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Registered Bumiputera Trademark Agents From Intellectual Property Corporation in Malaysia

TRADEMARK DEFINITION IN MALAYSIA

A distinctive mark, consists of words, logo, name, alphabets, numbers or combination of one or multitude elements, functions as a way to distinguish goods / services from one another, as a marketing tools, and as an aid to help customers to differentiate products. We provide services related to Intellectual Property services.

Registered Patent Agent | Registered Trade Mark Agent | Agent Registration of Industrial Designs | Registered Agents of Intellectual Property Corporation of Malaysia ( MYIPO )Listed Trademark-www.registercompany.com.my

Application for registration of a trademark ( Brand )

Subject to Trade Marks Act 1976 and the Trade Marks Rules , 1983.

An individual, company or firm may at any time make an application for registration of the trademark. However , a trademark to be registered must be different from any other trademark owners.

Similar trademark which has been registered could cause confusion to the public and can cause losses to the registered trademark owners in short and long term.

QUALITY FUNCTION

Customers choosing a trade mark based on reputation and quality of goods and services under the trade mark. For example, users will be more confident to buy Apple I Phone branded phones from other brands even though they are relatively expensive. Here, a trademark of Apple I Phone itself has been reflected in the quality of products offered.

IDENTITY FUNCTION

A trade mark allows consumers to identify the source or manufacturer of a product or service. For example the user will be able to identify that Milo and Nescafe Nestle issued by the company. So , Milo and Nescafe Nestle is the identity.

 

FUNCTION TO MAKE A CHOICE

Trade marks allow users to select items or services with ease. Imagine if all cell phone product has no trade mark, to how we want to tell the seller, the phone of what we want to buy.

THE MARKETING FUNCTION

Trade marks are important for an advertisement. Customers are more easily influenced by advertising a product.

ECONOMIC FUNCTION

A trade mark which has a high reputation will increase the value of the trade mark in the eyes of customers. With high values, the trademark owner has the option to license or transfer of ownership of the trade mark with high rewards. For example, many large companies like Disney to license the use of their trademark to other companies to manufacture products such as souvenirs and so on. Disney does not have to issue any capital to produce souvenirs and just need to collect royalty revenue from licensing its trade mark.

REGISTRATION BENEFITS

TRADEMARK EXCLUSIVE RIGHTS

The owner of a registered trademark retains exclusive rights for the usage of that particular marking the class that he / she registered. The owner maintains the rights to take legal actions against another party that are infringing his / her trademark, as long as the certificate is valid and not expired.

TRADEMARK CERTIFICATION

The owner of a registered trademark will be given a Trademark Certificate that can be use as evidence in the Court of Law, whenever he / she initiate legal actions under the Trademark Act 1976.The Trademark Certificate is only issued by The Malaysian Intellectual Properties, and bearing the Registrar signature.

TRADEMARK PROTECTION & CERTIFICATION VALIDITY

TRADEMARK PROTECTION

Trademark protection is governed by Trademark Act 1976. Its protection are only within the territories of respective country. An applicant who ­led a trademark for registration in Malaysia will only be given protection in Malaysia. If the trademark is used abroad, then the applicant needs to ­led another registration at that particular country, in accordance with the respective country Trademark Law.

TRADEMARK VALIDITY

The Trademark Certificate issued by the Registrar of Trademark is only valid within the period of 10 years. Once expired, the applicant will be needed to renew the Certificate, if he / she intends to extend the protection.

TRADEMARK APPLICATION & REQUIRED DOCUMENTS

MALAYSIAN / PERMANENT RESIDENT:

  • A copy of the logo to be registered, a copy of MyKad / MyPR
  • A copy of Form D (for Enterprise / Sole proprietorship)
  • A copy of Form 9 or Section 17 (for Sendirian Berhad / Private Limited.)
  • A copy of the Declaration (to be provided)
  • If the applicant wishes to apply to register a trade mark under the individual’s name, then just copy MyKad / MyPR required

NON-MALAYSIAN APPLICANT:

  • A copy of the logo to be registered, a copy of Company Registration Certificate In Origin Country
  • A copy of the Declaration (to be provided)
FAQ
  • What is a trademark?

