Malaysia (MY)

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07-31-2012 (Newsletter Issue 12/12)
10th Edition of Nice Classification
The Malaysian Trademark Office has adopted the 10th Edition of Nice Classification as of January 1, 2012. Applications filed after December 31, 2011 are classified according to the 10th Edition.

Application filed before January 1, 2012 are classified according to the 9th Edition of Nice Classification. The Trademark Office also indicated that there will be NO re-classification of applications filed before January 1, 2012.

Source: Simonian IP, USA

02-21-2012 (Newsletter Issue 3/12)
Industrial Design Regulation Updated
The Malaysian Intellectual Property Corporation (MyIPO) has introduced some changes to the Industrial Design Regulations, effective on February 15, 2012.

Changes are:
1) Electronic filing of design applications and other documents throughout the prosecution of a design application with MyIPO are allowed. A document which is electronically filed is deemed to be effected at the time the document is accepted by the electronic filing system.
2) Increase of official fees, ranging between 30-50% for all stages of the prosecution process.
3) One copy of the representation of the design is now needed for the filing process. Previously 6 copies were needed.
4) While previously a Power of Attorney (Form ID 10) was needed for each individual application, a Letter of Authority has been introduced now, which will allow the agent to sign the foirm ID 10 for a number of design applications. The Letter of Authority will be needed at the filing stage to secure the finling date and application number. If the original letter cannot be obtained in sufficient time, a copy of the letter will be accepted by MyIPO, with the condition that the original will soon follow.

Source: KASS International Sdn Bhd, Malaysia

08-01-2011 (Newsletter Issue 10/11)
Notices on Extension of Time
The Intellectual Property Corporation of Malaysia issued Notices on Extension of Time for trademark matters effective from July 1st, 2011

The Notices apply across all applications/registrations which may require any form of extension of time, e.g. for filing responses to Office Actions or taking any proceedings under the Trademarks and Patents Acts and Regulations. A request for extension will be granted for a period of one (1) month up to a maximum of six (6) months from the initial deadline.
Any further requests for extension of time will not be entertained unless accompanied by a statement of case in the form of a Statutory Declaration with reasonable grounds for the Registrar’s consideration.
If the applicant is unable to respond within the granted extension of time, the applicant shall be deemed to have abandoned his application.

Source: KASS International Sdn Bhd, Malaysia

02-21-2011 (Newsletter Issue 3/11)
Trademark Regulations Changed
The Intellectual Property Corporation of Malaysia (MyIPO) has announced some major amendments to the Trademark Regulations, introducing several new Regulations and amendments effective by February 15th, 2011.

Major amendments effects for example the
- Procedure and schedule of fees
- Introduction of electronic filing
- Expedited examination

For more information about the updated Trademark Regulations please click here

Source: www.myipo.gov.my and
KASS International Sdn Bhd, Malaysia

Legal basis is the Trademark Act of 1976, last amendment in force since February 15th, 2011.
The principles of “common law” apply.
Trademark protection for services has been possible since December 1st, 1997.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices and any combination of the mentioned signs. Nontraditional marks (like sound marks, olfactory marks or three-dimensional forms) are not registrable in Malaysia currently. However the Intellectual Property Corporation of Malaysia (MYIPO) has proposed amendments to the act to include nontraditional trademarks.
The following trademark types are registrable: trade marks, service marks and certification marks.
The application is filed at the Trademark Office.
A separate application has to be filed for each class.
Foreign applicants need a local agent.
Foreigners can only apply for a trademark through a Malaysian agent.
A power of attorney is not needed.
A Statutory Declaration declaring bona fide ownership of the mark, is needed.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is about 2 years, if there are no objections or oppositions.
The trademark application is published for opposition purposes in the “Government Gazette” prior to registration.
National:
The opposition period is 2 months from publication date of the application.

Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
If for a continuous period of at least 3 years the trademark has not been used, it may be subject to cancellation.
The official application fee for registration of a trademark is MYR 370.00 (approx. EUR 89.00) per class and MYR 330.00 (approx. EUR 79.00) per class for electronic filing.)
There is another official fee payable when the mark is accepted and ready for publication in the Gazette. It is MYR 650.00 (approx. EUR 156.00) per class and MYR 600.00 (approx. EUR 144.00) per class for electronic filing.
Trademark Licence Agreement
In Malaysia a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark may be licensed for some or all of the goods or services covered. Licences may be exclusive, non-exclusive or sole. The sale of a registered trademark does not automatically terminate the licence. The proprietor of a trademark shall retain and exercise control over the use of the trademark and the quality of the goods or services provided by the licensee in connection with the mark.

Recordal
There are provisions in law for the recordal of a licensee. The recordal of a licence is voluntary but advisable. There is no time frame for a recordal.

An official form must be filed with the Registry, stating the following:
1. The representation of the registered trademark
2. The names and addresses of the parties
3. The goods/services in respect of which a recordal is proposed. Any conditions or restrictions proposed with respect to the characteristics of the licensed goods/services, the mode or place of permitted use and any other relevant matter
The duration of the permitted use
4. The effective date
5. Whether the user is to be a sole, exclusive or non- exclusive user

No further documents are required for a recordal.

Effectiveness
The licence becomes effective and enforce-able against third parties upon registration of the licensee. The appointment of the user registration will be published in the Trade Mark Gazette.

Infringement Proceedings
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. The registered user is entitled to call upon the registered proprietor to institute proceedings for trademark infringement. If the registered proprietor refuses or neglects to do so within two months after having been called upon, the registered user may institute proceedings for infringement in his own name and shall make the registered proprietor a defendant. There is no requirement for the licensee to cite the proprietor as co-defendant in such proceedings, unless otherwise agreed upon in the contract.
Search type First class Add. class
Word Mark Search (availability) 320,00 € 270,00 € 
Word Mark Search (identical) 300,00 € 250,00 € 

The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
12-15-2011
Henry Goh & Co. Sdn. Bhd., Kuala Lumpur, Malaysia
KASS International Sdn. Bhd., Kuala Lumpur, Malaysia

Licensing
12-15-2011
Henry Goh & Co. Sdn. Bhd., Kuala Lumpur, Malaysia
KASS International Sdn. Bhd., Kuala Lumpur, Malaysia


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Intellectual Property Corporation of Malaysia (Perbadanan Harta Intelek Malaysia)
Unit 1-7, Ground Floor
Menara UOA Bangsar
No. 5 Jalan Bangsar Utama 1
59000 Kuala Lumpur


Tel +60 3 22 99 84 00
Fax +60 3 22 99 89 89
Mail ipmalaysia@myipo.gov.my
www.myipo.gov.my