What do you do when your Trademark is being opposed?
The process for registering a trademark in Malaysia usually takes 12 to 18 months from the date of filing. Prior to official registration, the trademark application will undergo a series of examinations by the Registrar of Trademark under the Trademarks Act 2019.
Once a trademark application has been approved, the application will be published in the Malaysian IP Official Journal for two months. During this period, any public entities may choose to oppose the trademark within two months of publication.
The trademark application will then undergo opposition proceedings to determine the outcome of the registration.
What can you do when a third party opposes your trademark?
Grounds of Opposition
Under the Trademarks Act 2019, any individual is allowed to oppose a trademark application should they have:
- Continuously used the trademark prior to the date of filing or date of use of the opposed trademark;
- Be the rightful owner of the opposed trademark;
- Identified the opposed trademark as similar to identical to a registered trademark;
- Absolute and relative grounds of refusal of the trademark.
The Opponent: Filing Notice of Opposition
Under the Trademarks Regulations 2019, an opponent begins an opposition proceeding by filing a notice of opposition within 2 months from the date of publication of the trademark. The opponent is required to submit form TMD1 alongside a statement of grounds of opposition. Following this, the notice and grounds of opposition is to be submitted to the applicant by the opposition. The opposition is responsible for filing an affidavit of service with the Registrar proving the applicant has received the notice within 14 days from the date of receipt.
The Applicant: Filing of Counterstatement
The procedure for the filing of counterstatement is similar to to that filing an opposition. Upon receipt of the notice of opposition, the applicant may file a counterstatement within 2 months of receiving the opponent’s notice according to the date of receipt. The applicant is required to submit form TMD6 with grounds of counterstatement and serve a copy of such notice to the opponent. Similarly, the applicant will need to ensure the opponent has received the notice of counterstatement by filing an affidavit with the Registrar 14 days after the receipt of notice.
Both Parties: Evidence in Support
Both opponent and applicant will now be required to procure and provide evidence to support their claims respectively. Both parties are required to submit evidence by way of statutory declaration in order to verify the authenticity of evidence provided.
The procedure for evidence in support is similar as before, equally to both parties:
- File evidence within 2 months from the date of receipt of opposition or counterstatement;
- Each party will provide a copy of statutory declaration to one another;
- Each party will file an affidavit of service with the Registrar to show proof of receipt.
Both parties will be given the opportunity to file evidence in reply by way of statutory declaration, following the 2-month timeframe from the date of receipt of such statutory declaration.
Both Parties: Written Submission
Upon the completion of exchange of evidence, both opponent and applicant are to provide a written submission following notice issued by the Registrar, within 2 months of such notice.
Final Decision
The Registrar is responsible for assessing all evidence provided by both opponent and applicant in order to come to a final decision. The decision can take up to 2 months to be communicated to both parties and in writing. Outcomes include trademark refusal, trademark registration, amendment to trademark prior to registration and others. Both parties are allowed to appeal to the court within 1 month of receiving the Registrar’s decision.
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