MALAYSIA Law and Practice Contributed by: Tai Foong Lam and Amy Lim Yun Jin, Gan Partnership
2. Trade Marks 2.1 Legal Framework and Protectable Signs In Malaysia, trade mark protection is primarily gov- erned by the Trademarks Act 2019, which provides a framework for the registration and protection of trade marks. The Trademarks Regulations 2019 supplement the Trademarks Act 2019 by providing the procedural laws in trade mark applications. Under the Trademarks Act 2019, any traditional marks, such as words, logos, shapes, colours, sounds and scents, can be registered and, subject to certain con- ditions, non-traditional marks, such as holograms, moving images and three-dimensional shapes, can also be registered as trade marks. While registration provides the strongest legal protec- tion, unregistered trade marks are also recognised under the common law of passing off. In Malaysia, passing off is a legal doctrine that protects the good- will and reputation of a trader’s mark or business identity, even if the mark is not registered, provided that the elements for passing off are satisfied, includ- ing, amongst others, that the unregistered mark has gained goodwill and reputation amongst the public. 2.2 Requirements for Trade Mark Protection In general, the essential elements of trade mark pro- tection in Malaysia are: • distinctiveness, as the trade mark must be capable of distinguishing itself from the trade; • the trade mark must not be descriptive of the goods/services applied for; • not similar to or identical to prior marks; and • not against public morality and/or illegal. For continuous trade mark protection, whilst Malaysia allows applications by way of an intention to use, the registrant is required to use the trade mark within three years from the date of issuance of the notification of registration, failing which the trade mark shall be sub- ject to non-use cancellation proceedings by any third party. As such, continuous use of the trade mark since its registration is advisable.
Malaysia adopts the concept of adequate distinctive- ness. The evidence of use need not be substantial, but needs to be adequate. However, it is important to note that, for the purpose of overcoming an office action issued on the grounds of non-distinctiveness/descrip- tiveness, local examiners are more readily convinced if the applicant has substantial evidence of use and/ or evidence of use for more than five years. Following the new Trademarks Act 2019, famous and/or well-known marks are protected in Malaysia under Section 76 of the Trademarks Act 2019, even if not registered locally, provided that the well-known marks requirements are fulfilled. However, Malaysia’s law does not establish a formal or procedural avenue for registering a mark specifically as “well-known” or “famous.” 2.3 Trade Mark Registration System In Malaysia, to enforce infringement action under the Trademarks Act 2019, a trade mark registration is required. Alternatively, an action for common law passing off may be brought. A smooth trade mark registration process takes about nine months. Upon filing, the application first under- goes a formality validation to ensure that all proce- dural requirements are met. Once the application is deemed to have complied with the formality require- ments, it proceeds to substantive examination, where it is reviewed for registrability. If no office actions or objections are raised during this examination, the trade mark is accepted and published for a two- month opposition period, during which third parties may oppose the registration. If no opposition is filed within this period, the trade mark is officially regis- tered. An electronic notification of registration is then issued approximately two weeks after the registration is granted, confirming the successful registration of the trade mark. The official fees for a smooth trade mark registration process for one mark in one class are in the region of MYR70, depending on the specifications applied for. Multi-class applications are allowed in Malaysia, with a prescribed fee for each additional class.
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