The legal basis for trademark practice in Malaysia is the Trademarks Act 2019 (Act 815), and its detailed implementation is specified in the Trade Marks Regulations 2019 (P.U.(A) 373) and the guidelines, practices, forms, and fees issued by MyIPO (Malaysian Intellectual Property Office).
Three Key Points to Keep in Mind for Application Practice
Regarding standard processing times, MyIPO’s Client Charter (assuming no deficiencies or oppositions) states 8 months for a standard application and 4 months and 2 weeks for an Expedited Examination to receive a Notice of Registration; however, in practice, project management must account for potential delays due to responses to refusals, oppositions, amendments, and extensions.
Enforcement of rights includes not only civil remedies (injunctions, damages, restitution of profits, etc.) but also criminal penalties (for counterfeiting, etc.: maximum fine of RM1 million and 5 years’ imprisonment) and border measures (customs seizures + MyIPO/tax authority coordination) as institutional safeguards.Furthermore, with an eye toward cancellation for non-use (generally requiring non-use for three years from registration), the routine collection of evidence of use and maintenance of licensing records directly support both “offensive” (infringement litigation) and “defensive” (prevention of infringement) strategies.
The primary enabling legislation is the Trademarks Act 2019 (Act 815), which comprehensively covers examination, opposition, post-registration procedures, remedies for infringement, border measures, and the trademark agent system. Specific details regarding forms, deadlines, fees, proof of service, and steps for submitting evidence are set forth in the Trade Marks Regulations 2019 (P.U.(A) 373).
Key operational updates from the past five years include the 2022 amendments to the Regulations and Schedules (P.U.(A) 66/67), the 2025 reduction of application fees (P.U.(A) 315) plus the Registrar’s Practice Direction, and MyIPO’s Trademark Examination Manual (published in 2026), which serve as practical reference points.
The competent authority is MyIPO (legally a “Corporation” under the Intellectual Property Corporation of Malaysia Act 2002 (Act 617)), and the Trademarks Act 2019 defines the “Court” as the High Court, explicitly outlining the appeal process for certain decisions by the Registrar, such as refusals and oppositions.
The threshold for registrability is that the mark must be “graphically representable” and “distinctive”; marks lacking distinctiveness, descriptive marks, and customary marks are generally refused (though they may be saved by acquiring distinctiveness through use).
The MyIPO form system (TMA2) also distinguishes sounds, scents, holograms, positions, sequences of motion, colors, and other elements as “Other types of trademarks” in addition to standard words and graphics, explicitly outlining the application categories for non-traditional trademarks.
For parties not residing or conducting business in Malaysia, the system requires that they appoint and authorize a registered trademark agent and have the agent’s address for service recorded in the Registrar’s records (it is important to note that there are cases where the process cannot proceed unless an agent is appointed, rather than simply allowing the option to appoint one).
Note: Since the registration requirements for registered trademark agents (citizenship/residency, bankruptcy history, training/exams, attorney qualifications, etc.) are also explicitly stipulated in the regulations, please first confirm that the agent meets these requirements—i.e., that they are a registered agent with MyIPO—when selecting an agent.
Malaysia uses the Nice Classification (45 classes) as a basis, and the Specification is treated as the scope of the rights themselves. Since classification errors can affect the future maintenance and validity of the rights, clarity (clear indication) and classifiability are top priorities.
MyIPO provides a Pre-approved list (derived from the Madrid Goods & Services 12th Edition 2023 / 113,471 terms), and it is explicitly stated that if these terms are used, they will be “accepted for classification purposes,” which directly leads to shorter examination times and reduced official fees.
Pitfall: Regarding “overly broad specifications,” such as “Class 1 in its entirety,” the framework indicates that examiners may reject them unless justified by actual use (or intended use), so the notion that “broad is strong” does not apply.
In Paris Convention-style priority claims, the domestic application must specify at least the “earliest filing date, country, application number, and goods/services covered.” The fact that the priority period is “six months” is also confirmed by the provisions on provisional protection at international exhibitions (which state that the priority period is not extended even if provisional protection is granted).
Regarding joint applications (joint owners), since restrictions—such as the inability of a single joint owner to grant licenses, transfer shares, or establish security interests—are explicitly codified as legal effects following registration, joint applications should be considered as a unified whole, extending to the “post-registration operational design (contracts).”
MyIPO provides IP ONLINE as a “one-stop shop for searching and filing,” and online filing is the standard practice. Procedures for renewals and other matters are also guided through an online workflow (user registration, digital certificates, and system menu operations). Paper (manual) submissions are intended for exceptional cases, such as when electronic filing is suspended, and a per-page fee (RM2/page) is clearly stated in the official fee schedule.
