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Malaysia

Legal Basis Trade Marks Act 2019 effective 27 December 2019
Trade Marks Regulations 2019 effective 27 December 2019
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)
  • Madrid Protocol effective 27 December 2019
Cost of obtaining a trademark Please contact us at malaysia@mirandah.com
Average time to obtain a trademark 12 months
Official language for trademark prosecution Bahasa Malaysia or English
Registrable marks Any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion 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
Number of classes 45 (11th Edition Nice Classification)
Multiple class filing Available
Filing of series marks Available
Common objections Descriptiveness (Absolute grounds for refusal of registration)
Non-distinctiveness (Absolute grounds for refusal of registration)
Prior conflicting rights (Relative grounds for refusal of registration)
Extension of office action deadlines Available
Opposition term 2 months (extendible)
Term of trademark protection 10 years (renewable)
Grace period for 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
Specialised courts for IP Available
Outline of the enforcement steps Notice of Cease and Desist

Infringement

Passing-off
Application for a Trade Description Order under the Trade Descriptions Act 2011
Border Measures

Relief against groundless threats Available (Declaration / an injunction / Damages)
Declaration of non-infringement Available
Preliminary injunctions Available
Time frame for various legal actions 6 to 12 months
Alternative dispute resolution Limited to trade mark matters involving domain name dispute
Other relief for infringement Revocation Action
Civil remedies Injunction
Damages
Criminal Sanctions Trade Description Order
Monetary fines or imprisonment or bothBorder Measure
Prohibition of importation; seizure; detention; forfeiture of goods bearing counterfeit trademark
Other It is a criminal offence to represent a trademark as registered when in fact it is not. Sanctions may include monetary fines or imprisonment or both