In 2020, a new Trademark Law entered into force in Malaysia. Individuals who use or intend to use the mark can apply for TM registration in Malaysia and count on decent protection of their intellectual property. This is facilitated by the country's membership in the World IP Organization and the WTO
When TM in Malaysia can be registered and when it is impossible
It is quite easy to register a TM in Malaysia if it contains any of the following:
- name presented in a special way;
- invented words;
- a word that is not a geographic name.
TM registration in Malaysia will most likely be refused if:
- TM is misleading the public;
- TM is contrary to the law;
- TM violates ethical norms;
- TM poses a threat to national interests or security;
- TM can be confused with a brand that is well known domestically;
- a brand of wine with a geographical indication that identifies this wine.
According to the new Law that has just come into force, you will not be able to register such symbols. If you have already registered a TM with a similar designation, then within six months from the date of entry into force of this Law, you must bring the TM in accordance with its requirements. However, since it is impossible to make changes to the designation registered as a TM, the owners of such marks will have to, in fact, terminate the registration and think about creating a new TM.
Protecting Famous Brands in Malaysia
If you are the owner of a famous brand, you can safely develop a business in Malaysia and not worry - your brand will be protected. You can exercise your right to oppose the registration of a Malaysian trademark if you have conclusive evidence that the latter is infringing your brand rights. You can also prohibit the use of the infringing mark and claim damages.
A well-known trademark with a reputation has the right to be protected regardless of its registration in the country.
To apply for the registration of TM in Malaysia, you must fill out a special form and provide a declaration and an image of the TM. It is possible to apply in person, but 2020 has developed a solid practice of online filing due to the need to maintain social distancing due to the pandemic.
Searching for a trademark prior to filing an application is optional. However, this is a common practice that almost all applicants use to their advantage. If the search results reveal an identical TM then the risks of refusal to register TM are very high. But there are times when a company cannot refuse this designation and is trying to find any ways to obtain legal protection. The latter include:
- Recognition of your TM as well-known. The advantage of this step is the possibility of such recognition on any date, even the one that has already passed.
- Early termination of registration of TM registered earlier. Your brand should not be necessarily in use in the country prior to registration. If someone objects to the registration of your TM, then the proof of use may be helpful to you, as it can serve as a distinguishing factor.
If the mark is not in use within three consecutive years, then the TM may be annulled.
Settlement of a TM dispute in Malaysia
ADR in Malaysia is widely used for TM cases. Typically, the parties will be offered mediation prior to the commencement of the trial. The advantage of this ADR method is that the parties can resolve a TM dispute in Malaysia without going to court, which is more cost-effective. However, in the event that mediation fails, the case will automatically go to court.
IQ Decision UK specialists provide advice on registering a TM in Malaysia, as well as assistance if you decide to resolve a TM dispute in Malaysia.