Many overseas companies have seen the opportunities exporting to Mainland China, which of course brings up questions related to trademarks.
You should be cautious before engaging in business outside the borders, as some countries are referred to as “first-to-file” countries. This means that you won’t have any authority, in case someone else register your trademark before you in that country.
The E-Commerce market is expected to grow much in Southeast Asia, especially in Malaysia, the coming decade. Before selling into Malaysia, I highly recommend you to register your trademark.
Therefore, I’ve written this guide where I include the key info you need to know when registering a trademark in Malaysia.
Malaysia trademark law
Malaysia is a member of a number of international conventions, as well as having its own national laws.
Trademark regulations are managed by the Intellectual Property Corporation of Malaysia (MyIPO), which is the equivalent of IPOS in Singapore, and IPD in Hong Kong.
I won’t go into details about the conventions and laws that Malaysia has engaged in or apply. Instead, I’ve listed the conventions and national laws below, to get you a brief overview:
International trademark conventions
- Madrid Goods & Services
- The Nice Classification
National trademark laws
- Trade Marks Act 1976 (Act 175)
- Trade Marks Regulations 1997
To read more about these laws and following amendments, I recommend you to visit MyIPO’s website.
Malaysia trademark classes
As mentioned above, Malaysia is part of the Nice Agreement and classifies trademarks accordingly. You’ll find 45 different classes in the Nice Agreement, where 34 are used for products, and the remaining 11 are used for services.
Over 150 countries, including Singapore and Hong Kong SAR, are members of this agreement that helps countries and states to collaborate over national borders.
As we normally deal with products, I’ve included the classes for some of the most commonly imported products and classes used below:
For laundry detergents, perfumes, soaps, essential oils, cosmetics and hair lotions.
Pharmaceutical and veterinary preparations, dietetic substances adapted for medical use, food for babies, material for stopping teeth, dental wax.
Machines and machine tools; motors and engines (except for land vehicles, and more.
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, and more.
Household or kitchen utensils and containers (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, glassware, porcelain, and more.
Clothing, footwear, headgear.
Games and playthings, gymnastic and sporting articles not included in other classes.
Meat, fish, poultry and game. Meat extract; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Agricultural, horticultural and forestry products and grains nor included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruits juices; syrups and other preparations for making beverages.
Alcoholic beverages (except beers).
Process when registering a trademark
Applying for a trademark is straightforward and won’t set you back much money nor time.
Below I’ve listed the different steps you need to go through when register your trademark.
First of all, you should fill in and submit 5 forms referred to as TM5. You can find the form on MyIPO’s website and they even have a PDF sample, showing you how to fill in the TM5 form.
If you encounter any issues, you can contact MyIPO directly, either by email or by phone.
To summarize, the documents you need for the application are:
a. 5 copies of the completed TM5 with trade mark affixed to each copy. Keep in mind that the trademark size must not exceed 10 cm x 10 cm
b. 1 original copy of the statutory declaration with the trade mark affixed to it
c. 1 copy of the Form 49/ Form D/ company detail from the company registrar, if the registration is made with a company name
d. 1 copy of priority date claim document (if necessary)
e. 1 copy of the certified transliteration and translation if the trademark is in other than roman character form (if necessary)
2. Formality checking
In this step, MyIPO reviews your documents and confirms whether you need to revise the application, or add any complimentary documents.
If you need to amend the application, you need to do this within 12 months.
3. Trademark search and examination
The trademark search will confirm that no one else has registered the same or a similar trademark, or is in the process to register one. They will also check previous trademarks, that might be similar or the same as yours.
To do a trademark search, you need to submit a document called TM4, which is used for the Registrar to make an initial assessment whether your trademark can be registered.
You should also submit a form called TM 4A, which is an official request to perform a trademark search.
4. Publication in the Gazette
If you’ve made it this far, it’s time for trademark to be published in the Gazette.
This is equivalent to the Trade Marks Journal in Singapore, and the HKIP journal in Hong Kong (the Hong Kong Intellectual).
During these 2 months, anyone can oppose your registration of the trademark.
To publish your trademark in the Gazette, you need to fill in a form called TM31, which will cost you RM 650.
5. Certificate of registration
If no one opposes your trademark registration after publishing it in the Gazette, it’s time to officially register your trademark, and to receive a certificate of registration.
How long time does it take to register a trademark in Malaysia?
If everything goes smoothly, you can manage the trademark registration within 20 weeks. That’s short, compared to Mainland China, for example, where registrations take everything between 12-24 months.
For a better overview of the different steps involved, and the time needed for each step, I recommend you to visit MyIPO’s website, that has an illustrative picture.
For how long time is my trademark valid?
Your certificate will be valid for 10 years, you also have the chance to renew your trademark, which will add on an additional 10 years.
How much does it cost?
The application itself costs RM 370 per application. You should make the payment either with cash, a check, or bank transfer to Perbadanan Harta Intelek Malaysia.
A fee of RM 650 will be added, for the advertisement in the Government Gazette.
In total, the trademark registration will set you back RM 1020.
Keep in mind that additional fees can incur, if you decide to hire a 3rd party, like a law firm.
How can I renew my trademark?
You an easily renew your trademark by filling in a document called TM12.
Are you late with the renewal? No worries. In that case, you just use the form called TM13.
The same as it goes in Hong Kong, for example, MyIPO needs to contact you in advance, before the trademark expires.
Registering a trademark in Malaysia brings many similarities to the processes used in Hong Kong. There’s much material available online, and you can also get help from MyIPO, which is the authority managing trademark registrations in Malaysia.
The trademark registration won’t set you back RM 1020, if everything goes according to plan. Be sure to have an extra budget, in case any additional fees incur.
Malaysia is a member of a number of conventions, including the Madrid Goods & Services and The Nice Classification, which makes things easier.
The time needed to register a trademark can be as little as 20 weeks, which is comparatively low, compared to Mainland China, for example.
If you have any questions, I would recommend you to contact MyIPO or Export2Asia directly, and we will consult you through the process.
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