MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
See 2.3 Trade Mark Rights and 2.1 Types of Trade Marks on the different requirements for registering dif -
• representation of the trade mark; • specification of goods/services; • claim of priority (if applicable); and • declaration of use or intent to use. Filing Fees The fees are as follows: • MYR950 for each class by adopting specifications from the pre-approved list; • MYR1,100 for each class without adopting specifi - cations from the pre-approved list; and • an additional MYR50 for the second and each sub - sequent trade mark (up to a maximum of six) where a series of trade marks are being registered. Other Requirements Any person who claims to be the bona fide proprietor of a trade mark may apply for registration of the trade mark. Under Section 95 (2) of the TMA 2019, non- residents or those not primarily conducting business in Malaysia must appoint a local registered trade mark agent to act on their behalf. 4.5 Use in Commerce Prior to Registration Malaysia does not require proof of actual use before applying to register a trade mark but applicants must declare their intent to use the trade mark with the As part of its examination, the Registrar of Trademarks conducts a search of the Trade Mark Register to iden - tify existing registered or pending trade marks that may conflict with the application. If a conflict is found, a provisional refusal may be issued under Section 24 (2) of the TMA 2019 for trade marks identical or con - fusingly similar to existing trade marks. Under Section 24 (3) of the TMA 2019, registration is also refused for trade marks that are identical or similar to well-known trade marks, whether registered or unregistered, if such use could cause public confu - sion or damage the well-known trade mark proprie - tor’s interests. specified goods/services in Malaysia. 4.6 Consideration of Prior Rights in Registration
ferent types of trade marks. 4.2 Trade Mark Register
The Trade Mark Register which contains details on all filed and registered trade marks in Malaysia is main - tained by the Registrar of Trademarks and is publicly accessible through MyIPO’s IP online system. While it is not mandatory to conduct searches for existing trade marks before applying to register a trade mark, it is advisable to do so. 4.3 Term of Registration Duration of Trade Mark Registration A trade mark registration is valid for ten years from the date of registration and is renewable every ten years. Late Renewal and Restoration A renewal request must be made within six months of the registration’s expiry, or it will be deemed removed. The proprietor may request restoration within six months of removal or the registration ceases. Renewal only requires payment of the applicable fees. 4.4 Application Requirements Requirements and Procedures for Registration Applications must be filed with MyIPO, either online or manually. An application may be made in a single application listing goods or services belonging to sev - eral classes (ie, a multi-class application). The Registrar of Trademarks examines applications for compliance with the TMA 2019 and searches for conflicting trade marks. If the application meets reg - istration requirements, it is accepted, and the Regis - trar of Trademarks will publish the application in the Intellectual Property Official Journal for opposition purposes. If no opposition is filed, the trade mark will be registered. Filing Particulars Among other things, the application must include: • the applicant’s details: this is the name, address and nationality for individuals and company details for corporate entities;
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