How to Register a Trademark in Malaysia

For entrepreneurs and investors planning to start a business in Malaysia, one of the key aspects they must consider is registering their trademark. It helps to protect your brand identity and safeguards your intellectual properties. 

This comprehensive guide will walk you through the steps of how to register a trademark in Malaysia

Overview of Trademark Registration in Malaysia

Malaysia follows a first-to-use system rather than a first-to-file system, meaning the rights are granted to the first user of the mark, not the first to file for registration. This adds a layer of complexity to the registration process, as it’s possible someone who has been using a similar mark in Malaysia before you could challenge your registration.

This also underscores the importance of conducting thorough trademark searches early in the process. Our local experts will do the necessary research and handle the registration process on your behalf to ensure there are no conflicts.

The trademark registration process in Malaysia is governed by the Trademarks Act 2019 and overseen by the Intellectual Property Corporation of Malaysia (MyIPO).

As for application, any individual, local or foreign, can apply for trademark registration in Malaysia. 

What Constitutes a Trademark in Malaysia?

In Malaysia, a trademark is not just your logo. It is any sign capable of being graphically represented that distinguishes your goods and services from others. Malaysia recognizes three main categories of trademarks:

1. Standard Trademark: Signs that include any combination of letters, words, names, logos, symbols, labels, shapes of goods or packaging, colors, sounds, scents, holograms, positioning, and sequences of motion.
2. Collective Mark: Distinguishes the goods or services of members within an association, indicating their collective identity.
3. Certification Mark: Certifies the goods or services meet specific standards set by an authority, assuring consumers of quality and safety.

These exclusive rights provide strong legal evidence of your ownership of the trademark, making it easier to protect your brand in the Malaysian market. 

Criteria for Trademark

Before you can register your trademark in Malaysia, it must meet the following criteria:

• Distinctiveness: The mark must distinguish your goods and services from others that are already registered and in use. 
• Non-descriptiveness: Avoid marks that merely describe the nature or quality of your products.
• Non-generic: Steer clear of generic terms or common words already widely used like ‘escalator’ for moving staircases, or ‘food’ for edible products.
• Legality: Must not contain prohibited marks, offensive matter, or elements against public order.
• Non-Deceptiveness: Should not mislead the public about the nature or quality of your goods or services.

Key Requirements to Register Your Trademark in Malaysia

Obtaining the right information for your trademark registration can be complex but Emerhub’s experts make it simple. Some of the key information and details to be gathered for the application include:

• Applicant details: Full name, registration number (for Malaysian applicants), and address.
• Trademark Agent: A registered agent to file on behalf of foreign applicants.
• Trademark File: A high-resolution softcopy of the trademark in .jpeg or .pdf format (maximum size: 10 cm x 10 cm).
• Goods and Services List: A detailed list of your business’s goods and services.
• Translation: A certified translation of the trademark if it isn’t in Roman characters, Malay, or English.
• Trademark Description: Required for specific types such as shapes, packaging, scents, holograms, positioning, or sequences of motion. 
• Sound Mark: Include a description and an MP3 of the sound.
• Color Mark: Provide a description and the Pantone code (PMS).

Leveraging a free consultation with Emerhub will streamline all necessary information for the registration process.

Steps to Register a Trademark in Malaysia 

Securing your trademark in Malaysia starts with understanding the trademark registration process. Here’s a summary of the journey from initial research, to final registration and maintenance.

1. Conduct a Thorough Market Research

Before filing your registration, you must ensure your desired trademark is not already in use. This requires vetting through the MyIPO database for existing trademarks in your industry and the geographical area to avoid conflicts.

2. Identify the Correct Class of Goods or Services

Malaysia categorizes goods and services into 45 categories. Identifying the correct class determines the scope of protection for your trademark and you may need to register in multiple classes to ensure comprehensive legal protection.

Our local experts will help you determine the correct class and handle the application submission on your behalf. 

3. Submit Your Application via MyIPO Portal

Ensure your trademark meets the registration criteria and gather the necessary documents as mentioned above including 2 copies of the TMA2 forms. 

Once everything is in order, you need to submit your trademark application via the MyIPO portal and pay the required fees. 

Note that foreign applicants must appoint a registered trademark agent such as Emerhub to file on their behalf.

4. Examination of the Application (to be published in the Trademarks Journal)

Once submitted, MyIPO will examine your application to ensure it complies with regulations, which typically takes 6 to 12 months. If everything is in order, your application will be published in the Trademarks Journal for further review.

5. Opposition Period

Following the publication, there is a two-month opposition period during which third parties can challenge your trademark. Should none arise, or any opposition resolves in your favor, your trademark will proceed to registration.

6. Receiving Your Registration Certificate

Upon approval, you will receive a registration certificate granting you exclusive rights to your trademark for 10 years. This period is renewable every 10 years, provided you meet the renewal requirements.

Cost of Registering Your Trademark in Malaysia

The government fee for a trademark registration application is RM950.00 (Fee Code TMA2A) per class for pre-approved lists and RM 1100.00 for applications without a pre-approved list.

If you have more than one mark, an additional RM50 applies for the second and each additional trademark in a series, up to a maximum of 6.

Note: The pre-approved list refers to a list of goods and services maintained by MyIPO which applicants can choose from when filing a trademark application. Using items from this pre-approved list results in a lower filing fee.

Managing Your Trademark in Malaysia

With your trademark registered, maintenance becomes crucial for ongoing legal protection and validity of your intellectual property rights. Here are three aspects to consider:

• Renewal: Before the expiry by filing the form TME1 with a fee of RM 1000.00 to MyIPO. There is a 6-month grace period if you missed the renewal date, with the late fee being RM1200.00.
• Usage: Non-usage for 3 consecutive years can result in cancellation proceedings.
• Monitor for Infringement: Actively monitoring the market for potential infringements is key to preserving your brand’s integrity and legal standing.

Register Your Trademark in Malaysia with Emerhub

To successfully register your trademark in Malaysia, it is important to have an understanding of the regulations. Therefore, many businesses prefer to work with experienced professionals such as Emerhub to ensure a smooth process and full compliance. 

Emerhub provides comprehensive trademark registration services, including: 

• Thorough trademark searches.
• Preparing and filing trademark applications.
• Responding to office actions or objections.
• Trademark monitoring and renewal services.
• Guidance on trademark use and protection strategies.

Our experts will handle the necessary submission on your behalf in compliance with Malaysian laws to ensure timely approvals. For a more tailored consultation, fill out the form below and we will put you in touch with one of our trademark experts in Malaysia.