The table below lists official fees (excluding professional fees) for procedures frequently encountered in practice, excerpted from MyIPO’s official “Forms and Fees” section.
| Procedure | Form | Fee (RM) | Practical Comments |
|---|---|---|---|
| Preliminary Advice/Search | TMA1 | 250/class | Useful when you wish to obtain an early preliminary search report and the Office’s assessment of registrability |
| Application (Using the Pre-approved List) | TMA2A | 950/class | Optimal cost and speed. Specification design is key |
| Application (Pre-approved list not adopted) | TMA2B | 1,100 / Class | When unique wording is required. Tends to result in more classification checks during examination |
| Series Trademarks (2nd and subsequent applications) | TMA2C | 50 per application (up to 6) | Potential for cost savings through optimization of "application bundling" |
| Expedited Examination | TMA4 | 1,000 per class | Applicable cases are limited |
| Opposition | TMD1 | 950 per class | Fees for multi-class oppositions are charged per class |
| Counter-statement | TMD6 | 350/Class | Missing the deadline is fatal (deemed withdrawal) |
| Renewal | TME1 | 1,000 / Class | Design where proof of use is not required for renewal |
| Renewal after expiration | TME2 | 1,200 / Class | "6 months after expiration" slot explicitly indicated |
| Reinstatement | TME3 | 1,500 / Category | "6 months after expiration" bracket explicitly stated |
| Agent Authorization (Appointment/Termination) | TMR7 | 20 | Essential for foreign clients |
2025 Temporary Measure: Trademarks (Reduction of Fee) Regulations 2025 (P.U.(A) 315/2025), a temporary measure reducing the official filing fee by RM300 (e.g., RM950 → RM650) for applicants meeting certain requirements (e.g., annual turnover of less than RM500,000) was introduced for a four-month period from September 1 to December 31, 2025.
MyIPO’s Client Charter sets a target of issuing a Notice of Registration within 8 months for standard applications and 4 months and 2 weeks for expedited applications, assuming “no deficiencies and no oppositions.” In practice, the following are added to these timelines: (1) responding to rejections (amendments, responses, hearings), (2) oppositions after publication (up to an additional 2 months plus evidence rounds), and (3) deferments.
| Phase | Estimated Timeframe (Core of the System) | Remarks |
|---|---|---|
| Formality + Substantive Examination | Standard: 8 months / Expedited: 4 months and 2 weeks | Both subject to the condition of "no deficiencies and no objections" |
| Publication | Published in the IP Official Journal after acceptance | The publication date marks the start of the opposition period |
| Opposition period | 2 months (extendable by up to 2 months) | Extensions are strictly enforced (not unlimited) |
| Registration and Certificate | Registration occurs after no objections are filed or objections are resolved | Certificate issuance is upon request (listed separately in the official fee schedule) |
While marks lacking distinctiveness, descriptive marks, and customary marks are generally refused, they may be saved if they have acquired distinctiveness through use prior to the filing date.
Regarding shape trademarks, the following three categories are excluded; therefore, a design that demonstrates functionality and aesthetic appeal is required:
Furthermore, grounds for refusal include marks that are likely to mislead consumers, violate laws or regulations, violate public order or morality, are obscene or offensive, pose a threat to national security, or include another person’s name, a national flag, etc. Therefore, prior preparation—such as submitting consent forms (for names, etc.)—is crucial for the successful execution of the application process.
The fundamental basis is identity or similarity with prior registrations or prior international registrations (including international registrations for protection), and the likelihood of confusion serves as the central logic.
Well-known trademarks, even if unregistered, can influence relative grounds for refusal (identical or similar marks plus identical services, etc.) to a certain extent, and for registered well-known trademarks, protection may extend to dissimilar goods and services (subject to requirements regarding contact, likelihood of confusion, and infringement of interests).Furthermore, the system explicitly provides for exclusion based on “prior rights” such as unregistered marks (passing off), copyrights, and design rights, meaning that relative grounds for refusal are not limited to “matters between registered trademarks.”
While there are provisions allowing registration with the consent of the prior rights holder, the examiner considers the public interest and likelihood of confusion; therefore, the system does not automatically approve an application merely upon submission of a consent letter (i.e., a consent letter plus the design of coexistence conditions is required).Since there is also a framework under which registration may be granted based on honest concurrent use or special circumstances, in practice, we aim for relief by leveraging “actual usage, market coexistence, and actual business practices” in conjunction with limitations (such as geographical, channel, or specification narrowing).
Once an application is accepted, the registrar publishes it in the Intellectual Property Official Journal. Since the publication may include disclaimers or conditions, negotiations regarding amendments or limitations prior to publication significantly affect the “cost of backtracking.”
Oppositions must be filed within two months of the publication date, and extensions beyond “two months after the deadline” are not permitted (while extensions are possible, there is an upper limit).
