Whether you do business in the United States, Malaysia or Brazil, you need to protect your brand. Trademarks or service marks are the words, names and symbols that brand your products or services as yours and not that of your competitors. The method to register a trademark in Malaysia depends on whether you're a Malaysian business or you're based elsewhere.
TL;DR (Too Long; Didn't Read)
Malaysian trademark law divides businesses into classes. To gain full protection, you must register your trademark in every class that you want covered. First, search the Malaysian trademark database to see if your mark is taken. If not, apply to register it and pay the appropriate fees.
What Good Are Trademarks?
Like copyrights and patents, trademarks are part of the world of intellectual property. The best trademarks are instantly recognizable, like Apple's half-eaten apple, the golden arches of McDonald's or Nike's swoosh symbol. These trademarks are worth millions because they help fans of the brand identify the products they want.
The Malaysian government defines a trademark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings". The sign can be a letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods, shape of package, color, sound, scent, hologram, positioning, sequence of motion or any combination of these options.
While you get to choose your own trademark, Malaysia does prohibit some choices:
- If it would confuse the public about the source of your products
- If your choice of trademark is contrary to law in some way
- Your trademark includes scandalous or offensive elements
- The trademark is prejudicial to Malaysian interests or security. Trademarks that incorporate inflammatory statements or words could fall into this category, for instance.
Why Register a Trademark in Malaysia?
Like the U.S., Malaysia allows you to use trademarks without registering them. Also like the U.S., when you register a trademark in Malaysia, it makes it easier to protect your mark.
If, say, you make your logo a trademark in Malaysia, registering it gives you the exclusive right to use it and the right to take legal action against anyone who infringes by using it without your consent. If there's any dispute over your right to the mark, a registration certificate from the Malaysian Registrar Office is considered conclusive proof.
Once you register a trademark in Malaysia, your rights are good for 10 years. Trademark renewal in Malaysia comes at the end of the decade and every 10 years after that.
The Trademark Class in Malaysia
Before you register a trademark in Malaysia, you need to identify your product or service trademark class in Malaysia. There are 45 classes, and your trademark is only protected for the classes you name on your application. You can file for multiple classes with one application form.
The Intellectual Property Corporation of Malaysia has a list of classes on its website so you can figure out in which trademark class in Malaysia (MyIPO) your products belong. For example:
- Class one is primarily chemicals for use in industry, science and photography as well as in agriculture, horticulture and forestry.
- Class two includes paints, varnishes, lacquers, anti-rust coatings, dyes, inks and natural resins.
- Class six includes common metals and their alloys, ores, metal buildings and building components, nonelectric metal cables and wires, metal hardware and safes.
- Class 11 covers equipment for lighting, heating, cooling, steaming, cooking, drying, ventilating and supplying water.
- Class 15 covers precious metals and jewelry.
- Class 23 covers yarns and threads.
- Class 28 includes games, toys, video games, gym and sports equipment and Christmas tree decorations.
- Meat and fish go in class 29, while coffee, tea and rice go in class 30.
- Tobacco products are in class 34.
- Class 35 covers advertising and business administration services. Insurance falls in class 36, while construction goes in class 37.
- Education, entertainment and sports go in class 41, while class 42 covers scientific and technological services.
If you want to register your mark in more than one trademark class in Malaysia, you'll pay more. Applying to register a trademark in Malaysia currently costs 950 ringgit (RM) per class — $1 equals a little more than 4 RM, though exchange rates fluctuate.
Search Before You Register
You can't make your logo a trademark in Malaysia if someone has already registered it. Rather than wasting money by applying for a trademark that's taken, you can search the MyIPO online trademark database to see if your preferred mark has been taken. You can also hire a trademark agent in Malaysia to do the work for you.
You or your agent can search the government's database for free or spend 250 RM per trademark class to have the government make the search. If you do it yourself and want to view or print specific trademark records, the cost is 5 RM.
A potential booby trap is figuring out whether any trademarks you find that look like your design are so similar that you're out of luck or distinct enough that you're still in the game. That's one reason for hiring a trademark agent in Malaysia: Good agents know Intellectual Property Corporation practices and trademark case law, so the agent may be able to make the call.
If you and your trademark agent are unsure whether your mark will fly, you can pay the Intellectual Property Corporation to give its assessment. Otherwise, you can just apply and hope for the best. Unfortunately, even if there's nothing registered that conflicts with your mark, the government could still reject your mark for being confusingly close to an established but unregistered mark.
Applying for Registration
Assuming everything looks good, you can apply to register the trademark in Malaysia in the classes you want. This is another advantage to hiring a trademark agent in Malaysia. Agents know the trademark class system and may be better able to identify the classes in which you need to register.
The application itself is simple and straightforward. The IPC wants your basic business information, a description and copy of the mark and specifics on the trademark classes for which you want to register.
If you're filing offline, you need to submit two copies of the application, one of which will return to you. You can pay the fee with cash, check, money order or credit card.
The Madrid System
Things may be simpler if you're an overseas country looking to expand into Malaysia. If you want to protect your trademark there, you don't have to file with the IPC if your home country is covered by the Madrid System. Malaysia joined this at the end of 2019.
The Madrid System simplifies managing and registering trademarks in the participating nations. Rather than registering a trademark in Malaysia, Indonesia, Japan and Ghana by going through each country's system or hiring multiple trademark agents, you file one single application and pay one set of fees. If you're domiciled, have a business in one of the Madrid nations or are a citizen of one of the Madrid nations, you can use the system.
The Madrid System doesn't override the Malaysian MyIPO's decision, however. If your mark conflicts with an established Malaysian trademark, MyIPO will tell you "no" whether you go through the Malaysian system or the Madrid System.
- United States Patent and Trademark Office: Trademark Basics
- Intellectual Property Corporation of Malaysia: Trademark Basics
- Intellectual Property Corporation of Malaysia: Applying for Trademarks
- Intellectual Property Corporation of Malaysia: Trademark Forms & Fees
- XE.com: XE Currency Converter
- World Intellectual Property Organization: Making a Mark
- Intellectual Property Corporation of Malaysia: Application for Registration of Trademark
- World Intellectual Property Organization: Madrid Agreement Concerning the International Registration of Marks
- World Intellectual Property Organization: Madrid – The International Trademark System
- United States Patent and Trademark Office: Madrid Protocol
- Search registered trademarks before starting the application process to ensure that your idea hasn't already been registered. The search can be conducted at the Public Search Room, MyIPO at the address above. A small fee of RM10 per hour applies.
Fraser Sherman has written about every aspect of business: how to start one, how to keep one in the black, the best business structure, the details of financial statements. He's also run a couple of small businesses of his own. He lives in Durham NC with his awesome wife and two wonderful dogs. His website is frasersherman.com