FAQ

T1: How long will it take to conduct a trademark search?
5 - 7 working days.

T2: Does Malaysia use the international classification?
Yes.

T3: Are there any goods or services for which the mark cannot be registered?
No.

T4: Can a trademark be registered in the name of more than one applicant ( i.e. joint application)? If so, what are its requirements?
Yes, a statutory declaration duly signed and notarized in the name of all the applicants.

T5: Can an application be filed without its complete documents? If yes, what is the deadline for filing the documents?
Yes, as long as the following documents is submitted within certain period from the filing date:- 
(1) Statutory Declaration – 6 months;
(2) Priority Document – 3 months;
(3) Certified English Translation of the trademark – 6 months.

T6: May priority be claimed under the Paris Convention?
Yes, within six (6) months from the filing date of earlier application.

T7: What is the term of protection of a trademark? From what date is it calculated?
A trademark registration is valid for ten (10) years from the date of filing/priority and can be renewed every ten (10) years. 

T8: In case a trademark is not renewed in due time, and another company registers the same trademark, can the original owner oppose the registration?
Yes, the original owner can rely on his common law rights of first use.

T9: If the trademark has been filed incorrectly in the first, what documentation would be required to amend the official register to show the correct details?
Any amendment on the trademark that is still pending for registration, the applicant can submit Form TM26 together with the prescribed fees.

T10: Is use required before registration or for maintaining the registration in force?
Use is not required before registration but it may be subject to cancellation by any third party if they can prove that there has been non-use for a continuous period of at least three (3) years. 

T11: Can the assignment of an application be recorded?
Yes. If the assignment is filed when the trademark is still pending for registration, it will only be recorded once the trademark is registered and the registrar will issue the trademark registration certificate directly in the name of Assignee. 

T12: Is recording a license agreement compulsory? What are the consequences of non-recordal?
No

T13: Can recordal such as change of name, address, merger, assignment, license, etc., be made against pending applications?
Yes.

T14: Can an assignment be made with or without the goodwill?
The assignor can choose to assign the trademark to the Assignee either with goodwill or without goodwill. 

T15: Can the trademark application be opposed and what is the opposition period?
Yes, within two (2) months of the official gazette date.

T16: Can unregistered trademark be protected in Malaysia?
Yes, under the common law tort of passing off.

Address:

TAG Intellectual Property Consulting and Training SDN. BHD. (Company No. 1232009-M) Unit SO-7-7, Level 7, Menara 1, KL Eco City, Jalan Bangsar,

P.O. Box: 59200 Kuala Lumpur, Malaysia
Telephone: +60196335424
Fax:
Email: malaysia@agip.com
Contact: Nur Atiqah Samian

Trademarks

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