Malaysian trademark system

Introduction

Below you will find useful information when protecting your trademark rights in Malaysia.

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Trademark rights in Malaysia

1. About the trademark system

(1) Definition of trademark

In Malaysia, a trademark means a sign that can be graphically displayed to distinguish the goods or services of one business from those of other businesses (Section 3 of the Trademarks Act). Article). In this case, "sign" means "letters, words, names, signatures, numbers, designs, brands, titles, labels, tickets, product shapes or packaging, colors, sounds, smells, holograms, arrangements, series of actions or (Article 2 of the Trademark Law).

Amendments to the law have made it possible for non-traditional trademarks to receive protection.

(2) Protection of well-known and famous trademarks

A trademark that is identical or very similar to a mark of another right holder that is well known in Malaysia and designates the same or similar goods/services will not be allowed to be registered.

In addition, if a trademark is the same or similar to a well-known trademark registered in Malaysia and designates a different product/service, registration of the trademark will not be permitted in the following cases. (Article 24(3)(b) of the Trademark Act)

1. A relationship is suggested between the goods, etc. for which the applied trademark is used and the owner of the well-known trademark,
   And
2. When the interests of the owner of a well-known trademark may be harmed

In addition, a third party is using a trademark that is the same or similar to a well-known trademark protected by the Paris Convention and the TRIPS Agreement for the same or similar products, which may cause misunderstanding or confusion. If so, the owner of the well-known trademark may seek an injunction to prevent third parties from using it.

(3) Application route

Malaysia joined the Madrid Protocol in 2019.
Until then, the only way was to apply directly to the Malaysian Intellectual Property Office (MyIPO), but since then, it has become possible to designate Malaysia as a designated country in international registration applications (MadPro applications).

2. From application to registration

(1) Term of existence

10 years from the registration date (renewable)

(2) Application system

• We use a one-application multi-division system.
  ⇒Previously, one application per one category, but with the 1 law revision, it is now possible to specify multiple categories in one application.
• Application fees are determined by the number of categories.

(3) Application documents

1. Application
2. List of goods or services that use the trademark
3. trademark sample
4. power of attorney
5. Priority certificate (if priority is claimed)
6. If the applied trademark contains characters other than Roman letters, English, or Malay, information on (17) transliteration, (3) translation, and (XNUMX) transliteration is required (Article XNUMX(XNUMX) of the Trademark Law).

• The language of proceedings is English or Malay.
• The ``oath,'' which was previously required to be submitted, is no longer required due to the revised law.

(4) Examination

• After filing an application, a formal examination and a substantive examination will be conducted.
• If you receive a notice of reasons for refusal, you must respond within two months.
• If the contents of the response/rebuttal to the reasons for refusal (Trademark Law Article 29(5)(a) rebuttal (b,c) amendments/additions to documents) are not accepted, a decision of refusal will be made.
• Previously, you were allowed two opportunities to make a rebuttal to the examiner, but due to a change in the law, you now only have one opportunity. If you are dissatisfied with the examiner's decision after making a counterargument, you will have to go to a higher court.

(5) Judgment system

1. Appeal system against refusal decision (Trademark Law Article 29)

• Period of limitation: Within one month from the date of decision/judgment

2. Invalidation trial system (Trademark Law Article 47)

• Period of limitation: Within one month from the date of each judgment
• Disqualification period: 5 years from registration ⇒ Shortened from 7 years to 5 years due to law revision

3. Cancellation trial system (Trademark Law Article 46)

• Trademarks covered:
  • Items that have not been used without any reason in Malaysia for three consecutive years after registration
  • A name that has become a common name in a transaction regardless of the actions or omissions of the registered owner
  • If used, there is a risk of misunderstanding regarding the nature, quality, or source of the product or service.

(6) Objection system

• Opposition period: within 2 months from public announcement
• Submission period for reply to opposition: Within 2 months from the date of receipt of notice of opposition
• Please note that if you do not submit a written answer to the opposition, the application will be deemed to have been withdrawn (Article 35(4) of the Trademark Law).
• If your trademark registration is canceled as a result of your opposition, you can file an appeal with the court within one month from the date of receiving the decision.

(7) Special system

1. Accelerated examination system (Trademark Regulations Rule 8)

• Requests can be made within 4 months from the filing date.
• If you apply for accelerated examination approval within one month of filing, you can register your application within 1 months from the filing date at the earliest.
  (For regular applications that do not use the accelerated examination system, the first Office Action will be issued approximately 12 to 18 months from the filing date.)

2. Consent system (Trademark Law Article 24(7))

• If the applied trademark is the same or similar to another person's registered trademark, a document stating that the prior trademark right holder consents to the registration of the applied trademark (= written consent) must be submitted to the Intellectual Property Office. You can request the examiner to withdraw the reasons for refusal.
• However, examiners are not bound by the consent form. Therefore, if the examiner determines that there is public confusion, the trademark application will be rejected.

3. Disclaimer system (Article 30 of the Trademark Law)

• In some cases, such as when certain parts of a trademark lack distinctiveness, the registrar may require you to apply for a disclaimer as a condition of trademark registration.

(8) Registration

• If registration is approved, a registration notice with the Registrar's seal will be issued.
• If you wish to receive a registration certificate, you must apply to the registrar and pay a fee.
• The registration fee is included in the application fee and no separate payment is required.

3. Dealing with rights violations

In Malaysia, trademark infringement is defined as “the use of an identical or similar mark in respect of goods or services similar to the goods/services designated by the registered trademark without the consent of the trademark registration holder or registered user. ``acts used in the course of business, or certain preparatory acts.'' (Article 54 of the Trademark Law)

There are several ways to deal with trademark infringement:

Civil remedies (Trademark Law Article 56~)

• Trademark owners can seek a permanent injunction against infringing goods, the delivery of infringing goods, damages, disclosure of evidence and information, and reimbursement of costs.
• Malaysia uses a three-umpire system. Trademark infringement lawsuits typically begin with a lawsuit filed in a high court. Appeals will be filed in the Court of Appeals, and appeals from the Court of Appeals will be filed in federal court.

criminal measures

• New penalty provisions have been established under the Trademark Act 2019. (Trademark Law Part 15, Part 16)
• Administrative sanctions for infringement of intellectual property rights include enforcement by the Legal Enforcement Division (MDTCC) of the Ministry of Domestic Trade, Cooperatives and Consumer Protection and Customs, followed by criminal prosecution.
• The use of certain trademarks, trade names, etc. on products that are not manufactured by an authorized manufacturer can be declared to amount to false trade representations under the Trade Representations Act.
  If an application for a transaction display order is granted, it will have the effect of being a document relied upon in a criminal prosecution.

Enforcement at customs (border measures)

Malaysia does not yet have a system in place to register intellectual property rights such as patents and trademarks with customs, and to notify rights holders when goods suspected of infringing their rights are brought into the country. yeah.

Therefore, the system allows intellectual property rights holders to receive protection through inspection and injunction by identifying individual infringement cases in advance and applying to customs for detailed information on imported cargo. .

4. treaty

The status of membership in the main treaties is as follows.

*Although the country is not a member of the Nice Agreement, the Nice classification is used for screening.