The system for trademark protection in Malaysia includes:

• Registration
• Common law - The common law tort of passing off offers protection for unregistered marks if goodwill and reputation of the mark can be established. When goodwill and reputation can be established, any misrepresentation that is likely to cause damage to the rightful proprietor will be actionable under the common law tort of passing off 
• Coexisting rights under registration and common law

Malaysia belongs to the following international treaties:

• Paris Convention
• Madrid Protocol
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

The benefits of registering a trademark in Malaysia include:

• It entitles the proprietor to bring an infringement action
• Other: In legal proceedings relating to a registered trademark, the Registration is prima facie evidence of anything contained in the Register and registration is prima facie evidence of the validity of the registration.

Service marks

Yes

Defensive marks

No

Collective marks

Yes, applicants for a collective mark shall also file the rules governing the use of the collective mark which shall (1) specify the persons authorized to use the collective mark, (2) the conditions of membership of the association, (3) the conditions of use of the collective mark (if any) and (4) any sanctions against the misuse of the collective mark (if any). A collective mark must also not be contrary to public interest or morality, not contain or consist any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law and not contain a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation.

Certification marks

Yes, a certification mark shall not be misleading as to the character or significance of the certification mark including if it is likely to be taken to be something other than a certification mark. An applicant shall also file the rules governing the use of the certification mark which shall specify (1) the persons authorized to use the certification mark, (2) the characteristics to be certified by the certification mark, (3) how the proprietor is to test those characteristics, (4) how the proprietor supervise the use of the certification mark and the procedure for resolving disputes between the proprietor and authorized user. A certification mark must also not be contrary to public interest or morality, not contain or consist any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law and not contain a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation.

Well-known marks

No

Series marks

Yes, an applicant may make a single application for the registration of a number of trademarks if the trademark (1) resemble each other in material particulars and (2) differ only in respect of one or more of the following matters: statements or representations as to the goods or services in relation to which the trademarks are used or intended to be used, statements or representations as to number, price or quality, standard fonts which do not substantially affect the identity of the trademarks or the color of any part of the trademark.

Marks in a different language or characters other than Roman characters

Yes, for marks containing words in a language other than English or the national language Malay or of character(s) other than Roman characters, a translation and/or transliteration must be filed.

Non-traditional marks: Sound marks

Yes, the same requirements for a traditional trademark apply. The application form requires a written description of the sound mark and an MP3 of the sound

Non-traditional marks: Smell marks

Yes, the same requirements for a traditional trademark apply. The application form requires a written description of the scent.

Non-traditional marks: Position marks

Yes, the same requirements for a traditional trademark apply. The application form requires a written description and a graphical representation of the trademark to be affixed/attached to the form.

Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color)

Yes, the same requirements for a traditional trademark apply. The application form requires the Pantone code and a graphical representation of the trademark to be attached or affixed to the form.

Non-traditional marks: Shape or three-dimensional marks

Yes, the same requirements for a traditional trademark apply. The application form requires a written description and a graphical representation of the trademark to be attached or affixed to the form. Applicants will also need to indicate the number of views with a maximum of six images per trademark.

Documents and information required to file a trademark application include:

• Name and address of the applicant
• Representation of the trademark
• Goods and services and the class(es) for which the trademark is to be registered
• Other: Letter of authorization

Yes, multi-class applications are permitted in Malaysia. The application form does not prescribe a maximum number of classes.

Yes, there are substantive examinations of trademarks in Malaysia on the following grounds:

• Substantive
• Relative grounds

Absolute grounds for refusal of a trademark in Malaysia include:

• Mark has direct reference to the character or quality of the goods or services
• Mark is not distinctive
• Mark consists of a geographical name
• Other: (1) Mark consists exclusively of (a) the shape which results from the nature of the goods themselves (b) the shape of goods which is necessary to obtain a technical result (c) the shape which gives substantial value to the good. (2) Mark consists exclusively of the name of a country. (3) Mark contains or consists of recognized geographical indications. (4) Use of the Mark is likely to deceive or cause confusion to the public or contrary to any written law. (5) Mark is of such nature as to deceive or mislead the public as to the nature, quality or geographical origin of the goods or services. (6) Mark is contrary to public interest or morality. (7) Mark contain or consist of any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law. (8) Mark contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the country. (9) Mark contains or consists of the name or representation of another person whether living or dead unless consent can be furnished. (10) Mark contains or consists of a flag, national emblem, insignia or royal arms. (11) Mark contains or consists of a word that is commonly used as or is the accepted name of any single chemical element or single chemical compound as distinguished from a mixture or which is declared by the World Health Organisation as an international non-proprietary name or which is deceptively similar to such name.

Relative grounds for refusal of a trademark in Malaysia include:

• There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark
• There is a prior application for registration or registration for an identical or confusingly similar mark in relation to similar goods or services (although in a different class) as the subject mark
• Well-known mark: There is a well-known mark that is identical or so nearly resembling the subject mark for the same goods or services as the subject mark
• Well-known mark: There is an earlier registered mark that is well-known for different goods or services and the use of the subject mark would indicate a connection between goods or services covered by the subject mark with the proprietor of the well-known mark.

The time period from application to registration in Malaysia is between 12-18 months. 

Yes, late renewal of trademark registration is permissible in Malaysia. A request for renewal can still be made within the period of six months after the date of expiry of the registration with a surcharge imposed in addition to the fees payable for a renewal fee. 

No, evidence of use does not need to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in Malaysia. 

No, trademark licensees are not required to record themselves with the Registrar in Malaysia.

Available enforcement methods in Malaysia include:

• Civil enforcement
  • Infringement action
  • Passing off
• Administrative enforcement
• Border or other administrative enforcement measures

None identified.