Top 5 Must-Know Requirements to Register a Trademark in Malaysia

IP Gennesis
May 29, 2024
4 min read

Updated: Feb 7

Thinking of Register a Trademark in Malaysia?

Registering a trademark is one of the smartest moves you can make to stand out in the market and keep your brand safe from copycats. But before you dive in, you need to know the key requirements to get your trademark approved.

This easy-to-follow guide breaks down the top 5 must-know requirements for trademark registration in Malaysia under the Trademarks Act 2019 (TMA 2019). Get these right, and you’ll be well on your way to securing your brand’s legal protection!

Top 5 Requirements to Register Trademark in Malaysia. Two figures shaking hands, checklist with "Registered Trademark" stamp, and trophy.

What is a Trademark?

First things first—what exactly is a trademark? It’s not just a name or logo; it’s your brand’s identity, helping customers recognize and trust your business. According to the Malaysian Trademarks Act 2019, a trademark can be:

Words, letters, names, or signatures
Numbers or symbols
Logos, labels, or packaging designs
Shapes, colors, sounds, or even scents
Holograms, movement sequences, or any combo of these

But having an idea for a trademark isn’t enough. It has to meet specific legal criteria. Let’s dive into the top 5 requirements to get your trademark registered hassle-free!

1. Your Trademark Must Be Unique

Your trademark has to stand out. It must be distinctive and not something commonly used in your industry. This means your trademark should be unique enough to be easily distinguished from others in the same field.

An invented or newly coined name would be great. Also, it is important to ensure the name is not some words which are commonly used by other players in the same industry.

For example, if you’re selling shoes, calling your brand “Best Comfortable Shoes” won’t cut it. But a made-up word like “Zyphor” or something creative like would work much better. The more unique, the better your chances of approval!

2. Your Trademark Can't Directly Describe Your Product or Service

Your trademark should not directly describe what you are selling. For example,

❌ Wrong: Using “Apple” for selling apple (directly descriptive)

✅ Right: Using “Apple” for selling phone and computer (unique and non-descriptive)

Another example is, a trademark must not directly describe the qualities, characteristics, or geographical origin of the goods and services.

For instance, you cannot trademark generic terms like "Cold Beer" for a beer brand because it directly describes the product and its qualities and characters.

However, “Blue Moon” may not be invented words, but it is registrable because it has not relevance to beers!

3. Your Trademark Must Not Be Offensive or Against Public Interest

Your trademark shouldn’t include anything that’s offensive, misleading, or against Malaysian laws and cultural norms. Avoid using:

Vulgar or offensive words
Religious or political references
Symbols or words that could create controversy

So, it is always important to make substantive effort in researching and understanding the local customs and culture. There is no straightforward formula in achieving this, as what’s considered acceptable in one country may not be okay in another.

This requirement underscores the government's commitment to maintaining harmony, stability, and integrity within the nation's socio-political landscape.

4. Avoid Using Place Names, Official Symbols or Flags in Your Trademark

If your trademark includes country names, city names, or official symbols, it might get rejected. For example, “Sabah Tea” could be problematic because Sabah is a well-known location in Malaysia. It also ensures that geographical names remain accessible for common use by the public and do not become subject to proprietary rights.

Similarly, you can’t use flags or national emblems unless you have official permission. If your brand name includes a location, consider registering it as a Geographical Indication (GI) instead.

The above are known as Absolute Grounds for Refusal of Registration, and they are only some of the requirements laid down in Section 23 of the Malaysian Trademarks Act 2019.

As we can see, absolute grounds for refusal mainly deals with inherent design or concept of the trademark itself, not so much about similarity with other trademarks.

The issue of similarity with other trademarks falls under the purview of Relative Grounds for Refusal of Registration, which will be explained below.

5. Your Trademark Must Not Be Confusingly Similar to Existing Trademarks

To avoid confusion and legal trouble, your trademark shouldn’t be identical or too similar to an existing one. If your name, logo, or design is too close to another registered trademark, your application will likely be rejected.

This is known as Relative Grounds for Refusal pursuant to Section 24 of the Trademarks Act 2019. The Registrar shall refuse to register your trademark if there exists a likelihood of confusion on the part of the public if it is identical or confusingly similar with an earlier trademark.

Many people have thought that it is an infringement if two trademarks are similar. However, the reality is similarity per se is acceptable, so long as it does not lead to a likelihood of confusion or deception. This principle was laid down by the Court of Appeal in the Malaysian case Bata Ltd v Sim Ah Ba @ Sim Teng Khor & Ors (trading as Kheng Aik Trading) (2006] 6 MLJ 445.

In determining whether two trademarks are confusingly similar, we do not dissect and compare the words part by part. We must consider all the surrounding circumstances, including:

The idea conveyed by both trademarks must be compared
1st syllable of the trademarks is of importance
How they sound and look, when compared as a whole
Trade channel of the goods and services
How customers perceive them (imperfect recollection)
Essential features of the trademarks

So it's always better do to a thorough search and due diligence in the Government Trademark Office before submitting your application. With this, you can mitigate the risk of potential conflicts and legal disputes, thus fortifying your brand protection strategies.

In Summary

Registering a trademark in Malaysia isn’t just about picking a name and filing paperwork—it requires careful planning. By ensuring your trademark is unique, not overly descriptive or offensive, and doesn’t conflict with existing trademarks, you’ll have a much smoother application process.

Need help with your trademark registration?

Written by,

Lawrence Tan

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor (Non-Practising)

Disclaimer: The above are meant for general information purposes and do not constitute legal advice. Please do not hesitate to contact us if we could be of assistance!