APPLICATION & REGISTRATION
**No Power of Attorney or Statutory Declaration is required for filing of trademark application in Malaysia**
The New Trade Marks Act 2019 and Trade Marks Regulations 2019 have now come into force on 27 December 2019! For more details on this, please contact us via email.
Some of the key changes to the trademark regime in Malaysia are as follows:-
We give you......
Special discounted rates
Regular periodic updates on the progress of your application and email enquiries answered promptly within 24 hours.
Application filed within the same day if all documentation are in order.
All correspondences received from the Malaysian Trade Mark Office will be forwarded to you promptly via email.
SEARCH OR CLEARANCE
A search or clearance should be done to ensure that your trade mark is free for use and registration and does not conflict with prior third party rights otherwise you may find yourself being sued for infringement!We conduct comprehensive searches at the Malaysian Trade Mark Office and report back to you typically within 3 to 5 working days depending on the amount of searches.
When a trade mark application is accepted, it is published in the government gazette for 2 months for opposition purposes. During this time, any aggrieved third party may oppose the application.
We act on behalf of clients and take all necessary steps to initiate or defend opposition proceedings including reviewing merits of the case and advising on the chances of success as well as advising on the best strategies to achieve desired outcome. Where appropriate, we assist clients negotiate with the other party to reach an amicable settlement.
A trade mark registration in Malaysia has an initial registration of 10 years and lasts indefinitely as long as it is renewed every 10 years upon payment of renewal fee. We send reminders for renewals to our clients approximately 6 months before expiry date. Renewals are filed on a timely basis ensuring continued and uninterrupted protection for our client’s marks. We also assist clients on filing of late renewals or restoration of registration which have lapsed.
We advise, co-ordinate and prepare the appropriate assignment documentation, filing recordal of assignment, checking and forwarding notification of recordal to you and overall ensuring that recordals are managed in the most speedy and cost-effective manner.
Here are the top 3 questions on trademark protection:
Q: Is registration mandatory to get protection for my trade mark?
Registration is not mandatory. However, registration confers many benefits one of which is the proprietor has the right under the statute to commence infringement proceedings for misappropriation of his/her mark. If the mark is not registered, the proprietor’s remedy is under common law and can only commence passing-off proceedings which has a higher burden of proof compared to infringement proceedings. The proprietor will need to adduce substantial evidence of use of the mark and conduct extensive surveys in order to prove ownership in the trade mark unlike in the case of an infringement proceedings whereby a certificate of registration is all is needed.
Q: What is the duration of a trade mark registration?
In Malaysia and most other countries, a trade mark registration lasts forever as long as it is renewed every 10 years upon payment of renewal fee.
Q: Is it necessary to register my trade mark in other countries where I operate my business?
You should apply for trade mark protection in the countries your products or services are being used. If you have a distributor or agent in a particular country, you should register your trade mark there and then have your distributor registered as a licensee or registered user of your trade mark. This is important to prevent he distributor/agent from claiming or having any dealings in regard your trade mark if the distributorship/agency agreement does not work out. We will provide specific costs per country upon request.
Resources: FAQ | Filing Requirements | Application Process