.
📌 Q1: What can be registered as a trademark in Malaysia?
🗣: In Malaysia, trademark registration is primarily governed by the Trade Marks Act 2019.
Generally, any sign that is capable of distinguishing your goods or services from those of others and possesses distinctiveness may be registered as a trademark.
Common types of registrable trademarks include:-
1️⃣ Word marks (names)
2️⃣ Logos
3️⃣ Combination marks (words + device)
4️⃣ Colour marks
5️⃣ Sound marks
.
📌 Q2: Must a trademark be registered before it can be used in Malaysia?
🗣: No, a trademark does not need to be registered in order to be used in Malaysia.
However, if another party uses an identical or similar mark, the owner of an unregistered trademark must prove ownership and goodwill through evidence first before suing for infringement. This significantly increases the difficulty of enforcing rights in legal proceedings.
.
📌 Q3: Must a trademark be used for a certain period of time before can apply for registration?
🗣: No. Malaysian law does not require prior use before filing a trademark application.
As long as the trademark has been created and the applicant has a bona fide intention to use it in its business, an application can be filed with the Intellectual Property Corporation of Malaysia (“MYIPO”).
.
📌 Q4: How long does trademark registration take in Malaysia?
🗣: Typically, the process takes about 6 to 9 months.
There are two main stages during examination by MYIPO:
1️⃣ Formality Examination – to ensure filing documents are complete and accurate.
2️⃣ Substantive Examination – to assess distinctiveness and whether the mark conflicts with existing local or international registered trademarks.
Once accepted, the mark will be published on MyIPO’s website for approximately 2 ½ months. If no opposition is filed by the public, the registration process will be completed.
.
📌 Q5: Can the applicant make request to MYIPO to expedite the registration process?
.
🗣: Yes, applicants may make an application to expedite examination from MYIPO, but he/she must provide valid & acceptable reasons, such as:
- Ongoing or potential trademark infringement disputes.
- Imminent commercial use or product launch.
- Other urgent business needs.
.
📌 Q6: How long is the validity period of a registered trademark in Malaysia?
🗣: A registered trademark in Malaysia is valid for 10 years from the filing date.
It can be renewed every 10 years, provided renewal fees are paid on time.
.
📌 Q7: What happens if a trademark application is refused?
🗣: A refusal does not mean the end of the application—it is usually provisional.
After receiving a refusal from Intellectual Property Corporation of Malaysia, the applicant typically has about 2 ½ months to respond. The applicant may:-
1️⃣ File written submissions to argue why the refusal is incorrect, supported by legal and factual grounds.
2️⃣ Request an ex parte hearing to make oral representations before the examiner.
.If the examiner is persuaded, the application may proceed toward publication.
.
📌 Q8: What is trademark’s classification?
.
🗣: Trademark’s classification refers to the categories of goods or services that a business mark can be registered.
Malaysia adopts the Nice Classification, which consists of 45 classes:-
- Classes 1–34: Goods
- Classes 35–45: Services
A trademark is only protected in the classes applied for. If your business spans multiple categories, separate applications are typically required.
.
📌 Q9: When can I use ® and how is it different from TM?
🗣: TM may be used even if the trademark is not yet registered. It indicates that you claim rights over the mark and serves as a public notice.
® (Registered Trademark) can only be used after successful registration. It signifies that the mark is legally protected and grants exclusive rights—unauthorised use by others may constitute infringement.
.
📌 Q10: Can common or descriptive words be registered as trademarks?
🗣: Generally, common or descriptive words cannot be registered due to public policy reasons, as this would amount to a monopoly on words and restrict public usage.
However, in Malaysia if an applicant can prove continuous use for at least 6 years and demonstrate that the mark has acquired distinctiveness (i.e. the public associates it with the applicant’s goods or services) due to long period of usage, registration of common or descriptive words may be allowed under Section 23(2) of the Trade Marks Act 2019—though such applications are typically challenging and subjected to the description of MYIPO.
.
The above FAQs cover common questions on trademark agent in Malaysia. If you are looking for a registered trademark agent or require legal assistance with trademark registration in Malaysia, feel free to reach out to us via WhatsApp: https://wa.link/q3kmv5
.
Like & Follow our Facebook Page to get more legal information.
.
You can learn other legal information from our website：https://www.yeolaw.my/
.
#Yeolawchambers #YLC #registeredtrademarkagent #trademarklaw #intellectualproperty #tradeamrkregistration #JBlawyer #Datoonn #MYIPO #杨律师事务所 #马来西亚商标注册代理 #商标法 #商标注册 #智慧产权 #新山律师