Trademark Updates
The New Trade Marks Act 2019 and Trade Marks Regulations 2019 have come into force on 27 December 2019.
Some of the key changes to the trademark regime in Malaysia are as follows:-
- International trademark registration (Madrid Protocol) is now available
- Multi-class filing in a single application is now available
- Non-traditional marks such as shape of goods or their packaging, sound, colour, scent, hologram, positioning, sequence of motion, or any combination of the aforesaid are now registrable
- Even if a priority filing date is claimed, the date of registration is the date of filing, not the priority filing date claimed. The priority date merely determines the precedence of right
- Applicant can now voluntarily disclaim any rights to any specified element(s) or word(s) of the trademark when filing the application
An applicant of a Malaysian trademark application can request for expedited examination of its application through to registration in circumstances that are justified.
This is particularly useful in cases where the Applicant is seeking to pursue an injunction or infringement action.
Other justified reasons for wanting expedited examination are such as the registration of the trade mark is a condition to obtain monetary benefits from the government or institutions recognised by the Registrar or it is in the public or national interest or other reasons subject to Registrar's approval.
In this regard, Applicants must submit a request for approval for expeditedexamination with the prescribed payment, within four (4) months of the filing date of the Malaysian application and providing adequate specific reasons for wanting the application to be expedited in the form of an Affidavit or Statutory Declaration.
The fastest possible time frame to obtain a straight forward trade mark registration through the expedited examination route is approximately 6 months, as opposed to about 18 months in a normal route.
Trademark Expedited Examination
EXPEDITED EXAMINATION FOR TRADE MARK APPLICATIONS IN MALAYSIA
An applicant of a Malaysian trademark application can request for expedited examination of its application through to registration in circumstances that are justified.
This is particularly useful in cases where the Applicant is seeking to pursue an injunction or infringement action.
Other justified reasons for wanting expedited examination are such as the registration of the trade mark is a condition to obtain monetary benefits from the government or institutions recognised by the Registrar or it is in the public or national interest or other reasons subject to Registrar's approval.
In this regard, Applicants must submit a request for approval for expeditedexamination with the prescribed payment, within four (4) months of the filing date of the Malaysian application and providing adequate specific reasons for wanting the application to be expedited in the form of an Affidavit or Statutory Declaration.
The fastest possible time frame to obtain a straight forward trade mark registration through the expedited examination route is approximately 6 months, as opposed to about 18 months in a normal route.
Trademark Filing Requirements
The filing requirements for a trade mark application in Malaysia are as follows:-
- Full name, address and citizenship of applicant. If applicant is not an individual, please provide country and state (if applicable) of incorporation.
- One (1) clear specimen of the trade mark in jpeg/jpg/gif by email attachment (size not exceeding 10 cm x 10 cm) Please note:- The mark will be filed in black & white which when registered is deemed to be registered for all colours. If you wish to file in colour, please provide us with a clear specimen of the mark in colour.
- If the mark contains non-English words, please specify the language and meaning.
- Description of the goods/services for which protection is sought according to the Nice Classification of Goods and Services.
- Priority date, number and country of filing (if claimed).
- An English translation and transliteration of the non-English words contained in the mark.
- A certified true copy of the priority document and its certified English translation if it is not in English.