In order to obtain trademark rights in Malaysia, the trademark necessarily has to be registered, as it is a “first-to-file” jurisdiction. However, in exceptional cases, well-known trademark can be protected even if they have not been filed yet.
Trademark applications are filed with the Intellectual Property Corporation of Malaysia (MyIPO).
Malaysia is a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.
There is no need for the trademark to be in use for registration to be granted. However, if a trademark is not used for a continuous period of three (3) years, then it becomes vulnerable to cancellation actions.
Oppositions against a trademark application in Malaysia can be filed within a timeframe of two (2) months after the trademark is published in the Government Gazette.
If you register a combined trademark (which includes both word elements and figurative elements) in Malaysia, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
Registered trademarks in Malaysia have a validity of ten (10) years from the filing date, and can then be renewed for subsequent terms of ten years each. The renewal can be requested within the six (6) months preceding the expiration date as well as during the six (6) months following it, subject to the payment of a late renewal fee.
In Malaysia, it is not possible to transfer ownership of a trademark application. Trademark assignments (transfers) can only be done for trademarks that have been effectively registered.