    A trademark is a distinctive mark consists of words, logo, names, numbers, alphabets, combinations of one or multitude elements, functions a way to distinguish goods / services from one another, as an for a customer to differentiate products, and as a marketing tools. It is commonly called as ‘brand’.

  • What benefits do I gain when I register my trademark?

    As an owner of a registered trademark, you are entitled to have exclusive rights over the mark that you registered in the classes that you applied. These exclusive rights include the rights to monopoly the trademark and also the rights to take legal actions against any other parties that are using your mark without permission.

  • Who can apply to register trademark?

    A trademark can be registered by an individual who is a citizen of Malaysia, or a foreigner who holds Permanent Resident status, and he / she resides in Malaysia. Applicant can be also be a partnerships, company or society.

  • What is the process and timeline of a trademark application?

    Basically, there are three stages in a trademark application as shown below:

    Stages Estimated timeline – Search 1 week

    Application and Examination – 9 months

    Registration and Publication – 6 months

  • Meaning of trademark, defensive trademark and certification trademark?

    Defensive trademark is for a very well known mark like Mc Donald applied under classes which is not related to their business to prevent infringement and confusion to the public. Certification trademark is for certification body like Sirim.

  • How long will the application and certification process will take?

    The application will take 24 hours to be valid. Once 24 hours period passed, applicant may use TM with their mark. The certification process will take an estimation time of 12 months and 2 weeks. Once the Trademark Certificate has been obtained from The Registrar Office, the mark may use (R) for the period of 10 years.

  • What is the process and timeline of a trademark application?

    Basically, there are three stages in a trademark application as shown below:

    Stages Estimated timeline – Search 1 week

    Application and Examination – 9 months

    Registration and Publication – 6 months

  • What will happen in each of the stages mentioned above?

    a) Search

    A search will be conducted to ascertain if the mark is available for registration. Registrability advice will also be provided. Note that search is optional but it is recommended.

    b) Application and Examination

    If the search results are satisfactory, a formal application can then be filed with the Registrar (MyIPO). The Registrar usually requires 9 months to issue an examination report. From the examination report, the application can either be accepted or objected.

    If accepted, it will proceed to the third stage (i.e. Registration and Publication). If objected, an appeal will have to be filed to overcome the objection.

    c) Registration and Publication

    Upon receiving notice of acceptance from the Registrar, a formal form will have to be filed with the Registrar. The Registrar will then arrange for publication of the trademark in the gazette for opposition purposes. There will be a 2-month opposition period. If no one opposes your trademark, it will proceed to issuance of registration certificate in about 4 months.

  • How long will a registered trademark be protected?

    A registered trademark will be protected for 10 years and renewable only after 10 years. It can be renewed continuously without limitation.

  • Can I register multiple Classes under one application?

    Currently, Malaysia still does not allow multiple Class application. A separate application has to be filed for each separate Classes. However, multiple Class application is expected to come into force very soon.

  • What is a trademark Class?

    Malaysia follows the Nice Classification which is an international classification of goods and services applied for the registration of marks. Different types of goods and services are categorized according to different Classes. There are a total of 45 Classes whereby Class 1 – 34 are for goods and Class 35 – 45 are for services.

  • Do I need to renew my Trademark Certificate every year?

    No. You only need to renew your Trademark Certificate once every 10 years.

  • What are the benefits of obtaining a trademark registration?

    a) You will obtain the exclusive right to use the trademark for the registered goods or services to the exclusion of others

    b) Prevent third party from registering a similar/identical mark which might affect your  rights. The Registrar will block any confusingly similar trademarks from registering

    c) Prima facie evidence of ownership. To prove ownership of the trademark

    d) Easy enforcement (e.g. raid) against fake products / services

    e) Able to license or assign your trademark

    f) Comply with the requirements of advertising, international trade and ecommerce

  • Should I register my trademark in a particular colour(s) or black-and-white?

    It is advisable not to restrict your trademark to any particular colour(s) because when a trademark is registered without limitations as to colour, it shall be deemed to be registered  for all colours.

  • Can I group several similar marks together and register them under one application?

