Malaysia Trademark Service Charges
Brief Outline of Trademark Registration Procedure in Malaysia
Upon receipt of an application, the application would be allotted an application number. This is followed by formality examination. If formality is complied with, substantive examination (called full examination here) will be carried out. If formality is not met, the Registrar will issue an office action requesting the applicant to file amendment or to submit the missing document. The time frame from application to full examination typically takes nine months to a year.
If the application is not objected to on relative or absolute grounds, or if an objection is overcome, the application proceeds to acceptance whence the applicant is required to prepare the artworks for publication on government gazette. If the Registrar issues an objection, the applicant is required to file a response within TWO months. If objection is not overcome, the applicant could request for a hearing and should the mark be refused again after hearing, the applicant has the option of filing an appeal to the High Court. If the High Court ruled in favor of application, the mark proceeds to acceptance, else the application will be refused with no further recourse.
Once the mark is published (after acceptance of the mark), the public is given two months to file opposition. If there is no opposition, the mark is gazetted and a certificate of registration will be sent to the applicant. If there is no opposition and if the opposition is overcome, the application proceeds to registration; else the applicant has the option of filing an appeal to the High Court. If High Court ruled in favor, the mark proceeds to registration, else the application will be refused with no further recourse.
A trademark will be valid for 10 years from the date of filing in Malaysia.
Documents/Information Required to File a Trademark Application
- Full name and address of the applicant/proprietor of the trademark. If the applicant is a partnership, it will be necessary to provide the full names of all the partners.
- A clear representation of the mark. If the representation of trademark is in color, please provide 22 copies of the mark in color.
- A detailed list of goods and/or services in respect of which the application is to be filed. It is important to note that the goods/services should be those which are of actual interest to the applicant.
Note: The specification of goods and/or services must be classified according to the International Classification of Goods and Services issued by the World Intellectual Property Organization (WIPO), also known as the ‘Nice Classification’. In Malaysia, separate applications must be filed for separate classes.
- If there is a prior application in a Convention country or prescribed foreign country filed within the past 6 months, the applicant may claim a priority date based on the prior application ‘priority application’. As stated, priority based on a foreign application may only be claimed within 6 months from the date of that foreign application.
Note: To claim priority, the application form must state the relevant country, the application number and the priority date claimed. It will also be necessary to furnish a copy of the priority application which displays the date of application. If the priority application is in a language other than English, then a certified translation into English must also be furnished.
- If the trademark contains or consists of a word or words in non-Roman characters or in a language other than English or Bahasa Malaysia, a certified translation and transliteration must be provided.
- Date of first use of the mark in Malaysia. A trademark may be applied for in Malaysia based on prospective use. It is not necessary to have begun use of the trademark in Malaysia before the date of application.
Documents to be Filed at the Registry of Trademarks
- Form TM 1 is a form of authorization of agent, to be signed by the applicant. If required in the interests of expediency, agents may sign the TM 1 on behalf of the applicant.
- Form TM 5 is the trade mark application form, which contains the particulars of the applicant and the trademark. This form must be signed by the proprietor or the agent.
- Statutory Declaration is to be filed together with the application or may follow the TM1 and TM5 shortly thereafter. This statutory declaration is to be affirmed by an authorized representative of the applicant before a Notary Public or other official in the territory who is duly empowered to administer oaths.
- Priority Documentation – Documents forming the basis of any priority claim must be filed together with the application.
- Full name and address of the registered proprietor.
- The registration number and class of the trademark to be renewed.
- The registered proprietor may have changed name or address by the time of filing renewal. If such is the case, then applications to record the new name/address should be filed to update the Register.
- If users are registered in respect of the mark and the user registrations are to continue, applications must also be made for renewal of the user registrations at the time of renewal of the mark or no later than the specified period allowed. Otherwise the user registrations are taken to have lapsed and the deeming provision as regards use will cease to have effect at the date of expiration of the last registration of the mark.
Recordal of Assignments
- The full names and trade or business addresses of the assignor and assignee. The full names of the partners are required if it is a partnership.
- The Deed of Assignment evidencing transfer of the trademark to the assignee is to be filed together. The Deed must state whether the assignment is with goodwill and whether the mark assigned is registered or pending.
- Particulars relating to the trademark, including the registration or application number, the class, the goods in respect of which the assignment relates.
- Where the applicant does not claim under any instrument which is capable in itself of furnishing documentary proof of his title, a Statement of Case setting forth the full particulars of the facts upon which his claim to be the proprietor is based and showing that it has been assigned or transmitted to him, verified by Statutory Declaration, are to be filed together with the application. We can assist in drafting the relevant documents.
- Certified true copy of the merger document or a certification from an authorized body from that state or country. Documents are required to be notarized.
- Particulars of the trademark, i.e., the registration or application number and the class.
Change of Name/Address Recordal
- Copy of Certificate of Change of Name.
- Particulars of the trademark, i.e., registration or application number and the class.