Trade Marks In Malaysia

6 April, 2016

 

Malaysia is a South-East Asian nation consisting of sections on the Malay Peninsula and on the island of Borneo, with the South China Sea lying between them. Malaysia’s population of over 30 million works in the world’s 20th most competitive economy (as of 2014-15), with a PPP GDP of $747 billion, making it the third largest in ASEAN and the 28th largest worldwide. Malaysia’s newly-industrialised market economy has consistently posted impressive gains, averaging 6.5% growth per annum over the period 1957-2005.

 

Over the next few posts, the South East Asia IPR SME Helpdesk will explore the various IPRs available to European companies looking to do business in the territory, beginning with today’s summary of Malaysian trade mark regime.

Intellectual property in Malaysia is governed by the Intellectual Property Corporation of Malaysia (MyIPO) under the Ministry of Domestic Trade, Co-operatives, and Consumerism, with the notable exception of plant varieties (which are governed by the Crop Quality Control Division of the Ministry of Agriculture). Malaysia has a fully modernised and comprehensive raft of IP laws in line with WIPO standards, and MyIPO regularly organises seminars and trainings to raise awareness of IP among the business community and general public.

 

Trade marks in Malaysia

 

A trade mark may be a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these and is used for the purpose of distinguishing goods or services from those of other traders. An example would be Apple’s iconic white apple logo or Coca-Cola’s red lettering and distinctive font. By registering a trade mark, you will have the exclusive right to use the mark in relation to the goods and services applied for and to prevent third parties from using an identical or even a confusingly similar trade mark.

 

Malaysia is in the process of joining the Madrid Protocol and is expected to fully become a signatory soon, in the meantime however, applications are made locally with the Trade Mark Division in the Intellectual Property Corporation of Malaysia (MyIPO). All documents submitted must either be in English or the national language of Malaysia (Bahasa Malaysia). The basic filing fee (excluding agent costs) for trade mark registration in Malaysia starts from RM 1,020, which is approximately EUR 225.

 

Applications

 

Malaysia provides the following guidelines for what is registerable as a trade mark:

 

• The name of an individual, company, or firm (if presented in a unique and recognisable manner)
• The signature of the applicant
• Invented words
• A word that does not directly refer the character of quality of the goods and is generally not a geographical name or surname
• Other distinctive marks, logos, etc.

 

MyIPO also sets out some guidelines for what cannot be registered, namely marks which:

 

• Are likely to deceive or cause confusion to the public (such as by causing consumers to confuse two goods)
• Are identical with or closely resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor
• Claim a false geographical indication (i.e. the trade mark misleads the public as to the true place of origin of the goods) 
• Contain scandalous or offensive matter

 

Principally, these restrictions are listed because registering any trade marks with the above qualities could confuse consumers as to the producer or origin of the goods in question.

 

Applications for a trade mark require the following documents to be submitted:

 

• A copy of the mark in JPEG format
• A list of goods or services which the mark will cover (according to Nice classifications)
• Information about the applicant’s name, address, and status and location of incorporation
• A statement affirming that the applicant is the rightful owner of the mark and that the application has been made in good faith. This must be signed with a Commissioner for Oaths (if the applicant is local) or with a Notary Public (if the applicant is abroad) 
• (for marks with non-English words) A certified translation and transliteration 
• (if priority is claimed) A certified copy of the application used for the priority claim and (if the application is not in English) a translation of those documents

 

When selecting which goods categories to claim on an application, you should be sure to apply for protection over all areas for which you could conceivably use your trade mark. Otherwise, an unscrupulous local company could register a very similar trade mark for a very similar type of goods which your company does not produce and benefit from consumer confusion. 

 

Malaysia does not currently have rules allowing for registration of trade marks composed of sounds or scents. It does, however, have rules for certification trade marks, marks which the proprietor itself does not use. Instead, these marks are registered for selected third parties to use and indicate that the goods which affix the marks have certain traits relating to origin, materials used, production methods, quality, or other notable characteristics. Such applications require provision of rules which will be used to determine which goods can use the mark.

