Trademark Registration Procedure

In our article today, we would like to share about the procedures involved, time, and documents required for trademark registration:

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Basically, there are 4 formal stages that need to go through before a trademark is successfully registered:

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First Stage
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1.The first stage is to file a preliminary advice and search application to the Intellectual Property Corporation of Malaysia (which is also known as MyIPO).

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2.As the name suggested, the purpose is to seek preliminary advice and/or opinion from the Registrar of The Intellectual Property Office. The whole process usually takes about 1 to 2 months.

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3.If the Registrar of the Intellectual Property Office is of the view that the trademark is prima facie registrable as it complied with all the legal requirements in Malaysia, the applicant can then proceed to file the trademark application, with the written opinion of the Registrar as one of the supporting documents.

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Second Stage
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1.As mentioned above, the second stage is to submit a trademark registration application to The Intellectual Property Office. The application needs to be made by filing form TMA2A or TMA2B which can be done online through the website of MYIPO.

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2.If the applicant’s trademark consists of non-Malay or English words, he must submit a certified English translation within one month after submitting the trademark application.

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3.If the trademark application is subsequently rejected by the Intellectual Property Office, the applicant can also apply for a refund from MyIPO with the written opinion issued.

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Third Stage

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1.The third stage is trademarks examination. The Malaysian Intellectual Property Office will conduct two types of examinations on the trademarks:-.

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2.The first type of examination is known as “formal examination”, the purpose is to verify whether the applicant has submitted all the documents needed for trademark application, and whether the application has been properly filed in line with the procedure set out by the MyIPO.

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3.The second type is “substantive examination”, in which the Registrar will assess the trademark to see whether it has complied with the intellectual property laws in Malasia.

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4.The third stage would take a quite substantial amount of time (approximately 12 months). If there is no further issue, the Registrar of the Intellectual Property Office would then notify the applicant’s trademark agent in writing. The whole process would thereafter move towards its final stage.

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Fourth Stage

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1.The fourth stage is trademark publication. The Malaysian Intellectual Property Office will publish the trademark in their journals for two months to see whether there is any interested party would like to object or taking an opposition stand to the trademark application.

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2.If no such objection or opposition is being taken, then the trademark would be successfully registered.

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3.Therefore, in the situation where the Intellectual Property Office does not reject the trademark application or no one has filed opposition proceedings during publication, the estimate time that required to register a trademark is about 15 months.

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4.Once successfully registered, the legal protection will last for 10 years, calculating from the date when the applicant filed the trademark application papers with MyIPO.

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5.Generally, in order to prevent the entire application process from being delayed further, it would be strongly advisable for one to appoint a qualified trademark registration agent to assist in the application.

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