TRADEMARK - APPLICATIONS
Information on Filing and Prosecution
Prior to proceeding with a new trade mark application, it is advisable to carry out an availability and registrability search to determine any potential conflict relating to prior /earlier trade marks in the Register.
1.1 Conflicting Prior Marks
The search will identify any identical and/or similar trade mark which had been filed or registered at an earlier date that could potentially obstruct the registration process.
1.2 Inherent Characteristics
The search will further assess the inherent characteristics of the new trade mark and determine whether the mark satisfies other registrability requirements required under the governing Trade Marks Act 1976, which provides that a trade mark must satisfy one of the following essential particulars:
· the name of an individual, company or firm represented in a special or particular manner;
· the signature of the applicant for registration;
· an invented word(s);
· a word that does not have any direct reference to the character or quality of the goods or services and is not in its ordinary meaning a geographical
name or surname; or
· any other distinctive mark
During this stage, a thorough report will be provided indicating the likelihood of success in securing a registration as well as steps that could be taken by an Applicant to enhance its chances of success in securing a trade mark registration.
2. Filing Requirements
The minimum documentation requirements for filing a trade mark application in Malaysia are:
2.1 Clear print in electronic format(PDF, TIFF or JPEG)
2.2 A complete listing of goods or services according to the latest edition of the Nice International Classification (multi-class applications are
not available in Malaysia);
2.3 Full name and address of the applicant, body description of company, country/state of incorporation;
2.4 If convention priority is claimed, a certified copy of the priority application from the issuing Trade Marks Office (with a certified English
translation where documents are in a foreign language). The priority details such as the home country and date of priority must be \
indicated at the time of filing.
2.5 A Statutory Declaration of Trade Mark Ownership from the Applicant affirming that they are the bona fide proprietors of the mark and
that the application is made in good faith. The declaration has to be signed before a Commissioner for Oaths (for local declarant) or
before a Notary Public (if signed abroad);
2.6 For marks containing foreign words (other than English), a certified transliteration and translation will be required; and
3.1 Obtaining a Filing / Priority Date
Items listed as 2.1, 2.2, 2.3 above must be submitted at the time of filing the application in order to obtain a filing date and application number. Where Convention Priority is claimed, information detailing the country of origin as well as the date of priority must also be indicated.
Items listed as 2.4, 2.5 and 2.36 may be filed later within 12 months of the application date, subject to payment of late filing fees. Failure to meet the 12 months deadline would cause the application to be abandoned.
Note that the Registrar commences search and examination stage once and only when all identified documents (items 2.1-2.6) have been submitted for inspection.
3.2 Search and Examination
Once an application for a new trade mark is filed, it will be examined as to formalities. If all documentation and other filing requirements are met, the application will then be examined substantively.
3.2.1 Clear Examination
Where no objection is raised, the mark will proceed to advertisement stage. The mark will then be advertised in a special Government Gazette and if it is not opposed, the registration will be finalized with the issuance of the Registration Certificate.
It takes approximately 8-12 months to complete a straight forward registration process.
3.2.2 Mark Objected during Examination
A new trade mark may be objected during examination based on various reasons, which include, but not limited to the following:
· That the mark fails to satisfy the formality requirements (e.g. incomplete document, request for clarification or amendment of goods, etc).
· Trade mark does not satisfy any one of the inherent characteristics listed in item 1.2 above.
· There is a conflict with a prior registration or application.
· That the use of the mark or part of the mark is likely to deceive or cause confusion to the public or would be contrary to law;
· The mark contains or comprises any scandalous or offensive matter;
· That the mark is identical with or so nearly resembles a
mark which is well-known in Malaysia for the same goods or services of another proprietor;
· That the mark contains or consists of a geographical indication with respect to goods not originating in the territory indicated
· That the mark is for wine or spirits and contains or consists of a geographical indication identifying wines or spirits not originating in the place
indicated by the geographical indication in question.
The Applicant will be notified in writing by the Registrar giving a time line of two (2) months (extendible subject to payment of fees) to file its written arguments.
If the objections are successfully argued, the mark will either be allowed to the advertisement stage (see item 3.2.1 above).In the event that the arguments filed are rejected, the objections will be maintained, whereby the Applicant would be required to appear before the Hearing Officer in an oral hearing. If the objections are still maintained after the Hearing is conducted, the applicant has a right of an appeal to the High Court
3.3 Advertisement and Registration
Upon acceptance, the application will be advertised in the government gazette and lie open to opposition for a period of two months. If no notice of opposition or request for extension of time to do so if filed within this time period, the application will proceed to registration.
4.Post Registration - Renewal
Registration of a trade mark is for a period of ten years from the date of application/priority date, and can be renewed for further periods of ten years.