Filing Requirements
- Certified copy of the priority document if claimed.
Notes
- Late filing of documents: allowed within 12 months from filing date without penalty.
The application will not be process until all documents are submitted.
Registration with Customs Duty
- Applicant’s particulars (name, address, nationality, permanent residence/place of business, contact numbers, etc).
- Trademark’s particulars (registration number, representation of the mark, classes, list of goods, and samples of goods).
- Affidavit (affirmation of the applicant or Trade Mark Agent having been authorised to submit such application stating that the applicant is the registered proprietor of the mark seeking for a Border Measure order from the Registrar).
- Import particulars (name and address of importer, name and registration number of ship/aircraft/vehicle/port, location at which the goods using the subject mark are expected to arrive, expected date and time of arrival, and information of company of origin of said goods using the mark.
Notes
Please be advised that upon the Registrar’s approval for Border Measure, the term of validity for the border measure lasts for sixty (60) days from date of approval. Additionally, the Registrar will compulsorily require the Applicant to lodge payment of a deposit sum, the amount of which is at the discretion of the Registrar upon approval of the application, as security bond prior to commencing any customs action pursuant to the Border Measure order.
The purpose of payment of deposit is for reimbursing the Registry for any liability or expense it may incur as a result of the seizure of counterfeit goods, prevent abuse of the process or to pay compensation where ordered by the Malaysian Court should an action be filed disputing the seizure by the importer of such goods.
Upon approval and receipt of the security bond, the Registrar take immediate steps to notify the Malaysian Customs and their authorised officials to proceed with the necessary action to prohibit entry or importation into Malaysia as well detain the affected counterfeit goods using the subject mark.
Any border measure initiatives and/or consequential seizures by Customs that occurs will be only limited to counterfeit goods using the subject mark attempting entry by import into Malaysia and does not cover or affect parallel import of client’s goods. Parallel import goods are not prohibited for entry or trade in Malaysia.
The purpose of payment of deposit is for reimbursing the Registry for any liability or expense it may incur as a result of the seizure of counterfeit goods, prevent abuse of the process or to pay compensation where ordered by the Malaysian Court should an action be filed disputing the seizure by the importer of such goods.
Upon approval and receipt of the security bond, the Registrar take immediate steps to notify the Malaysian Customs and their authorised officials to proceed with the necessary action to prohibit entry or importation into Malaysia as well detain the affected counterfeit goods using the subject mark.
Any border measure initiatives and/or consequential seizures by Customs that occurs will be only limited to counterfeit goods using the subject mark attempting entry by import into Malaysia and does not cover or affect parallel import of client’s goods. Parallel import goods are not prohibited for entry or trade in Malaysia.
Renewal Requirements
- No documents are required.
Assignment Requirements
- Deed of assignment document signed by the assignor and assignee, notarised.
- Pending applications can be assigned.
Notes
- Late filing of documents: not allowed.
Some consideration must be stated, no tax and no stamp duty.
Assignment can be made with or without goodwill.
Pending applications can be assigned.
Assignment can be made with or without goodwill.
Pending applications can be assigned.
Merger Requirements
- Power of attorney simply signed.
- Merger agreement document.
Recordal of Change
- Power of attorney simply signed.
- Certificate of change, notarised.
Notes
- Late filing of documents: not allowed.
License Requirements
Notes
On 9 April 2019, Malaysia took the momentous step of introducing its new Trademarks Bill 2019 (the “Bill”) which replaced the existing Trade Marks Act 1976. The Bill was passed by the Dewan Rakyat on 2 July 2019 followed by the Dewan Negara on 23 July 2019 and is now entered into force on 27 December 2019.
The Bill abolishes the registration of a registered user; however, it provides for the licensing of a registered trademark. It clearly states that a licence must be in writing and signed by or on behalf of the grantor to be effective. Although the grant of the licence doesn't need to be entered in the Register, for better protection, registration of a licence would be advisable since such entry would be deemed notice to the public at large.
The Bill abolishes the registration of a registered user; however, it provides for the licensing of a registered trademark. It clearly states that a licence must be in writing and signed by or on behalf of the grantor to be effective. Although the grant of the licence doesn't need to be entered in the Register, for better protection, registration of a licence would be advisable since such entry would be deemed notice to the public at large.