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Trademark System in Malaysia |
Malaysia is a nation in Southeast Asia consisting of 13 states and 3 Federal Territories, with two geographical regions separated by the South China Sea: Peninsula Malaysia and Borneo. Malaysia is home to about 29 million people of various races, mainly Malays, Chinese and Indians with a number of other ethnicities as well. The capital city is Kuala Lumpur while Putrajaya is the seat of the federal government. As of 2010, the nation's gross domestic product (GDP) is estimated to be US$414 billion with $14,700 per capita.
| Legal basis |
Trade Marks Act 1976 effective 1 September 1983
Trade Marks (Amendment) Act 1994, 2000 and 2002, the latter effective 3 March 2003
Trade Marks Regulations 1997 effective 1 December 1997
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| Major international treaties signed |
Paris Convention effective 1 January 1989
Nice Agreement effective 28 September 2007
Vienna Agreement effective 28 September 2007
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
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| Cost of obtaining a trademark |
Please contact us at
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| Average time to obtain a trademark |
14 to 18 months |
| Official language for trademark prosecution |
Bahasa Malaysia or English |
| Registrable marks |
Any distinctive device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof |
| Filing and prosecution procedures |
Stage 1: Filing
Stage 2: Examination
Stage 3: Advertisement
Stage 4: Opposition (if any)
Stage 5: Registration
Stage 6: Renewal
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| Number of classes |
45 (Nice Classification (8th Edition)) |
| Multiple class filing |
Not available |
| Filing of series marks |
Available |
| Necessary document for filing |
Statutory Declaration of Bona Fide Ownership of Mark |
| Common objections |
Descriptiveness
Non-distinctiveness
Prior conflicting rights
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| Extension of office action deadlines |
Available |
| Opposition term |
2 months (extendible) |
| Term of trademark protection |
10 years (renewable) |
| Restoration of lapsed trademark |
Within 12 months from the expiry of the last registration |
| Parallel Imports |
Available |
| Minimum period of use to avoid non-use cancellation action |
3 years (continuous) |
| Useful links |
Trademark Agents and Attorneys in Malaysia
www.myipo.gov.my |
| Infringement offence |
Available |
| Specialized courts for IP |
Available |
Outline of the
enforcement steps |
Civil
Infringement pursuant to the Trade Marks Act 1976
Passing-off
Quasi-Criminal
Application for a Trade Description Order under the Trade Descriptions Act 1972
Border Measures |
| Relief against groundless threats |
Available (Summary Judgment) |
| Declaration of non-infringement |
Available |
| Preliminary injunctions |
Available |
| Time frame for various legal actions |
12 to 36 months |
| Alternative dispute resolution |
Limited to trade mark matters involving domain name dispute |
| Availability of damages and other relief for infringement |
Expungement Action |
| Civil remedies |
Injunction
Damages
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| Criminal Sanctions |
Trade Description Order
Monetary fines or imprisonment or both
Border Measure
Prohibition of importation; seizure; detention; forfeiture of goods bearing counterfeit trademark |
| Others |
It is an offence to represent a trademark as registered when in fact it is not. Criminal sanctions include monetary fines or imprisonment or both |
Statistics on Application and Registration of Trade Marks from 2000 to 2010
|
Year
|
Application
|
Registration
|
|
|
Domestic
|
Foreign
|
Total
|
Domestic
|
Foreign
|
Total
|
|
2000
|
6303
|
12500
|
18803
|
449
|
1328
|
1777
|
|
2001
|
6525
|
10078
|
16603
|
1570
|
5341
|
6911
|
|
2002
|
7661
|
8785
|
16446
|
4056
|
7072
|
11128
|
|
2003
|
8327
|
9439
|
17766
|
3014
|
9108
|
12122
|
|
2004
|
10406
|
10337
|
20743
|
3243
|
8473
|
11716
|
|
2005
|
10479
|
11668
|
22147
|
3683
|
7771
|
11454
|
|
2006
|
11209
|
12840
|
24049
|
5651
|
10108
|
15759
|
|
2007
|
12289
|
13605
|
25894
|
8108
|
17382
|
25490
|
|
2008
|
12562
|
13472
|
26034
|
9049
|
18798
|
27847
|
|
2009
|
12810
|
11260
|
24070
|
5438
|
9534
|
14972
|
|
2010
|
13099
|
13271
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26370
|
5642
|
8652
|
14294
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Total
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111670
|
127255
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238925
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49903
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103567
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143470
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(Source: Intellectual Property Corporation of Malaysia)
Disclaimer: The information provided on this website is intended to serve as a general guideline and is not intended as legal advice. Although we endeavour to keep the information up to date and correct, we make no representations or warranties of any kind, express or implied, about the completeness and accuracy with respect of the website or the information. Please contact us for further information.
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