Critical pitfalls: (1) Service on the opposing party, and (2) the Affidavit of Service within 14 days; if either is deficient, it may result in fatal consequences such as the opposition being deemed “never filed” or “withdrawn.”
| Procedure | Deadline (Basic) | Key Action |
|---|---|---|
| Notice of Opposition | Two months from the date of publication | Submit Affidavit of Service within 14 days of service on the opposing party |
| Counter-Statement | Within 2 months from the date of receipt of the notice | Affidavit within 14 days of simultaneous service |
| Evidence from the opposing party (Statutory Declaration) | Two months from the date of receipt of the counter-statement | Failure to file constitutes deemed withdrawal of opposition |
| Evidence from the applicant | 2 months from the date of receipt of the opposing party’s evidence | Failure to submit constitutes deemed withdrawal of the application |
| Opponent’s rebuttal evidence (optional) | Two months from the date of receipt of the applicant’s evidence | Scope management required (e.g., limited to reply) |
| Written arguments | Two months from the Registrar’s notice | Extensions may be requested for a maximum of 6 months |
If the examiner issues a refusal, a provisional refusal notice is issued. The applicant may respond by filing a written response, requesting a hearing, making amendments, or submitting evidence via affidavit, and may apply for an extension of up to 6 months.
A practical benefit: The system is designed such that if a provisional refusal is received, the applicant may receive a refund of the filing fee if the application is withdrawn within two months, serving as a means to cut losses in cases with little chance of success.
In cases where oppositions or related litigation are pending, the Registrar may defer proceedings for a certain period (up to six months, for example). This provision can be considered as a means to synchronize negotiations between parties and litigation strategies with the Registry’s procedures.
The renewal fee is RM1,000 per class, and separate fees apply for post-expiration renewal and restoration; MyIPO explicitly states a “6-month post-expiration” window. While the system does not require submission of proof of use for renewal, the revocation system described below exists, so renewal does not guarantee security (i.e., managing evidence of use is a separate requirement).
As personal/movable property, trademarks may be subject to assignment, partial assignment, assignment as security, or charges.
Importance of Recordation: If a transaction is not recorded with the Registrar, not only can it not be asserted against a bona fide third party, but the transferee is also barred from claiming damages or restitution of profits for infringements occurring prior to the recordation application (licensing transactions are subject to exceptions).
A license requires a written agreement and signatures to be valid; once recorded in the registry, it has the effect of providing notice and creating a presumption of validity (regarding the specified terms). Furthermore, since the system is designed to allow a licensee to file infringement lawsuits in their own name, in practice, agreements are structured as a combination of “contractual provisions (right to sue and duty to cooperate) + registration.”
Revocation on grounds of non-use is explicitly defined with three years of non-use after registration as the primary requirement, necessitating a proof framework that includes defenses such as justifiable grounds.
Invalidation, rectification of the register, and revocation based on a court order are categorized in the official fee schedule as application types requiring a “Court Order,” so in practice, it is crucial to link these procedures to “High Court proceedings” rather than “MyIPO procedures.” For owners of well-known trademarks, the system explicitly allows them to seek a declaration of invalidation from the High Court by satisfying requirements such as well-known status and likelihood of confusion.
Falsely indicating a trademark as “registered” or similar is a criminal offense. If the reference is to a registration outside the country of registration, it may be deemed a “registration indication” unless proven otherwise; therefore, caution is required regarding the potential for incidents arising from the use of Japanese and English side-by-side or in packaging.
The Trademarks Act 2019 establishes a framework under which the High Court may order injunctions, damages, and restitution of profits in infringement proceedings. In cases involving counterfeit trademarks, orders such as seizure for the preservation of evidence and remedies for additional damages are provided for.Furthermore, the system provides for orders regarding the removal of markings from infringing goods, their destruction, surrender, disposal, or confiscation, allowing for “enforceability” that goes beyond mere injunctions to physically remove the goods from the market.
Counterfeiting of registered trademarks is subject to severe penalties, including a maximum fine of RM1 million and up to five years’ imprisonment, and the importation, sale, or possession of goods bearing counterfeit marks constitutes a separate offense. Furthermore, it is a criminal offense for an unregistered person to conduct business as a “registered trademark agent,” making agent compliance (verification of registration status) crucial for the protection of clients.
Rights holders (registered owners or certain licensees) may apply to the Registrar upon identifying a likelihood of infringing goods being imported. Approval is generally valid for 60 days, and the Registrar may require a security deposit to cover costs associated with seizure, prevent abuse, and protect importers.
After seizure, the rights holder must file an infringement lawsuit within a specified period; failure to do so may result in the seizure being lifted and the risk of compensation claims. Additionally, provisions exist for ex officio detention by customs authorities and exemptions for small quantities or non-commercial goods (de minimis), making an understanding of the system’s design essential for cross-border e-commerce strategies.
