How to Register Trademarks in Malaysia?

Part A: Introduction to Trademark

1.        Q:       What can be trademarked?

A:       Words, logos and phrases can be registered. While non-traditional elements such as sounds, scents, and colors are also possible, the considerations given and requirements to be fulfilled slightly differ.

2.       Q:       Is a single trademark registration able to give me exclusive rights to use my mark on all of my products or services?

A:       The exclusive rights granted to a trademark owner are strictly limited to the specific goods or services for which the mark is registered. As a result, other traders may still be able to use a similar mark for different classes of goods or services.

For a more comprehensive explanation on this concept, please refer to the following article: Trademark NICE Classification: 'One' is all I need? 

3.       Q:       Should a mark be registered in black and white, or in color?

A:       On one hand, registering in black and white generally offers broader protection such that all colours are protected. However, you may want to consider registering the mark in colors if the specific colors are a crucial and distinctive aspect of your brand identity. In determining the best strategy for your situation,

Thus, it is advisable for you to consult a trademark agent. They can help you weigh the pros and cons of each approach based on the nature of your mark and business goals.

4.       Q:       When a mark consists of a design and a slogan underneath,

should I register the components separately or together?

A:       Although registering the components together is simpler and involves a single application, registering them individually provides significant flexibility in how you use them in your business. Additionally, it offers more focused protection for each element. However, it is worth highlighting that registering these components separately will involve additional costs due to the filing of multiple trademark applications.

5.       Q:    Is it possible to register as trademark a portrait of an individual?

A:       It is possible to trademark a portrait of an individual, provided that you have the individual’s written consent. It is advisable for you to submit the written consent together with the application to expedite the registration process.

Part B: The Procedure

6.        Q:       What is the process in registering a trademark?

A:       Generally, before applying for trademark registration with MyIPO, it is advisiable to conduct a search to ensure that the intended mark is not similar to any existing trademarks. If the search confirms no similar marks in existence, the mark will be filed for registration.

The trademark registration process starts with the filing of an application with the Registrar of Trademarks. The Registrar will first conduct a formality examination to verify your documents and information. Then, a substantive examination will be carried out to assess if your application meets the legal requirements for registration.

If the Registrar raises objections during this stage, you have the options to either submit a written appeal or request an ex-parte hearing. Should the Registrar still deny the registration, you have the option to appeal the decision to the High Court.

If the Registrar has no objections, your mark will proceed to publication. If no party opposes the mark during the publication period, it will then be registered under MyIPO. Electronic certificate will be issued at no extra charge. You can apply for a physical certificate of registration by paying the prescribed fee.

7.        Q:       What is the expected completion time for the registration

process?

A:       For instances with no hiccups, the registration process typically takes approximately 7 months to complete. This process is considerably faster compared to the previous average of around 9 months.  

8.        Q:       What are the possible grounds that the Registrar may raise in refusing the registration of the applied mark?

A:       The Registrar commonly rejects trademark applications based on two main grounds: Relative Grounds or Absolute Grounds.

Relative Grounds are invoked when the applied mark is similar to an earlier trademark/application and is intended for identical or similar goods or services. On the other hand, Absolute Grounds are invoked when the applied mark is devoid of any distinctiveness.

9.       Q:     How can I overcome Relative Grounds and Absolute Grounds?

A:       To overcome either type of refusal, applicants generally have two ways to respond: by submitting written arguments explaining why the mark should be registered or by requesting an ex parte hearing to present your case. Given the potentially legalistic and technical nature of this process, consulting a trademark agent is highly recommended.

When the refusal is due to the applied mark being similar to an existing one (Relative Grounds), you have to demonstrate that the applied mark is different from the earlier trademark. A few factors that can be raised are the conceptual, visual, and aural aspects of the marks.

If the refusal is because the applied mark lacks distinctiveness (Absolute Grounds), demonstrating either its inherent uniqueness or its factual distinctiveness through extended use of the mark may lead the Registrar to allow the application to proceed for registration.

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