    Yes, it is possible to do so by filing them as series of marks. Note that those marks must resemble each other in material particulars.

  • What should be avoided in a mark for registration?

    a) Name of a place (i.e. Paris, Italy, Malaysia)

    b) Single or dual letter of the alphabet (e.g. X, CK) as it is too common

    c) Simple numerical combination (e.g. 437, 595) as it is too common

  • What cannot be registered in accordance to Malaysian laws?

    a) The words “Bunga Raya” (hibiscus) and the representations of hibiscus

    b) The representations of any of the royal palaces or of any building owned by the Government

    c) The word “ASEAN” and the representation of the ASEAN logo

    d) The words “Red Crescent” or “Geneva Cross” and representations of the Red Crescent, the Geneva Cross and other crosses in red, or the Swiss Federal Cross in white or silver on a red ground

  • What marks can be accepted for registration?

    a) The signature of the applicant or his predecessor in his business

    b) Invented word(s)

    c) Word(s) that is not descriptive of the goods/services

    d) Any distinctive mark that is shown, by evidence, to be factually distinctive

  • I have been told that in the application you need to choose your trademark classes. How many classes are there in the trademark classification?

    There are 45 classes in total within the trademark classification lists. Each and every classes have their own goods or services that they represent.

  • Class of goods and services?

    Trademark Classes.”

    CLASS 1
    Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry

    CLASS 2
    Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists

    CLASS 3
    Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

    CLASS 4
    Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting

    CLASS 5
    Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbi-cides.

    CLASS 6
    Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores

    CLASS 7
    Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission com-ponents (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

    CLASS 8
    Hand tools and implements (hand-operated); cutlery; side arms; razors

    CLASS 9
    Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (super-vision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, trans-forming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

    CLASS 10
    Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials

    CLASS 11
    Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes

    CLASS 12
    Vehicles; apparatus for locomotion by land, air or water

    CLASS 13
    Firearms; ammunition and projectiles; explosives; fireworks

    CLASS 14
    Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewel-lery, precious stones; horological and chronometric instruments

    CLASS 15
    Musical instruments

    CLASS 16
    Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding mate-rial; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for pack-aging (not included in other classes); printers’ type; printing blocks

    CLASS 17
    Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal

    CLASS 18
    Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

    CLASS 19
    Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transport-able buildings; monuments, not of metal

    CLASS 20
    Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics

    CLASS 21
    Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making mate-rials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glass-ware, porcelain and earthenware not included in other classes

    CLASS 22
    Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials

    CLASS 23
    Yarns and threads, for textile use

    CLASS 24
    Textiles and textile goods, not included in other classes; bed and table covers

    CLASS 25
    Clothing, footwear, headgear

    CLASS 26
    Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers

    CLASS 27
    Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)

    CLASS 28
    Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees

    CLASS 29
    Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats

    CLASS 30
    Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

    CLASS 31
    Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and veg-etables; seeds; natural plants and flowers; foodstuffs for animals; malt.

    CLASS 32
    Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

    CLASS 33
    Alcoholic beverages (except beers)

    CLASS 34
    Tobacco; smokers’ articles; matches

    CLASS 35
    Advertising; business management; business administration; office functions

    CLASS 36
    Insurance; financial affairs; monetary affairs; real estate affairs

    CLASS 37
    Building construction; repair; installation services

    CLASS 38
    Telecommunications

    CLASS 39
    Transport; packaging and storage of goods; travel arrangement

    CLASS 40
    Treatment of materials

    CLASS 41
    Education; providing of training; entertainment; sporting and cultural activities

    CLASS 42
    Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software

    CLASS 43
    Services for providing food and drink; temporary accommodation

    CLASS 44
    Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services

    CLASS 45
    Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

  • Do I need to apply in all 45 classes?

    Although each application of trademark only protects you in one class, there is no need to apply for all 45 classes. You only need to apply for the classes that are relevant to your products / services.

  • Is there any guarantee that my application will get certified?

    All trademark applications are subjected to approval by The Registrar Office. We do not guarantee the success of an application, however we will advise our clients on trademark application, registration procedure and documentation needed. We will also advise our clients according to the pre – registration search as to avoid registering trademark that have been registered earlier.

