(1) Formal Examination: After the application is submitted, a legality review is conducted on the submitted application documents, trademark specimens, power of attorney, and other documents. If compliant with regulations, a filing date and application number will be granted.
(2) Substantive Examination: Examination according to the law to determine whether the trademark is registrable, whether it is identical or similar to previously registered trademarks, and whether it violates the prohibitive clauses of the trademark law.
Note: For trademarks that fail the substantive examination, the examiner will notify the applicant and provide the reasons for refusal. The applicant may submit a request for reexamination within the prescribed period from the date of receiving the refusal notice. Otherwise, the application will be deemed abandoned, and neither the filing date nor the application number will be retained.
Regarding Refusal: In Malaysia, for Class 35 business management services, among the services of Class 37 building repair, Class 39 transportation, and Class 40 material handling, a total of four categories of goods/services across forty-two classes may also be deemed by the examiner as constituting similarity. Therefore, do not mistakenly assume that if no identical/similar trademarks exist in the class of the applied goods/services, the trademark application will be smoothly approved for registration.
(3) Publication: After the trademark passes examination, the applicant will be notified that the trademark application has been accepted and published in the trademark gazette. Anyone may file an opposition during the two-month publication period, stating reasons and submitting relevant evidence.
(4) Registration Approval: Trademarks that are ruled registrable after opposition or those with no opposition after publication will be approved for registration, and a registration certificate will be issued. The entire smooth application process (if no refusal, opposition, or other issues arise) typically takes about 12–24 months.
3. Trademark Use Requirements
Any interested party may apply to cancel the registered trademark under the following circumstances: The trademark has not been used continuously for three years up to one month before the cancellation application is filed.
Non-Use Cancellation: Malaysia
For non-use cancellation based on three years of non-use, it must first be determined that the trademark has not been used continuously for three years. According to the Trademark Law, the three-year period is calculated from the date the registration certificate is issued, i.e., the date of entry in the register, not the application date. The party filing the cancellation application has the responsibility to investigate, collect, and submit evidence of the other party's non-use of the trademark. The trademark holder has the responsibility to prove the use of their trademark in the past three years.
Other Acceptable Grounds for Cancellation:
- Prior single trademark registration in Malaysia;
- Prior international or trademark registration in another country or region;
- Prior use in Malaysia;
- Bad faith filing;
- Well-known trademark.
4. Trademark Renewal
In Malaysia, the validity period of a trademark registration is ten years from the filing date. Malaysian trademarks are renewed every ten years. Renewal can be initiated six months in advance. If not renewed within the specified period, there is a six-month grace period for renewal, during which additional fees are required.
[Peng Zhiyun] specializes in overseas trademark and patent services. For inquiries, please contact 0755-2868 4815, 0755-8487 8941.
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