1. Why register a trademark?
Registration confers on the registered proprietor the exclusive right to use the mark in Malaysia. A registered proprietor is prima facie the owner of the mark and the registration is presumed to be valid until proven otherwise. An application to court to expunge a registration that has been wrongfully entered can be protracted and expensive.
2. Is registration of a mark mandatory?
Although registration of a mark is not mandatory, only a registered proprietor and its registered user are entitled to institute court proceedings for infringement of a mark. For unregistered marks, the proprietor is restricted to common law remedies, such as the tort of passing off, where the proprietor has the burden of proving that it has reputation and goodwill in the mark in Malaysia. Such burden may be discharged only by adducing evidence of substantial and prolonged use of the mark in Malaysia and/or by conducting extensive surveys.
3. What is registrable?
Any distinctive device, brand, heading, label, ticket, name, signature, word, letter, numeral, or combination thereof, may be registered as a trademark. There are no clear provisions for the registration of shapes, scents or sounds under the Malaysian Trade Marks Act, 1976.
4. Can a trademark be registered for retail and like services?
Service marks used in the retailing and wholesaling of goods may be registrable under Class 35.
5. How are domain names protected?
Domain names with the .my suffix are protected by registering them with the Malaysian Network Information Center (MYNIC). Registration is accomplished online at www.mynic.net.my. MYNIC does not subscribe to ICANN抯 dispute resolution policy and therefore disputes relating to .my domain names are resolved using common law concepts such as fraudulent and deceptive instruments and conduct, as well as torts such as passing off.
6. Should a trademark be searched before filing?
It is recommended that an availability and registrability search be conducted before any use or filing of a mark in Malaysia. Since May 2001, the public may conduct a computer search of Registry computer records for word marks. However, all device marks still have to be manually searched.
7. How do I file?
The application has to be filed using the prescribed forms at the Registry of Trade Marks. The applicant may lodge the application itself if it has an address for service in Malaysia, or the applicant may appoint a trademark agent who is registered in Malaysia to file the application on its behalf.
8. What information must be provided before filing?
The name, address and legal status of the applicant, a representation of the mark, the goods/services and the class(es) under which they fall. A certified translation and transliteration of all non-Roman words and a translation for any non-English words is also required. A statutory declaration affirming that the applicant is the bona fide owner of the mark and is entitled to file the application must be filed, either together with the application or at a later date. The application must also include information as to whether the mark has been used prior to the filing date or stating that use is intended.
9. Is local registration the only option, or are there international alternatives?
There are no international alternatives.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
A separate application has to be filed for each class.
11. Is it possible to take advantage of a home application or registration?
Malaysia is a member of the Paris Convention. The applicant may claim priority for its Malaysian application based on its first filing, not more than six months earlier, in another Paris Convention member country. The fact that the same mark has been registered in countries with similar laws such as the UK, Australia and Singapore, is persuasive of the mark抯 inherent registrability.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A registered mark that has not been used for a continuous period of three years may be removed by filing an expungement application to the court.
13. Is using a variation of the trademark allowable?
Ideally, a mark should be used in the form in which it is registered. However, use of a mark with minor variations that do not substantially affect the identity of the mark may be considered as use of the registered mark.
14. Is there any advantage to using a trademark before filing an application?
A nondistinctive mark may acquire factual distinctiveness as a result of substantial and prolonged use. Therefore, an otherwise unregistrable mark may be rendered registrable as the result of use. The party who first used the mark in Malaysia is the rightful proprietor of the mark. Registration is the basis for a prima facie presumption of ownership, which may be rebutted via evidence that the mark has been used earlier by another party.
15. For an application to be valid, are there any particular requirements that must be met?
The application must be filed by the applicant or its registered trademark agent using the prescribed forms, and accompanied by the prescribed filing fees. The application may be based on actual use or a bona fide intention to use the mark in Malaysia.
16. What information is first published about an application/ registration and when is it published?
Details of all pending applications and registrations are matters of public record and may be inspected at the Registry of Trade Marks upon the payment of the prescribed fees. An application that has been accepted by the Registry will be published in the Government Gazette. Acceptance normally occurs within 12 to 30 months of filing.
17. What kind of examination (if any) will a new application undergo?
The application will be examined for distinctiveness, nondeceptiveness, conflicts with earlier registrations and applications for the same or similar marks. Marks that have a direct reference to the character or quality of the goods/services or that are geographical names or surnames will raise objections.
18. What response to official objections is required?
The response to official objections may be via written legal submissions by a trademark lawyer competent to deal with each of the objections raised. The legal submissions may be supported by a statutory declaration from the applicant. Evidence of the mark抯 inherent distinctiveness may be its registrations in other countries or its factual distinctiveness by its prolonged and substantial use and promotion in Malaysia.
19. How long is the registration process?
The registration process normally takes between 18 months and four years.
20. What rights does an application confer?
A pending application confers no enforceable legal rights against third parties.
21. What is the legal effect of a registration?
See responses to questions 1 and 2, above.
22. Can an application be opposed or cancelled by third parties?
A pending application cannot be opposed until it is advertised in the Government Gazette. The opposition period is two months from the date of advertisement.
23. Can an application or registration be assigned?
A pending application or registration can be assigned.
24. Must an assignment include goodwill?
An assignment of a registration may be with or without the goodwill of the mark, but an assignment of a pending application must be with the goodwill of the business associated with the mark. An assignment without goodwill must first be advertised in a local publication before the application to record the assignment is filed with the Regisrtry of Trade Marks, Malaysia.
25. Does an assignment have to be recorded?
An assignee of a trademark will not be able to enjoy the rights of a registered proprietor until it has been recorded as the new registered proprietor.
26. Can an application or registration be licensed?
Both a registered and unregistered mark may be licensed, but the proprietor must retain control over the use of the mark.
27. Does a license have to be recorded?
It is not compulsory to record a user of the mark. However, use by a recorded user will be deemed to be use by the registered proprietor. This will protect the registration from being removed on the ground of nonuse.
28. What is the territorial limit of a registration?
Malaysia.
29. How long does a registration last?
A registration may last indefinitely, as long as it is renewed every ten years.
30. What is required to renew a registration?
Payment of the prescribed renewal fee is required to renew a registration.
31. Is it necessary to indicate a trademark registration on goods or services?
It is optional to indicate that the mark has been registered by using the symbol ?or words such as 揜egistered Trademark?or words of similar effect.
32. Does the International Classification System apply?
Malaysia closely follows the 8th Edition of the International Classification of Goods and Services, which provides for 45 classes.
33. Is your national office accessible online?
The website address of the Malaysian Intellectual Property Unit is www.mipc.gov.my. |