TRADEMARK PRICE AND FLOWCHART REGISTRATION

FOR MALAYSIAN APPLICANT – RM2500.00 (Additional cost will be incurred in the event of objection/opposition)

Note:The costs for one trademark in one class includes search fee, application fee, a service fee and consultations are as follows:

TRADEMARK SEARCH – RM 430.00 (PAYMENT STAGE 1)

*Takes around 1 week to prepare a search report
*Advice on classification and search result

TRADEMARK APPLICATION FILING – RM 920.00 (PAYMENT STAGE 2)

*After filing, it will take around 9 months for the
*Registrar to issue a report.
*If objected, it will not proceed to registration.
*Appeal is required.
*Drafting for specification of goods/service

TRADEMARK REGISTRATION – RM 1150.00 (PAYMENT STAGE 3)

If accepted and no opposition from third party, it will take another 6 months for the Registrar to issue an official certificate.

NOTE

Trademark search is optional but it is highly advisable, to ascertain the availability and registrability of a trademark.

The total cost (for one trademark in one class) including search is RM2,500.00 net for a smooth application. Payment shall be made upfront according to stages.

Additional cost will be incurred in the event of objection/opposition.

A registered trade mark will be valid for 10 years and renewable only after 10 years.

TRADEMARK PRICE AND FLOWCHART REGISTRATION

FOR FOREIGN APPLICANT – USD 835.00 (Additional cost will be incurred in the event of objection/opposition)

Note:The costs for one trademark in one class includes search fee, application fee, a service fee and consultations are as follows:

TRADEMARK SEARCH – USD 125.00 (PAYMENT STAGE 1)

*Takes around 1 week to prepare a search report
*Advice on classification and search result

TRADEMARK APPLICATION FILING – USD 330.00 (PAYMENT STAGE 2)

*After filing, it will take around 9 months for the
*Registrar to issue a report.
*If objected, it will not proceed to registration.
*Appeal is required.
*Drafting for specification of goods/service

TRADEMARK REGISTRATION – USD 380.00 (PAYMENT STAGE 3)

If accepted and no opposition from third party, it will take another 6 months for the Registrar to issue an official certificate.

NOTE

Trademark search is optional but it is highly advisable, to ascertain the availability and registrability of a trademark.

The total cost (for one trademark in one class) including search is RM2,500.00 net for a smooth application. Payment shall be made upfront according to stages.

Additional cost will be incurred in the event of objection/opposition.

A registered trade mark will be valid for 10 years and renewable only after 10 years.

TRADEMARK STAGE APPLICATION AND REGISTRATION

The first process is to do a trademark search to ensure that the brand / logo that you want to register. If the search shows that the brand has not been registered by any party then we will proceed for application. After the application done, the status of TM can be used.

Each brand registration is valid for 10 years and can be renewed every 10 years. Applications can be made under the name of the individual or company / business.

If you are interested, please submit a logo that you want to register to dmcorporatebuilders@gmail.com or walk in to our office together with search and application fee as mentioned above. Payment can also be made directly to our company and payable to DM CORPORATE HOLDING (M) SDN BHD (PUBLIC BANK BERHAD – A / C NO: 3811766201).

After the search is complete, our trademark agent will provide full report on the trademark. We will inform subsequent actions and procedures as well as a list of documents required for further action. If the application can be proceed, then the balance payments must be made.

The search process takes 1-5 working days, the process for submitting applications within 3-5 working days. Letter of acceptance or rejection of the trade mark application will be issued by the Registrar or Intellectual Property Department, and usually takes 9-11 months.

If a letter of acceptance or approval letter issued by the Intellectual Property Office, the final payment should be made for gazetted your brand and spread the news process and this will take about 6 months. If there is no arbitrary opposition from the public, the letter of approval to use your brand will be released and this allows you to use the R status for 10 years.

To get full information regarding your trademark registration normally will take a minimum of 18-19 months and there is no guarantee that approval can be given by our party although all payments had been made. Intellectual Property Office is responsible for giving the grant or reject your brand with reason.

For more information please call, sms or whatsapp to Mr. Mohd Daud Bin Abdul Raman at 019-3698122.

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