MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
Registrability of Specific Marks Trade marks containing special emblems, such as national flags or royal arms are not registrable unless the applicant provides consent from the relevant authorities. Section 23(5)(h) of the TMA 2019 prohibits the registration of a trade mark that contains a word which is the commonly used or accepted name of a single chemical element or chemical compound, and it extends to words which are declared by the World Health Organisation as an international non-proprietary name. Regulation 4(1) of the Regulations also prohib - its the registration of trade marks that include names, initials or flags of international organisa - tions or member countries. Well-Known Marks Under Section 76 of the TMA 2019, a well-known mark will be entitled to protection in Malaysia regardless of whether the mark is registered or is subject to a pending application in Malaysia, and whether or not the proprietor of the mark carries on business, or has any goodwill, in Malaysia. 2.2 Essential Elements of Trade Mark Protection Elements Required to Qualify for Trade Mark Protection Under Section 3(1) of the TMA 2019, the fol - lowing elements are required to qualify for trade mark protection: • a sign; • capable of being represented graphically; and • capable of distinguishing goods or services of one undertaking from those of other under - takings.
• a shape resulting from the nature of the goods; • a shape necessary for a technical result; or • a shape that adds substantial value to the goods. In respect of trade marks containing the name of another person, whether living or dead, the applicant is required to provide the Registrar of Trademarks with a letter of consent from that person, if living, or of the representative of that person if deceased. Under Section 72(1) of the TMA 2019, a col - lective mark distinguishes goods or services of association members and is governed by the First Schedule of the TMA 2019, which covers registration, use and infringement rules. Section 73(1) of the TMA 2019 defines certifi - cation marks as signs indicating that goods or services meet specific criteria, such as quality or origin. Their registrability is governed by the Second Schedule of the TMA 2019. Geographical indications (GIs) are governed by the Geographical Indications Act 2022. Unlike trade marks, GIs cannot be created but are rec - ognised based on the natural link between the product and its origin. GIs identify the product’s region rather than a specific commercial enter - prise, and all producers in that region may use the GI if their goods meet the established stand - ards. Industrial designs are generally protected under the Industrial Designs Act 1996. Designs or product packaging can be protected by way of trade mark protection so long as they can func - tion as a source identifier used to distinguish one’s goods and services from those of other traders.
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