Global Trademark Protection
We provide full range of trademark registration and advisory services
of trademark in Malaysia and globally
Trademark portfolio maintenance and management
Trademark litigation support and other advisory services
Due diligence of trademark registration
Renewal of trademark
Trademark searches and analysis
Licensing of trademark
Opposition of trademark registration
Sale and transfer of trademark
Quick Facts About Trademark
What is trademark?
A trademark includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof, as defined by the Malaysian Trademarks Act 2019.
It is used by companies to distinguish their goods or services from the competitors in the trade.
Why should we register our trademark and how long will the protection last?
To secure exclusive use of the trademark and to prevent others from using it. Upon registration, it is protected forever, provided renewal is filed every 10 years.
How long is the entire registration process?
Application will be filed within 1-2 working days upon confirmation. A smooth registration process from filing date up until issuance of certificate will take about 12 to 18 months.
How to register a trademark?
- First, design a trademark
List down the goods or services under the trademark and determine the classification
Do a pre-filing trademark search
Identify the trademark owner
Prepare and file the trademark application
Examination by Trademark Examiner
Publication in Malaysian IP Official Journal
Registration of trademark if no public opposition within 2 months from the date of advertisement
How to register trademark internationally?
At the moment, there is no universal system to register a trademark internationally. Therefore, in order to protect a trademark internationally, you may consider the following options:-
Direct filing in the desired countries
File a regional application
Filing through Madrid Protocol
How do I know whether my trademark has been registered by others before I do?
We can conduct a pre-filing search and send you the analysis report within 3 to 5 working days.
Is it correct that once my trademark is registered, nobody can use my trademark?
A trademark is only protected in respect of the classification and goods / services it is registered. You should file multiple class applications if the goods and services fall under different classes. While it is recommended to register all relevant classes, you may choose to register either one or a few more important classes. The total costs would multiply according to number of applications. Kindly send us the complete list of goods and services and we will assist you in identifying the classifications.
What if the Registrar objects to my application?
You may appeal against the objection or amend the application as required by the Registrar. The estimated cost for filing such appeal or amendment with the Registry of Trademarks is usually in the range of RM500.00 to RM3,000.00 for 1 mark 1 class (excluding applicable official fees, disbursements and 6% Service Tax).
Does the trademark registration in Malaysia cover the whole world?
No. Registration of trademark is territorial based. Currently there is no unitary registration system to cover the entire world. It is necessary to register the trademark in each country separately. However, there are options for regional registration or simplified international registration through Mardrid Protocol.
What is the difference between TM and ®?
Only a registered trademark may use the ® symbol. You may use the TM symbol while waiting for the registration process. Any person who falsely represents a trademark as registered commits an offence and shall, upon conviction, be liable to a fine of not exceeding RM10,000.00.
Is it guaranteed that my trademark will be registered?
We are not able to guarantee the successful registration of a trademark as it is the sole discretion of the Registrar of Trademarks by considering all the requirements under the Trademarks Act 2019 of Malaysia
What is Classification?
It is known as Nice Classification, which is a system of classifying the goods and services for trademark registration.
What are the information needed to file a trademark application?
i) Softcopy of the trademark in .jpeg or .pdf format in high resolution
ii) Applicant’s full name and identity’s number (for Malaysian applicants)
iii) Applicant’s address
iv) List of goods and/or services (and the Classification if it is known to the Applicant)
v) Certified translation of the trademark if it is not in Roman characters, or the Malaysian National language or English language.
vi) If priority is claimed, please provide:-
a) Filing date of the priority application
b) Convention country of the priority application
c) Application or registration no. of the 1st Convention application
d) Certified priority document of the priority application, if required by Registry. Translation required if the certificate is not in English language.
IP Gennesis Sdn Bhd
Question? Contact Us
(Company No. 1055927-A)
A1-10-08, Arcoris Mont Kiara,
No. 10, Jalan Kiara, Mont Kiara,
50480 Kuala Lumpur, Malaysia.
Mobile : +6012 - 226 6993
Office : +603 – 6411 3607