trade mark affixed to it
• The trademark size must not exceed 10 cm x 10 cm
• 1 copy of the Form 49 / Form D / company detail from company registrar if the registration is made under company name
• 1 copy of priority date claim document (if necessary)
• 1 copy of certified transliteration and translation if the trademark is in other than roman character form (if necessary)
• The payment is RM 370.00 per application
• The payment is RM950.00 per class if the list of goods or services applied for is adopted from the pre-approved list of goods and services (Fee code TMA2A)
• Responsibility lies upon the applicant to claim that the list of goods or services applied for is adopted from the pre-approved list
• The payment is RM1100.00 per class if the list of goods or services is not adopted from the pre- approved list (Fee Code TMA2B)
• If the trademark is in series, an additional fee of RM50.00 is applicable for the second and each subsequent trademark (Fee Code TMA2C)
• The applicant may apply more than one class in single application (Multiple classes)
Preliminary advice and search Application for preliminary advice and search
Any person may file an application to the Registrar for preliminary advice and search result together with payment of the prescribed fee.
The applicant shall furnish to the Registrar the following information:
(a) the applicant’s name and address;
(b) a clear representation of the trademark or the graphic representation of the sign;
(c) description of shape of goods or their packaging, if applicable;
(d) a statement of the goods or services and the class of goods or services for which it is proposed to register the trademark; and
(e) if the trademark contains or consists of a word which is not in Roman character or the national language or English language—
(i) a translation of the word in the national language or English;
(ii) a transliteration of any characters; and
(iii) the language to which the word belongs.
Upon filing the application for preliminary advice and search result, the applicant shall submit to the Registrar —
(a) the maximum number of six series for series of trademarks; or
(b) the maximum number of six views for shape of goods or their packaging.
An application may be made in a single application listing goods and services belonging to several classes of classification and in that case together with payment of the prescribed fee.
After the Registrar received the request for preliminary advice and search, the Registrar shall examine the application to see if the request fulfill the requirements as specified and if all the requirements are adhered to, the request for preliminary advice and search will be examined based on absolute grounds, relative grounds and other grounds.
The Registrar shall issue the result of the application filed within one month from the date of the application.
The results issued by the Registrar are either in—
(a) affirmative; or
(b) not affirmative.
Filing of application for registration following issuance of advice and search result
After the applicant had received the result of the Registrar and the result is in affirmative, the applicant may file an application for registration of a trademark.
It is advisable to apply as soon as possible after the applicant received the affirmative result from the Registrar so as to avoid any other trademark to apply for registration of an identical or similar trademark within the same period before the applicant files an application for registration with the Registrar.
In filing the application for registration, the applicant shall be required to fill in the preliminary advice and search reference number in the space provided in the application for registration of a trademark.
Application for refund of fee of application for registration of a trademark
An applicant who files an application for registration of trademark with the Registrar after obtaining an affirmative result of preliminary advice and search by the Registrar and subsequently receives a notification of provisional refusal after the examination of the application for registration of trademark, he may request the Registrar to refund the fee of an application.
The applicant who wishes to request for the refund of fee of the application for registration of a trademark shall do so by filing the request for refund together with the payment the prescribed fee.
Before filing the request for refund of fee, the applicant must file a request for withdrawal of his application for a registration of a trademark by filing the withdrawal form and pay the prescribed fee.
The withdrawal must be made within two months from the date the applicant received the provisional refusal.
After receiving the request for refund, the Registrar shall consider whether the applicant fulfills the requirement for refund.
There are two situations when refund of fee of application for registration of a trademark can be given as follows:
(a) if the application for registration of a trademark received provisional refusal based on absolute grounds.
An applicant makes an application to register his trademark after the Registrar issued an affirmative. However, later on, the applicant received a provisional refusal based on absolute grounds. The applicant is entitled to get refund on the fee paid for his application to register his trademark.
(b) if the application for registration of a trademark received provisional refusal based on relative grounds due to examiner's error
An applicant makes an application to register his trademark after the Registrar issued an affirmative result. However, there was a mark applied earlier than the applicant's. Thus, the earlier mark should be on record during the Registrar’s examination of the request for preliminary advice and search. In this situation, the applicant is entitled to get refund on the fee paid for his application to register his trademark.
There are two situations where refund of fee of application for registration of a trademark cannot be given as follows:
(a) If the application for registration of a trademark received provisional refusal on relative grounds out of control of Registrar;
An applicant makes an application to register his trademark after the Registrar issued an affirmative result. However, another person had applied for the identical or similar trademark that was entered to the record after the Registrar had given the result of the request of preliminary advice & search but before the applicant had make an application to register his trademark. Later on, the applicant received a provisional refusal based on relative grounds. In this case, the existence of the earlier trademark is well beyond the control of the examiner. Thus, the applicant cannot apply for refund of fee under this circumstance.
(b) If the application for registration of a trademark received provisional refusal on absolute grounds or relative grounds on the classes that was not part of the classes applied for during preliminary advice & search.
TRADEMARK APPLICATION PROCEDURE
Steps & Fees – Normal Track
(Date and No. of application issued)
[Form TM5 - RM370 (Manual)]
2. FORMALITY CHECKING
(Compliance with statutory requirement)
3. SEARCH & EXAMINATION
(Examination on the registrability and search for prior marks)
[Form TM31 - RM650]
(2 months to oppose)
5. CERTIFICATE OF REGISTRATION
Opposed by third party
OPPOSITION PROCEDURE INTER-PARTE HEARING
[Form TM 7 - RM650]
Steps & Fees – Trademark Expedited Examination
1. Applicant to file
Form TM5 (RM370)
2. Request for Approval for Expedited Examination
Form TM5A (RM250)
[Within 4 months from application date
(Approved within 5 working days)]
3. Request for expedited examination applicant to file form TM5B (RM1200)
[Within 5 working days from the date of receipt of the Registrar's decision]
4. Search & Examination
[1 month and 2 weeks]
5. Request for advertisement
Applicant to file form TM31 (RM650)
[Within 1 month from the date of Notification of Acceptance]
6. Preparation for Gazette
[1 month for MyIPO to prepare Gazette Draft & submit to Government Printer for publication]
[2 months for public to oppose]
8. Re-search & Clearance
[2 weeks for clearance & re-search (to comply with 6 months PDC Paris Convention)]
9. Issuance of certificate
If you would like to know more, please contact Bestar.