This article will set out briefly the general filing stages for trademark application in Malaysia.
In Malaysia, all trademark applications are to be filed with the Malaysian Trademark Registry that is commonly known as the Intellectual Property Corporation of Malaysia (MyIPO).
Search
While it is not compulsory, it is advisable to conduct an initial trademark search (identical search of similarity search) on the trademarks Register to identify if there is any identical or confusingly similar mark to your proposed mark.
Trademark Application
Once a decision has to be made to proceed with the trademark filing, an application to register the proposed mark will be made by filing the necessary forms at MyIPO together with the prescribed fees.
Examination Report
The Registry to will then conduct a formality check on the trademark application and issue an examination report to state the objections (if any) or to seek clarifications with the applicant. Generally, the mark will examined based on several grounds such as descriptiveness, distinctiveness and also whether the mark is identical or confusingly similar to any prior marks.
Written Response or Request for Hearing
The applicant is required to file a written response to overcome the objections raised by the Examiner or to request for hearing within the prescribed period. Failure to respond to the examination report within the prescribed period will lead to abandonment of the trademark application.
Acceptance
If the Registry is satisfied with the applicant’s response, the mark will be accepted and advertised in the Journal of Trademarks. Any third party may oppose the registration of the mark within 2 months from the date of advertisement.
If no opposition is filed within the prescribed period, the trademark will then be registered and certificate registration will be issued.
Post-Registration
Once a mark is registered, it will last for 10 years from the date of application and it has to be renewed every 10 years.
For ease of reference, you may refer to the flowchart below:-
Trademark Filing in Malaysia
