Malaysia is a member of the World Intellectual Property Organization (WIPO) and a signatory to the Paris Convention which governs the intellectual property rights. Malaysia is also a signatory to the Agreement on Trade Related to Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organization (WTO).

In order to facilitate the trademark registration, Malaysia has agreed to the Nice and Vienna Agreements on June 28, 2007 which were enforced on September 28, 2007.

Trade mark protection in Malaysia is governed by the Trade Marks Act 1976 (“the Act”) and the Trade Marks Regulations 1997.

The Act provides protection for registered trade marks and service marks in Malaysia. Once the trademark is registered, no third party other than the proprietor or authorized users can use the trademark. The Act also provides on infringement action that can be initiated against infringer and how the trademark proprietor has the rights to deal, assign or license the trademark. 

Registrable marks

A registrable trademark must contain or consist of at least one of the following:-

(a) The name of an individual, company or firm represented in a special or particular manner;

(b) The signature of the applicant for registration or of some predecessor in his business;

(c) An invented word or words;

(d) A word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname;

(e) Any other distinctive mark.

Marks in Colours and Series of Marks

It is possible to limit the colour of a trademark and a trademark registered in black and white is deemed registered for all colours. Series of Marks is allowed in Malaysia under the Act and it gives a wider protection to the trademark.

Term of Protection

Trademark registration in Malaysia is valid for ten (10) years and can be maintained permanently as long as it is renewed every ten (10) years. 

Protection of Unregistered Trademark

Unregistered trademark can be protected under the common law tort of passing off. For any infringement case being brought by the plaintiff under passing off, the plaintiff must be able to establish and prove that there was goodwill or reputation attached to the goods or services; misrepresentation; and damages.