Trademark Services

What is a Trademark?

Trademark means any sign capable of being represented graphically which is capable of distinguishing goods or services of any one undertaking from those of other undertakings.

Types of Trademark

Types of trademarks include word marks, logos, combination marks, slogans, shapes, colours, sounds, motions, patterns, positions, holograms, and multimedia elements.

Differences between Trademark & Registered Trademark

Understanding the difference between ™ and ® is important because each symbol communicates a different level of brand protection, legal strength, and ownership. While ™ simply shows that you are claiming a name or logo as your brand, the ® symbol indicates that your trademark has been officially examined, approved, and registered by the trademark authority. Knowing when and how to use each symbol helps businesses protect their identity, avoid legal issues, and ensure their brand is presented professionally and correctly.

Trademark Registration Procedures in Malaysia

Design your own distinguish trademark

Ensure the logo design fulfills all specifications listed in the Malaysian Trademarks Act 2019 and not fall under any criteria of the absolute and relative grounds of refusal.

Trademark Search

Before we file the application, we will study the existing trademarks in related industry and geographical area to to ensure no conflict exists.

Determine the classification of your products

A trademark is registered and protected according to the type of the products. You may identify and search for relevant classes for the products (goods or services) under Nice Classification.

Application submission to Registrar of Trademark (MYIPO)

Submit the form containing the details of the applicant, graphics such as logo or illustration of the mark, description of the products and the desired class of trademark to the registar.

Examination by the trademark examiner

Examination will be completed by the trademark examiner. The Registar will verify the application and conduct substantive examination on the registrability of the trade mark which take up to 6 – 12 months processing time.

Publication of the trademark

Upon completion of examination, the trademark will be advertised for 2 months, this will allow time for third parties who wishes to oppose the registration.

Obtain of registration certificate

If there is no opposition to the proposed trademark, or the objection is withdrawn or decided in favour of the trademark applicant, the trademark will be then be registered, and certificate of registration with validy of 10 years will be given to the applicants.

Flowchart of Trade Mark Application

FAQs

1) What is Trademark?

Trademark means any sign capable of being represented graphically, which distinguish goods or services of one undertaking from those of other undertakings.

2) What is the purpose of registering trademark?

It helps to identify the source and those linked for the products and services trade in the market.
To enable consumers to choose goods and services with ease.
Consumers define a certain trademark for its known quality.
It plays a significant role in promoting. It’s common for consumers to make purchases based on continuous effect of advertising.
Recognized trademark is a valuable asset and it may be licensed or franchised.

3) Who can apply for trademark in Malaysia?

Any person, business entity, association and government body including foreign business entity. All applications will be treated with the same priority regardless of the nationality.

4) What is a trademark Classification (Class)?

Malaysia follows the Nice Classification (NCL), which is an international classification of goods and services applied for the registration of marks.

Different types of goods and services are categorized according to different classes.

There are a total of 45 Classes whereby :-

Class 1 – 34 are for goods
Class 35 – 45 are for services

Applicant has to designate his Classes of interest specifically for registration of his trademark.

5) Can I register multiple Classes under one application?

Yes, pursuant to the new Trademarks Act 2019, an applicant can now register more than one class under a single application.

6) Can I group several similar marks together and register them under one application?

Yes, it is possible to do so by filing them as series of marks.

7) Should I register my trademark in a particular colours or black and white?

It is advisable not to restrict your trademark to any particular colours because when a trademark is registered without limitation as to colour, it shall be deemed to be registered for all colours.

8) What trademark can be accepted for registration?

Signs which can be represented graphically, capable of distinguishing goods or services and is distinctive.

9) If I register my trademark in Malaysia only, will it be protected in other countries?

No, as trademark protection is territorial in nature. You will need to register separately (or via Madrid protocol) in each countries of your interest in order to obtain trademark protection in those particular countries.

ASI do assist our clients to obtain trademark registration in foreign countries.

10) How long will a registered trademark be protected in Malaysia?

A registered trademark will be protected for 10 years and renewable only after 10 years. It can be renewed continuously without limitation.

11) What if the Registrar objects the application?

One may appeal against the objection or amend the application as required by the Registrar.

The estimated cost for filing such appeal or amendment with the Registry of Trademarks is usually range between RM500.00 to RM3,000.00 for 1 mark 1 class.

12) What is the difference between TM and ®?

Only a registered trademark may use the ® symbol. You may use the TM symbol while waiting for the registration process.

13) What are the grounds of rejection

a) Absolute grounds for refusal of registration

Contain matter that might be prejudicial to the interest of the security of the country.
Contain or consist of the name or representation of another person without the consent of that person.
Deceive or mislead the public or consumer regarding the nature, quality, or geographical origin of the products.

b) Relative grounds for refusal of registration

Identical or confusingly similar with an earlier trademark.
Identical or similar to a well-known trademark regardless it is registered in Malaysia or not.