Any mark used or proposed to be used in relation to goods or services to indicate a connection in the course of trade between the goods or services and the person having the right to use the mark can be registered. In this regard "mark" includes any device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these elements. Marks in other than English or Malay are also prima facie registrable although certified translation and transliteration of the marks will be required to be furnished. The registration of trade marks in Malaysia is governed by the Trade Marks Act 1976 (the “TMA”) and Trade Marks Regulations 1997.
Applicant for registration of a trade mark
Any person (an individual, corporation or business) who claims to be the bona fide proprietor of the mark may apply for trade mark registration.
Reasons for registering a trade mark
Registration of a trade mark conveys exclusive rights to the registered proprietor to use the mark on the goods/services for which the mark is registered. The proprietor of a registered mark has, prima facie, the right to take legal action against wrongful use of the registered mark or any confusingly similar mark in relation to the goods/services in respect of which the mark is registered. If the trade mark is not registered, the proprietor of the mark will have to rely on the common law remedy of passing off, which can be more difficult and expensive to establish.
Criteria for registration
A mark must be sufficiently distinctive in order to be registrable, in that the mark must be able to distinguish the goods/services bearing the mark from goods or services which do not. Generally, marks which have direct reference to the character or quality of the goods or services, geographical names and surnames may not be considered distinctive and therefore may not be registrable. Also, marks which are confusingly similar to a prior mark or which are deceptive or contrary to law or morality may not be registrable.
By virtue of amendments to the Trade Mark Act which came into force on 1 August 2001, a mark shall not be registered if it is identical with or so nearly resembles a mark well known in Malaysia for the same goods or services of another proprietor or if it is well-known and registered in Malaysia for goods or services not the same as those of the subject application provided that use of the mark in relation those goods or services would indicate a connection between the goods and services of the proprietor of the well-known mark and the interests of the proprietor are likely to be damaged by such use.
There is no express definition of a well-known mark in the Act. However, it is provided that Article 6bis of the Paris Convention and Article 16 of the TRIPs Agreement shall apply for the purpose of determining whether a mark is well-known. Likewise, a mark shall also not be registered if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication for such goods in Malaysia will mislead the public as to the true place of origin of the goods.
A similar prohibition of registration is also provided in respect of a mark for wines or spirits which contains or consists of a geographical indication identifying wines or spirits, not originating in the place indicated by the geographical indication in question. However, a mark shall not be refused registration by reason of it containing or consisting of a geographical indication as expressed above if the application was made in good faith, or if the mark had been continuously used in good faith in the course of trade by the applicant or his predecessor in title either before the commencement of the Geographical Indications Act 2000 (which came into force at the same time as the relevant amendments to the TMA, that is, 1 August 2001) or before the protection of the geographical indication in its country of origin.