As part of the framework for investigation and enforcement, terms such as “Controller” under the Trade Descriptions Act 2011 have been incorporated, and the Assistant Controller has been granted investigative powers (including powers under criminal procedure law).
MyIPO states that the Madrid System allows applications to be filed in multiple countries under a "single language, single procedure, single fee structure," based on a scheme in which MyIPO acts as the Office of Origin.
Regarding designations for Malaysia, the regulations provide an 18-month framework for managing the timing of provisional refusals and oppositions (the logic is that “final protection” is granted upon the passage of 18 months from the designation or subsequent designation, subject to the expiration of the opposition period, etc.).
Since issues such as extension to non-similar goods and services and the assessment of conflicts with prior rights arise just as they do in domestic applications, it is necessary to establish "designation of goods and services," "prior art searches," and "consent and coexistence conditions" to the same extent as in domestic practice.
| Case | Key Points (Summary of Ruling) | Practical Implications |
|---|---|---|
| Ortus Expert White Sdn Bhd v Nor Yanni Adom & Anor (Federal Court, 2022) | When assessing likelihood of confusion in infringement determinations, the trademark must be examined as a whole, and the framework for judgment must be organized based on “consumer perception,” including the treatment of disclaimers | ① Even with a registered trademark accompanied by a disclaimer, assuming “this would not be seen in a dispute” is risky. ② Disclaimers or limitations at the application stage can influence subsequent infringement and invalidity proceedings. ③ Proof of likelihood of confusion must be grounded in “the relevant consumer base and actual business practices.” |
| Display of Malaysia Airlines and Firefly Trademarks on an App (High Court, 2024) | Even when third-party trademarks are displayed on a platform (app), the relationship to the “use” requirement (an element of infringement) under the Trademarks Act 2019 remains a point of contention | ① E-commerce and app operators cannot simply dismiss the issue by claiming “display is the third party’s responsibility.” ② For rights holders, proving that the display constitutes “course of trade” (revenue structure, UI, transaction flow) is key. ③ Contract terms (merchant agreements) and notice-and-takedown procedures are directly linked to dispute prevention |
| McDonald v McCurry (Federal Court, 2009) | The Federal Court upheld the Court of Appeal’s ruling, finding that McCurry’s use of “Mc” did not constitute passing off by misrepresenting McDonald’s trade name or trade dress (get-up) | ① Even “exclusive domain” is not automatically recognized, even for well-known brands. ② Likelihood of confusion is determined by a comprehensive evaluation of not only name similarity but also appearance, nature of services, and customer base. ③ Claims of widespread recognition must be structured in conjunction with evidence (market penetration, advertising, sales). |
| Check Items | Required | Practical Notes (Pitfalls) |
|---|---|---|
| Applicant Name and Address (Corporate Number, etc.) | Required | For foreign applicants, setting an address for service may be required |
| Agent Authorization (TMR7, etc.) | Typically required (for international cases) | Appointment and termination are also form-based. Even if the cost is minimal, omissions can be fatal |
| Trademark specimen (graphically representable expression) | Required | "Clear indication of nature," "illustration," and "color specifications" are required at the time of filing |
| Designated Goods and Services (Classes/Specification) | Required | Using the pre-approved list reduces official fees and shortens the examination process. Overly broad designations carry a risk of rejection |
| Priority Information (if applicable) | Optional (Strategic) | Specify filing date, country, application number, and goods/services. Even with provisional protection at trade shows, the priority period is 6 months |
| Priority Search (PSA/Search) | Optional (Recommended) | Issues extend beyond “prior registrations” to include passing off, etc. |
| Appropriateness of Expedited Examination | Optional | Excluded categories (e.g., collective/certification marks, certain non-traditional trademarks) exist |
| Intended commencement of use and manner of use | Recommended (for future defense) | Although proof of use is not required for renewal, prepare evidence to defend against cancellation for non-use (3 years) |
In Malaysian trademark practice, designing designated goods and services using the Pre-approved list and strictly managing formal requirements (service affidavits and statutory affidavits) are key factors that determine costs, speed, and the outcome of cases.From multi-layered enforcement measures—including border measures and criminal remedies—to the management of evidence of use in anticipation of cancellation for non-use after three years, and the 18-month framework under the Madrid System, there are a wide range of issues that Japanese companies must address on both the “offensive” and “defensive” fronts.
EVORIX International Patent Office provides comprehensive support for trademark applications and enforcement across Southeast Asian countries, including Malaysia. Our patent attorneys, with extensive practical experience and working in collaboration with local agents, handle everything from application strategy utilizing the pre-approved list to responding to oppositions, rejections, and infringement claims.
*This article is intended to provide general information based on the Trademarks Act 2019, Trade Marks Regulations 2019, and publicly available materials from MyIPO as of April 2026. We recommend consulting with experts, including local agents, for specific decisions regarding individual cases.