1. What is a Trade Mark?

A Trade Mark is a mark which distinguishes the goods and services of one trader from another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these.

A Trade Mark is used as a marketing tool to enable customers to choose a product or services in the market place.

2. What are the functions of trade marks?

Origin Function - A trade mark indicates the source of goods or services in the market place.

Choice Function - A trade mark facilitates consumers in making choices of goods or services.

Quality Function - Consumers have preference to choose a particular trade mark for its known quality.

Marketing Function - Trade marks act as an effective medium of advertising for producer in marketing their goods or services.

Economic Function - A trade mark which is well known with a quality or reputation may be licensed or assigned as an economic asset.

3. What is the law governing trade marks?

  Trade Marks Act 1976

  Trade Marks Regulations 1997

4. Why is trade mark registration important?

Exclusive Right - Registered trade mark owners are conferred exclusive right to use their marks in trade. They also have the right to take legal action for infringement under the Trade Marks Act 1976 against others who use their marks without consent. They can also lodge complaints to the Enforcement Division of Ministry of Domestic Trade and Consumer Affairs (MDTCA) for appropriate actions under the Trade Description Act 1972.

Registration Conclusive - Registration Certificate issued by the Registrar is conclusive evidence of trade mark ownership in the court of law. Furthermore the certificate is an important document of trade mark ownership in the course of trade or business.

5. Is trade mark registration compulsory?

Registration of trade mark is indeed important to obtain exclusive rights for purposes of exploitation and commencing infringement actions. However, registration is not compulsory.

6. What happens if the trade mark is not registered in an action for infringement?

The owner cannot commence any action under the provisions of the Trade Marks Act 1976. However, actions may be instituted under the common law principals whereby the trade mark owner has a duty to convince the court that the infringing act had mislead the public and the infringing goods or services may be mistaken as his goods or services. This action is very contentious and costly.

7. Are all trade marks registrable?

No, in order for a Trade Mark to be registrable it must be:

  An invented word/words;
  Name of a person/firm/company represented in a specific or particular manner;
  Legible applicant's signature;
  Words with no direct reference to goods or services, or geographical significance;
  Any distinctive mark such as logo, picture, symbol etc.;
  Not deceptive, cause confusion, contrary to law, scandalous or offensive;
  Not identical or similar to earlier registered/applied trade marks; and
  Not identical or similar to well-known trade marks.
  A trade mark is not registrable if it contains words or representations prohibited under Section 15, Trade Marks Act 1976 and   Regulations 13, 14 and 15 of Trade Mark Regulation 1997; that is:
  Patent, Patented, By Royal Letters Patent, Registered, Registered Design and Copyright.
  His Majesty Yang di-Pertuan Agong, Her Majesty Raja Permaisuri Agong, The Royal Highness Sultans and Their Excellencies Yang di-Pertua Negeri.
  Royal or Imperial Crowns, Arms, Crest, Armorial bearings or insignia.
  The Royal Malaysian Army and Royal Malaysia Police.
  Red Crescent, Geneva cross in red and Swiss Federal Cross in white or silver on red ground.
  Words or representation or ASEAN and National Flower (Hibiscus).

8. Does Malaysian registration for trade mark give protection abroad?

No, trade mark protection is territorial in nature.

9. How does one secure protection abroad?

An applicant may file trade mark application separately in each intended country. However, a Malaysian application may be used as a basis for Priority Date Claim in the countries which are party to the Paris Convention or World Intellectual Property Organization (WIPO).

10. What are the filing procedures?

Each applicant must:

  File form TM5 (5 copies);
  Submit a Statutory Declaration declaring ownership of the mark;
  Pay the prescribed fee of RM250.00. If payment is by cheque/money order/postal order, should be in the name of Perbadanan Harta Intelek Malaysia;
  Submit other supporting documents such as Form 49 for company (sole proprietor and partnership), documents for Priority Date Claim (PDC) and others.

11. What is the duration of a trade mark protection?

The period of protection is 10 years, renewable for a period of every 10 years thereafter.

12. When can an application for registration of a trade mark be made?

An application for trade mark may be filed at any time immaterial of the fact whether the trade mark has been used, being used or proposed to be used.

13. What is the total cost to file a trademark application?

The total cost for trade mark application is RM700.00.

14. Who may file trade mark applications?

Any person who is the owner of trade mark using the trade mark or proposes to use the trade mark may apply for registration in Malaysia. The owner may be an individual, partnership, company or organization.

15. Is it necessary for an applicant to appoint a registered trade mark agent for purposes of filing an application?

A local applicant may file a trade mark application directly himself. A foreign application can only be filed through a registered trade mark agent.

16. Who is a registered trade mark agent?

A registered trade mark agent may be an individual, firm or company who has been registered in the Register of Trade Marks Agent. They are appointed by the applicants to act on their behalf in obtaining trade mark registration.

17. Where can one file an application?

One may file an application of a trade mark at Intellectual Property Corporation of Malaysia (MyIPO) Kuala Lumpur or office in Sabah or Sarawak. Any further inquiries can be made at:

Headquarters
Intellectual Property Corporation of Malaysia
32nd Floor, Menara Dayabumi,
Jalan Sultan Hishamuddin,
50623 Kuala Lumpur.
Phone Number : +603 2263 2100 (Operator)
: +603 2274 5113 (Helpdesk)
: +603 2263 2198/2199 (Counter Services)
Fax Number : +603 2274 1332

Sabah Office
Intellectual Property Corporation of Malaysia
6th Floor, Blok C,
49, Jalan Karamunsing,
88000 Kota Kinabalu, Sabah.

Phone Number : +6088 254 524
Fax Number : +6088 257 046

Sarawak Office:
Intellectual Property Corporation of Malaysia
Lot 9936, (Sub Lot 5), 3rd Floor, Queen's Court,
93000 Kuching, Sarawak.

Phone Number : +6082 459 075/ +6082 459 076
Fax Number : +6082 455 052