4 Tips For Australian Businesses Searching For Malaysian Trade Marks
Emily Young
Malaysia and Australia have a strong economic and trade relationship. In 2019, Malaysia was Australia’s second-largest trading partner in the Association of Southeast Asian Nations (ASEAN). It was also its ninth-largest trading partner overall. Approximately 3,800 Australian companies are trading with Malaysia, more than 300 of which have physical locations in Malaysia. Australia and Malaysia also have two free trade agreements in force, reducing the barriers to import and export goods. Given Malaysia’s close economic relationship with Australia, many Australian businesses trade in Malaysia. If you are thinking about trading in Malaysia, you should protect your Intellectual Property (IP) by registering your trade marks in Malaysia. A thorough trade mark search is a great starting point. This article will take you through four tips for Australian businesses searching for Malaysian trade marks.
1. Language Matters
Malaysia is a multi-religious, multicultural and multiracial society. This means there is a wide linguistic variety within Malaysia. When searching for Malaysian trade marks with a word element, you should take care to consider all possible translations and transliterations. For example, while Malay is Malaysia’s official language, you will often find trade marks in English, Chinese, Tamil, and more. Remember that even if the trade mark does not sound the same in a different language, it might be a trademark infringement if the translation or general idea is the same. Fortunately, trade marks not provided in the Latin alphabet will require owners to provide a translation and transliteration of the trade mark with their trade mark registration. This can make it easier for you to search.
2. Check Your Trade Mark Class
Malaysia adopts the Nice International Classification of Goods or Services. Thus, 34 classes of goods and 11 classes of services are available to register your trade mark in Malaysia. It is important to consider what class your goods or service will fall under. This will help you narrow down your search results when searching for Malaysian trade marks. Malaysia will only protect your trade mark in the industries you select as classes in your registration. Therefore, it is essential that you cover as many applicable goods and services in your application and trade mark search.
3. Conduct a Local Trade Mark Search
Before filing your trade mark application in Malaysia, you must conduct a thorough trade mark search to evaluate your application’s chances of success. This is particularly important in Malaysia because the trade mark registration process is quite slow. The Intellectual Property Corporation of Malaysia (MyIPO) can take more than a year to respond to your application. By conducting a trade mark search before submitting your application, you will be able to check if any identical or similar trade marks may harm your application.
MyIPO’s free search tool is available online. The ‘simple search’ function only allows you to search for a specific trade mark. However, the ‘advanced search’ mode has a multitude of search options. For example, you can search by:
- trade mark description;
- classification;
- script;
- colour specifics;
- application date;
- trade mark owner; and
- licensee, amongst others.
4. Conduct an International Trade Mark Search
Malaysia is part of the Madrid System for the international registration of marks. This system is a mechanism to allow filing one single trade mark application for registration in up to all 124 of the participating countries. Since Malaysia is a party to this system, the World Intellectual Property Organisation’s Global Brands Database is another useful search tool when conducting a trade mark search in Malaysia. The Global Brands Database allows you to search for identical or similar words based on the class of goods and services. You can also filter your search results by:
- source;
- image;
- country of origin;
- trade mark type; and
- trade mark status, amongst others.
Key Takeaways
Your intellectual property is the most important asset of your business, so you must protect it properly. If you plan on trading in Malaysia, it is essential that you properly search for Malaysian trade marks by:
- checking translation and transliterations of your trade mark;
- considering which classification you will file your trade mark application under;
- conducting a local trade mark search; and
- conducting an international trade mark search.
If you need assistance with conducting a trade mark search in Malaysia or applying for a Malaysian trade mark, contact our experienced trade mark lawyers on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
If you plan on doing business in Malaysia or online in the Malaysian market, registering your trade mark in Malaysia for IP Protection is a great way to protect your brand. A registered trade mark can help stop competitors from making, using, or selling anything associated with your trade mark.
Trade mark registration in Malaysia is available through both the Intellectual Property Corporation of Malaysia and the World Intellectual Property Organisation (WIPO) using the Madrid Protocol. The Madrid Protocol is an international treaty that allows for applying a trade mark in several countries using one application.
The cost of registering your trade mark in Malaysia will depend on which method you use to register your trade mark. However, the basic idea is that you will pay 950MYR (~ $300) per classification of goods or services if your trade mark is from an approved list of trade mark types. Trade mark types that are not included on an approved list, such as trade marks for sound, motion sequences, and colour, will cost 1100MYR (~ $345) per classification of goods or services.
Malaysia protects trade marks for 10 years from the date of filing. Your trade mark is eligible to be renewed every 10 years after that for a renewal fee.