Notes on trademark registration in Malaysia

A trademark is an important thing commonly used for branding and identity. It need to be legally registered in order to prohibit infridgement or unauthorized use of it. Although it is normally registered by business organization, individuals (such as freelancers) can also register trademark for their products and/or services.

Here are some guidelines to follow, according to the Trade Marks Act 1976 if Malaysia. By following the guidelines below, it will probably save you time, effort and cost in case you are trying to register your own trademark.

In order to be accepted for registration, a trade mark need to contain or consist of at least one of the following particulars:

• The name of an individual, company or firm represented in a special or particular manner.
• The signature of the applicant for registration or of some predecessor in his business.
• An invented word or words.
• A word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname.
• A distinctive mark. It must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services.

A trade mark is prohibited:

• If the use of which is likely to deceive or cause confusionto the public or would be contrary to law.
• If it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law.
• If it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation.
• If it is identical with or so nearly resembles a mark which is well known in Malaysia for the same goods or services of another proprietor.
• If it is well known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for: Provided that the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well known mark, and the interests of the proprietor of the well known mark are likely to be damaged by such use.
• If it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods.
• If it is a mark for wines which contains or consists of a geographical indication identifying wines, or is a mark for spirits which contains or consists of a geographical indication identifying spirits, not originating in the place indicated by the geographical indication in question.