Trademark

Trademark Protection & Registration
In Malaysia, ASEAN & Worldwide

Protect Your Trademark With Quality Oracle

What is a Trademark?

A trademark is a sign capable of distinguishing the goods or services of one person or enterprise from another. This can be a logo, a slogan, a word, a domain name, a colour, a sound, a letter, a shape, a phrase, a design or a combination of any of these. Trademarks are protected by intellectual property rights.


Trademarks Act 2019 & Trademarks Regulations 2019

27th December 2019

Malaysia Trademarks Act 2019

The Malaysia Trademarks Act 2019 and the Malaysia Trademarks Regulations 2019 officially came into force in Malaysia on 27th December 2019.

27th December 2019

Malaysia Trade Marks Act 1976

The implementation of the new Act replaces the Malaysia Trade Marks Act 1976.

According to the new Act, Trademarks are defined by…

”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.’

‘A sign may constitute a trademark even though…

‘…it is used in relation to a service ancillary to the trade or business of an undertaking and whether or not the service is provided for money or money’s worth.’

‘References in this Act to a trademark includes…

‘…unless the context otherwise requires, references to a collective mark of certification mark.’ (MyIPO, 2019)


How Can We Help You Protect Your Trademark?

Intellectual Property Trademark Patent Industrial Design Copyright Malaysia Singapore Registration Application

Our team of Intellectual Property professionals conduct and manage all matters related to trademark protection, ranging from trademark searches, applications, examinations, publications, grants and renewals. We advise clients on trademark opposition or refusals on relative or absolute grounds, ensuring efficiency and accuracy from the beginning to end of the registration process.

We can assist you with:

✔ Trademark Searches
✔ Trademark Licensing
✔ Trademark Assignment
✔ Trademark Application
✔ Trademark Infringement Monitoring
✔ Trademark Portfolio Management
✔ Trademark Rights Enforcement
✔ Trademark Sale & Transfer
✔ Trademark Renewal
✔ Trademark Registration In Malaysia, ASEAN & Worldwide

Following the implementation of the Malaysia Trademarks Act 2019, we are now able to provide international trademark registration via the Madrid Protocol. This allows trademark owners to protect their marks across 121 countries through one application, in one language, paying one fee.


Key Reasons to Register Your Trademark

The registration of your trademark is the first step towards protecting the intellectual rights of your brand. By establishing an official record of your rights as the owner of a unique trademark, you are actively safeguarding the identity of your brand from potential misuse or infringement by third parties on similar goods or services. Our team will ensure that there are no inconsistencies in your application that would allow a competitor to take advantage of your unique trademark through loopholes.

Trademark registration will confer an official right to the utilisation of your trademark. This process grants you the authority to license the use of your registered trademark and protects you from fraudulent use of the mark. Our team will advise you on potential challenges and infringements on your application in order for you to secure exclusive rights to your unique brand.

The registration of your trademark is a powerful marketing tool to distinguish your goods and services on the market as it ensures that no third party can operate under the same mark without your permission. The right sign for your brand is important to both initial growth and long term expansion of your business. A registered trademark associated with your goods and services establishes credibility and consistency, which in turn fosters customer trust and loyalty.


Madrid Protocol

Intellectual Property Trademark Patent Industrial Design Copyright Malaysia Singapore Registration Application

On 27th September 2019,

Malaysia became the 106th member of the Madrid Protocol System upon depositing the instrument of accession with World Intellectual Property Organisation (WIPO).


Malaysia Trademarks Classification

Intellectual Property Trademark Patent Industrial Design Copyright Malaysia Singapore Registration Application

Malaysia adopts the 10th edition of the Nice Classification of Goods and Services.


Trademark Protection & Registration FAQ

Registration notice issued by the Registrar is conclusive evidence of trademark ownership in the court of law. Therefore, registering your trademark grants you the exclusive right to use your marks in trade. Trademark owners are given the right to take legal action for infringement under the Trademarks Act 2019 against third parties utilising their marks without consent. Trademark owners can also lodge complaints to the Enforcement Division of Ministry of Domestic Trade and Consumer Affairs (MDTCA) for appropriate actions under the Trade Descriptions Act 2011.

Registration with SSM guarantees the registration of your company name. However, company name registration will not prevent third parties from utilising the same company name. In order to protect your company name, registering your name as a trademark will prevent others from exploiting the use of your name.

If you intend to use your mark or if you are already using your mark, it would be in your best interest to file your trademark application as soon as possible. The day on which the application is lodged is also date of registration of the mark. Given that an application lodged earlier holds prima facie priority over later applications, it is highly recommended to make an early application.  

A trademark upon its registration will be protected for a term of 10 years. This begins from the date of application. The registered trademark may be renewed for a further period of 10 years. This is to be done before or on the date of expiry of the registration. If the process of trademark renewal has not been undertaken, it is possible to conduct trademark restoration. However, restoration must be carried out within 6 months from the date the trademark is considered to be removed.

  1. Ordinary trademark – a word, design, or a combination of these used to identify and distinguish the goods or service of one person or organisation from others in the marketplace
  2. Service mark – a word, design, or a combination of these used to identify and distinguish the services of the provider from others in the marketplace
  3. Collective mark – a service mark used by members of a collective group to signify membership in the organisation
  4. Certification mark – a word, design, or a combination of these used to signify to consumers the goods or service have met particular standards

The trademark office may refuse registration for various reasons. These reasons include:

  • The mark includes immoral, deceptive or scandalous matter.
  • The mark comprises a name, portrait or signature identifying a particular living individual (except that by that individual’s written consent).
  • The proposed mark resembles a mark already registered in the Trademark Office so that use of the mark would likely cause confusion, mistake or deception.
  • The mark is merely descriptive or deceptively misdescriptive of the applicant’s goods or services.
  • The mark is primarily geographically descriptive or deceptively geographically misdescriptive of the applicant’s goods or services.
  • The mark is merely a surname.
  • The mark as a whole is functional.
  • The mark is generic.

Registration of your trademark in Malaysia only guarantees protection in Malaysia. You must make independent applications in each of the countries you seek trademark protection in.

Malaysia is a part of the Madrid System, an international treaty devised to streamline the international trademark registration process. This process allows trademark owners to gain protection of his or her trademark up to 120 countries simultaneously through one application with a single office, in one language and paying one fee.

It must be noted that the Madrid System streamlines the application process, but does not grant global trademark protection.

You can use the ® symbol when your trademark has been registered. If your trademark is unregistered, the ™ symbol will be in use.

It is possible to assign your trademark to someone else. To assign your trademark to someone else is synonymous with the transfer of ownership. To perform the assignment, the applicant must record it in writing by filing the required form (Form TMH1).

The trademark application process is time-consuming and involves legal and procedural requirements which may pose as a problem to an unexperienced applicant. A knowledgeable and trustworthy trademark agent who is familiar with the legal procedures and undertakings is extremely equipped and ready to conduct skilful analysis of situations, devise problem-solving solutions and provide a streamlined application experience to the client.

Furthermore, it is mandatory in various countries that the applicant is represented by a trademark agent before the trademark office under the condition that the applicant does not have an address for service and is not established or domiciled in the country of filing.


Trademark Application Procedure In Malaysia

Intellectual Property Trademark Patent Industrial Design Copyright Malaysia Singapore Registration Application

Resources