 

Examinations and protection

 

An application for registration should be filed with MyIPO. You can appoint an agent to file the application on your behalf by completing a MyIPO TM1 form and making a statutory declaration of the appointment. After filing, trade marks are subject to examinations to determine whether they meet registration requirements. Examinations normally take less than twelve months and are followed by publication in the Government Gazette. If there are no objections, the mark will be registered. If there is an issue with the application (such as the application being incomplete or the mark conflicting with a previously registered mark), the applicant will be given two months to respond to the issues raised by the examiner. Examiners may also request minor amendments, such as changes to the goods categories specified, requests for clarification, or requests for translations.

 

Registrations from other jurisdictions (particularly the UK, Singapore, or Australia) can help assuage fears that your trade mark is too similar to previously registered marks and is likely to be confused.

 

An expedited examination track is also available for trade marks which:

 

• Serve national or public interest
• Have evidence of potential or ongoing infringement
• Must be registered to receive benefits or grants from government institutions
• Have other valid reasons for requesting an expedited examination

 

A request for expedited examination must be filed (and the fee paid) within four months of the initial application filing. If the request is granted, an additional fee must be paid before the examination timeframe for the mark is advanced. Other steps before registration remain as they are in the normal examination process. 

 

A trade mark registration will last for 10 years from the date of application, or priority date if the application is based on a priority claim. A trade mark registration can be renewed every ten years an unlimited number of times. It is recommended that the trade mark registration be renewed before the registration expires.

 

Any individual or a corporate entity can register a trade mark. If the applicant resides abroad, an address for service in Malaysia must be provided. While foreign applicants are able to register a trade mark, it is common practice for them to engage a trade mark agent for this purpose. 

 

Enforcement

 

Holding a trade mark registration allows you to exclusively exploit the mark for commercial gain, transfer rights to the mark, and sign contracts regarding use of the mark. A proprietor can also register other parties as registered users, allowing those users to use the marks (with or without any restrictions). Any other party infringing on these rights, including by producing, selling, importing, or stocking items bearing the mark, is liable for administrative or civil action by Malaysian authorities.

 

If you wish to invalidate a trade mark, you may take action with MyIPO’s Trade Mark Register. Such actions can result in the removal of trade marks from the register if they infringe upon your trade mark (such as by being likely to cause confusion or being identical to your mark).

 

Before taking civil or criminal actions, SMEs should strongly consider mediation. Firms with limited budget options and a need to quickly halt infringement can use mediation as a quick and cost-efficient means of halting infringement.

 

Beyond mediation, the two main avenues of enforcement in Malaysia are the Enforcement Division of the Ministry of Domestic Trade, Cooperatives, and Consumerism (for criminal enforcement) and IP court litigation. Before any enforcement action, you should always gather proof of your ownership of the IP in question and proof of infringement. To win a trade mark infringement case, you must show that:

 

• The trade mark is registered 
• The offending trade mark has been used by the infringer
• The infringer is using the trade mark for the registered goods and services

 

In criminal enforcement with the Enforcement Division (ED), counterfeiting and piracy cases can quickly yield goods seizures, injunctions, and prosecutions. To prepare for such actions, you should provide proof of infringement and a letter of complaint. After raids or product seizures, SMEs should assist the ED by providing identification and analysis of seized goods to prove infringement.

 

In litigation through IP courts, IP owners can bring cases before specialised Malaysian IP courts. These courts are empowered to issue injunctions which immediately halt infringement and to assign unlimited damages to be paid to the rights owners. Nine months is the proscribed maximum waiting time for these cases between filing and their day in court, offering a reasonable expectation of timely resolution. There are six “High Courts” (in Kuala Lumpur, Johor, Perak, Selangor, Sabah, and Sarawak) which focus on civil cases (as the damages are often difficult to quantify), as well as 15 “Sessions Courts” spread among the Malaysian states which focus on criminal cases and which have unlimited power to issue fines.

 

Finally, unregistered trade marks are also protected (to a limited extent) under laws regarding passing-off. Although the burden of proof is heavier for these cases, passing-off cases can halt infringement or punish infringers if you can show that the trade mark carries significant good will and has an established reputation. It is then necessary to show that use of the trade mark is misrepresentation of the goods and causes harm to your firm.