Registering A Trademark in Malaysia
Registering A Trademark in Malaysia
undertakings[1].
Such signs include any letter, word, name, signature, numeral, device, brand, heading, label,
ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning,
In Malaysia, trademark matters are governed by the Trademarks Act 2019 (“ TA 2019”), the
Trademarks Regulations 2019 as well as the relevant case law (related to trademark)
Registering a Trademark
Registration of a trademark is not necessary, but is highly advisable. This is due to the fact
that the statutory rights granted under the TA 2019 to the owner of a trademark apply only
action against the alleged trademark infringer. In case of unregistered trademark, its owner
may only bring passing off action[3] (instead of trademark infringement action) against any
person using a mark which is similar or identical to its trade mark. However, the likelihood to
succeed in passing off action is more difficult compared to trademark infringement action
as it will depend on the owner of unregistered trademark’s ability to satisfy the requirements
of passing off[4].
Any person[5] who claims to be the bona fide[6] proprietor of a trademark may apply for
the registration of its trademark with the Intellectual Property Corporation of Malaysia
MyIPO”)
(“ in the relevant classes for registration under the MyIPO’s Goods and Services
(Pre-Approved) List[7], depending on the goods and/or services that the trademark is being
used/ intended to be used by the trademark owners. In total, there are 45 classes for
trademark registration. Classes 1 to 34 covers trademark used for goods, while Classes 35 to
45 deal with trademark used in respect of services.
Registration of a trademark in a particular class only gives that trademark, the exclusive
rights and protection in that particular class. As such, it is important for trademark owners to
register their trademark in all relevant class(es) so as to ensure that their rights are secure.
An application for the registration of a trademark must be filed with the MyIPO using the
prescribed form and accompanied with the prescribed fee. The information required to be
submitted in the application form includes the details of the applicant of the trademark, the
representations of the trademark, the description of the trademark, the classes of good and
Once filed, the Registrar of Trademark (“ Registrar”) will conduct formality and substantive
Registrar will examine whether the trademark application fulfills the requirements for
registration under the TA 2019. The registration of a trademark will be refused by the
(a) within any of the absolute grounds for refusal of registration under Section 23 of the TA
(i) signs which are not capable of being represented graphically and not capable of
(iii) trademarks which consist exclusively of signs or indications which may serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical origin, other
services; or
(iv) trademarks which consist exclusively of signs or indications which have become
customary in the current language of the territory or in the bona fide and established
(b) within any of the relative grounds for refusal of registration under Section 24 of the TA
(aa) where the trademark is identical with an earlier trademark and is to be registered for
(bb) where the trademark is similar to an earlier trademark and is to be registered for goods
Malaysia and it is to be registered for the identical goods or services of the proprietor of the
well-known trademark.
If the Registrar satisfies that the trademark application has fulfilled the requirements for
registration under the TA 2019, he will accept the trademark application for registration and
the same will be published in the Intellectual Property Official Journal for a period of two (2)
months. During this period, any party may file with the MyIPO, an opposition against the
registration of the trademark based on any of the grounds mentioned in the TA 2019[8]. If no
party opposes the registration of the trademark within this two (2) months period, such
trademark by filing the prescribed form with the MyIPO accompanied with the payment of
Once a trademark is registered, the TA 2019 grants to the owner of such registered
trademark:
(a) the exclusive right to use the trademark in relation to the goods or services for which the
(b) the exclusive right to authorize other persons to use the trademark in relation to the
Maintaining a Trademark
A trademark registration is valid for a period of ten (10) years from the date of its
To maintain the rights obtained through registration of a trademark, the registration of the
trademark must be renewed within the prescribed time. Aside from that, a registered
trademark proprietor must ensure that he uses the registered trademark (in relation to the
goods and/or services for which the trademark is registered). In the event the registered
trademark has not been put to use in good faith in Malaysia without proper reasons by the
registered trademark proprietor (or with his consent) within a period of three (3) years
following the date of issuance of the notification of registration, such trademark registration
non-use[9].
International Considerations
products or services to other countries, the trademark owners should consider either
registering their trademark directly in each country of their interest (with the relevant
national intellectual property office) or using Protocol relating to the Madrid Agreement
The Madrid Protocol is an international registration system for trademarks where trademark
owners can simultaneously seek protection for a trademark in other countries through a
single procedure with a single administration. In other word, trademark owners can use their
Malaysia trademark application or registration as a basic mark with MyIPO to instruct the
other member countries of the Madrid Protocol such as Singapore, Korea and etc. Each of
the countries where the protection is sought will then apply their own rules and laws to
In the event where a trademark owner wishes to register its trademarks in Malaysia directly
with the MyIPO, but does not reside or carry on business principally in Malaysia, the TA 2019
requires such trademark owner to appoint a trademark agent registered with the MyIPO to
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4. as set out in the case of Reckitt & Colman Products Ltd v Borden Inc & Ors (1990) 1 All ER 873 at p 880,
which case has been accepted and adopted by the Malaysian Courts such as in the case of Yong Sze Fun &
Anor (t/a Perindustrian Makanan & Minuman Layang-Layang) v Syarikat Zamani Hj Tamin Sdn Bhd & Anor
6. Pursuant to Section 17(1) of the TA 2019, he must either be using or intends to use the trademark in the course
of trade or has authorized or intends to authorize another person to use the trademark in the course of trade.
7. a classification system used by the MyIPO to classify goods and services for the purposes of the registration
of trademarks.
10. There is a common misconception that trademark registration via Madrid Protocol would grant a global
trademark protection. However, in fact, the Madrid Protocol trademark registration would only confers national
rights governed by the rules and laws of each designated member countries respectively.
Written by:
Khairul Fazli Abdul Kadir Azarith Sofia Aziz Nur Aina Syafiqah Azawawi
Partner Senior Associate 2 Associate
Corporate Communications
Azmi & Associates
29 April 2022
The contents of this publication are for reference purposes only and do not constitute legal advice.