Introduction

The Trademarks Act 2019 (“TMA 2019”) came into force in Malaysia on 27 December 2019, repealing the Trade Marks Act 1976. TMA 2019 aligns Malaysia with advanced jurisdictions and supports the country’s efforts in fostering the Madrid Protocol, an international system for trademark registration to which Malaysia became a member on 27 December 2019. Among the significant changes introduced in TMA 2019 are the expansion of the types of signs registrable as trademarks, including position marks.[1] Alongside TMA 2019, the Trademarks Regulations 2019 and Guidelines of Trademarks 2019 (VA1-2024). were introduced to supplement the TMA 2019.

This article aims to provide an overview of how to file a position mark in Malaysia, the requirements, and the steps involved in the registration process.

What is a Position Mark?

A position mark is a type of non-traditional trademark that protects the specific way a sign is placed or affixed on a product (e.g., a logo on the heel of a shoe or a stripe on a bottle).[2] A position mark like other trademarks must be distinctive and capable of identifying the goods or services of one undertaking from those of other undertakings.[3] It must also be capable of being reproduced graphically.[4]

Key Steps to Filing a Position Mark in Malaysia

1. Preliminary Trademark Search

Before filing an application, it is crucial to conduct a preliminary search in the MyIPO (Intellectual Property Corporation of Malaysia) database. This step ensures that the proposed mark does not conflict with existing trademarks. Conducting a search helps identify potential objections or oppositions early in the process, saving time and resources.

2. Application for Registration

Any bona fide proprietor of a proposed mark may file an application with the Registrar of Trademarks. The application must be submitted using Form TMA2, accompanied by the prescribed fee.[5] The following particulars are required in the application:

1. Particulars of the applicant: This includes the name, address, and other relevant details of the applicant.[6]
2. Nature of the proposed mark: A clear indication of the type of mark being registered (in this case, a position mark).[7]
3. Graphical representation: The proposed mark must be represented graphically in JPEG or PNG formats. Solid lines should indicate the part of the mark to be registered, while dotted lines should indicate the parts that are not to be registered.[8]
4. Description of the Position Mark: A mandatory description of the mark, including its placement and how it is used on the goods or services.[9]
5. Classification of goods or services: This classification shall follow the Nice Classification system.[10]

The prescribed fee for an application is as follows:[11]

3. Refusal and Opposition

Once the application is submitted, the Registrar will examine the application.[12] The application may be rejected on absolute or relative grounds, such as lack of distinctiveness or likelihood of confusion with existing marks.[13]

If the application is accepted, the mark will be published in the Intellectual Property Official Journal.[14] This publication initiates a two-month opposition period, during which third parties may oppose the application if they believe it conflicts with their rights.[15] If no opposition is filed, on the expiry of the opposition period, the application matures to registration.[16]

4. Registration and Protection

The filing date becomes the registration date,[17] and the Registrar will issue a sealed notification of the registration to the proprietor.[18] A certificate of registration will be issued upon the request of a proprietor, subject to a fee of RM50.[19]  After the mark is registered, there are a few points to note:

1. Exclusive rights: A registered proprietor will enjoy exclusive rights to use the registered mark.[20]
2. Term of protection: A registered mark is protected for 10 years from the filing date.[21]
3. Renewal: The mark can be renewed using Form TME1, subject to a fee of RM1000 per class.[22]
4. Alteration: A registered mark cannot be altered except for changes to the applicant’s name or address. Any such changes require an application in Form TMB1, with a fee of RM140 per application.[23]

Entitlement to the Madrid System via Malaysia

Malaysia’s adoption of the Madrid Protocol allows applicants to extend their trademark protection internationally. To file under the Madrid System, applicants must meet the following criteria:[24]

Eligibility: an applicant must be

1. a citizen of Malaysia;
2. a body or corporation incorporated or constituted under Malaysian Law;
3. a person domiciled in Malaysia; or
4. a person who has a real and effective industrial or commercial establishment in Malaysia.

Requirements:

1. The mark must already be filed for registration in Malaysia.
2. The Malaysian and international applications must have the same owner, be identical, and have the same or narrower specification of goods and/or services.
3. The application must be made in English.

Conclusion

The introduction of position marks under the TMA 2019 aligns Malaysia’s IP landscape with international standards. By adopting the Madrid Protocol, Malaysia has created a more robust and accessible framework for trademark protection. For businesses and individuals seeking to protect their trademarks, understanding the process of filing is essential. Each step requires careful attention to detail to afford successful registration and long-term protection.

This article is authored by our Partners, Ms Lee Lin Li, Mr Ng Kim Poh and our pupil, Ms Wong Yun Xin. The information in this article is intended only for general information and is not a legal opinion or professional advice

[1] S2 Trademarks Act 2019. “Sign” includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof.

[2] Art 3(3)(d) EUTMIR L_2018104EN.01003701.xml

[3] S3(1) Trademarks Act 2019

[4] S3(1) Trademarks Act 2019

[5] S17 Trademarks Act 2019; First Schedule, Trademarks Regulations 2019; Fourth Schedule, Guidelines of Trademarks 2019

[6] Para 7(4), Guidelines of Trademarks 2019

[7] R7(2)(a), Trademarks Regulations 2019; Para 7(4)(c) Guidelines of Trademarks 2019

[8] R7(2)(b), R9(1), Trademarks Regulations 2019; Para 7(4)(d), Parra 7(5)(a) and Seventh Schedule, Guidelines of Trademarks 2019.

[9] Para 7(5)(b), Guidelines of Trademarks 2019

[10] S19, Trademarks Act 2019; R11, Trademarks Regulations 2019; Para 7(7), Guidelines of Trademarks 2019

[11] Third Schedule, Trademark Regulations 2019.

[12] S29, Trademarks Act 2019

[13] S23 and S24, Trademarks Act 2019.

[14] S31, Trademarks Act 2019.

[15] S34 and S35, Trademarks Act 2019.

[16] S36(1), Trademarks Act 2019

[17] S36(1), Trademarks Act 2019

[18] S36(2), Trademarks Act 2019

[19] S36(3), Trademarks Act 2019

[20] S48(1), Trademarks Act 2019

[21] S39(1), Trademarks Act 2019

[22] S39(2), Trademarks Act 2019

[23] S42, Trademarks Act 2019

[24] https://www.myipo.gov.my/en/madrid-system/


Lee Lin Li
Partner
T: +603 2050 1898
linli.lee@taypartners.com.my


Ng Kim Poh
Partner
T: +603 2050 1870
kimpoh.ng@taypartners.com.my


Wong Yun Xin
Pupil
yunxin.wong@taypartners.com.my