Save Your Trademark Renewal Date!
Updated: Jun 4
Just imagine when you are contentedly doomscrolling the internet one fine day and the next thing you see is someone using your trademark. You remember that you have registered your trademark in Malaysia before and now you want to sue the infringer. Alas, you now notice that your trademark has expired and you have lost the statutory right to sue the infringer!
The reality is you may be too late to salvage the trademark and have indirectly given the rival the opportunity to clash the reputation and empire you have built over the years.
Treat Your Trademark Renewal Date as Important as Your Wedding Anniversary
The moment you received your trademark registration certificate, it is important to check the validity period of your trademark and record the next renewal date in your calendar. Section 39 of the Malaysian Trademarks Act 2019 (“Trademarks Act”) grants a trademark registration with 10-year validity period from date of registration. And the date of registration shall be the date of filing of application, pursuant to Section 36(1) of the Trademarks Act.
In other words, your trademark registration will be valid for 10 years from the date of filing, upon successful registration.
Keeping Your Trademark Alive
There is only one simple step to keep you trademark alive, i.e. renew every 10 years. As long as you continue renewing your trademark every 10 years, it will be with you forever.
You may renew your trademark any time before the expiry by filing Form TME1 and paying the official prescribed fee of RM1,000.00 to the Registry of Trademarks. Upon renewal, the validity of your trademark may be extended another 10 years. The renewal can be done by yourself or a Registered Trademark Agent (Click here to find out why should you appoint a Trademark Agent to manage your trademarks).
“Opps! What If I Missed the Renewal Date?”
This depends how long your trademark has expired. Section 39(5) of the Trademarks Act gives you an opportunity to request for a renewal within the period of 6 months from the date of expiry of the registration, and the official prescribed late renewal fee is RM1,200.00 with the Form TME2.
However, luck does not come twice in a row. According to Section 39(8) of Trademarks Act, if you missed the grace period of 6 months, your trademark shall be deemed removed. Fret not, it is not the end yet! Section 39(9) of Trademarks Act provides that you may request for restoration for your removed registration within 6 months from the date of removal, and the official prescribed restoration fee is RM1,500.00 with the Form TME3.
As discussed above, there are 2 chances to salvage an expired trademark. However, if you missed both of the deadlines to renew or restore your trademark, the registration shall cease. We regret that at this point you have lost your trademark registration.
Section 40 of the Trademarks Act provides that when a trademark is not renewed or restored, other person may apply for the registration of the trademark. In this instance, if you are still interested in owning your trademark, you should file a fresh application immediately. Don’t wait, contact us quickly to file a new application!
Renewing Your Trademark Overseas
As we all know, registration of trademark is territorial based. Let’s not forget to renew your trademark in other countries, if any. But please bear in mind that different country has different timeline and requirements on trademark renewal. Some may not have the grace period for late renewal; whereas some may require you to file declaration of use before renewing your trademark.
Not only will the failure to renew the trademark weaken your legal rights but it will also remove the benefit of exclusivity enjoyed by the proprietor. Managing an IP portfolio is a time-consuming process hence it is important to have an organised journal to keep track your trademark journey. You may also engage a competent trademark agent to ensure that your trademarks are managed in a professional manner. Ultimately, do save the renewal date in your calendar to prevent the fallout. Need help in monitoring and reminding your trademark renewal? Contact us today!
IP Legal Executive
Bachelor of Laws
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
Copyright reserved 2021 © IP Gennesis Sdn Bhd