msc status

What is a registrable trademark?

Under section 3 of the Trademark Act 1976, a mark will include "a device, brand, heading, name, label, ticket, word, signature, letter, numeral or any combination thereof". With Malaysia acceding to the Madrid Protocol and in pursuant to Trademarks Bill 2019 and Trade Descriptions (Amendment) Bill 2019, colour, smell, sound and shape is included for trademark registration.

Under section 10(1) of the Trademark Act 1976, trademarks will be accepted if it contains or consist of at least one of the following:

1) The name of an individual, or company/firm represented in a special or particular manner: it is distinct from others;

2) The signature of the applicant for registration of some predecessor in the business;

3) an invented word or words;

4) A word having no direct reference to the character or qualityof the goods or service not being, according to its ordinary meaning, a geographical name or surname;

5) Any other distinctive mark

What are not registrable?

Pursuant to Trademark Act 1976 and Trademark Act 1997, a mark that is not registrable includes:

1) which is likely to deceive or cause confusion to the public;

2) which contains any scandalous or offensive matter;

3) which is identical to, is confusingly similar to, so closely resembles, or constitutes a translation of the mark which is well-known in Malaysia for the same goods or services of another proprietor;

4) which is well known and registered in Malaysia for goods or services which are not the same as those in respect of which the registration is applied for, provided that the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well-known mark is likely be damaged by such a use;

5) with misleading geographical indication with respect to goods as to its origin;

6) which is prejudicial to the interest or security of the nation;

7) that contains the words "Patent", "Patented", "Patent Pending", "Registered", "Registered Design" , "Registered Trademark", "Registered Service Mark", "Copyright", or any words of effective likeness in any language;

8) that contains the word "Bunga Raya" or the representation of the hibiscus flower or in any colourable imitation thereof;

9) being representative of any of the royal palaces or any buildings owned by the Federal Government or State Government or any government or any colourable imitation thereof;

10) containing the acronym "ASEAN" and the representation of ASEAN logotype or any colourable imitation thereof;

11) containing the words "Red Crescent" or "Geneva Cross" and representations of Red Crescent, the Geneva Cross and other crosses in red or of the Swiss Federal Cross in white, silver on a red background, or such representations in similar colour or colours;

12) being representations of, or mottoes of or words referring to, the royal or imperial arms, crest, armorial bearings or insignia or devices so nearly resembling any of them as to be likely to be mistaken for them;

13) being representations of, or mottoes of or words referring to, the crest , armorial bearings or insignia of the Malaysian Arm Forces, or of the Malaysian Police, or devices so nearly resembles any of the foregoing as to be likely to be mistaken for them;

14) being representations of the name, initials, armorial bearings, insignia, orders of chivalry, decorations or flags of any international organisation, state, city, borough, town, place, society, body corporate, institution or person appearing on a mark;

15) containing the name of a single chemical element or compound;

16) containing direct reference to the character or quality of the goods and services (this is the most common mistake of trafemark character in Malaysia).

You may want to seek advice for Malaysian Trademark at (non free eamil account please)