“Is it expensive to register a trademark?? Does the registration fee need to be paid every year??”
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“Is it true that I can only register either my company name or logo in one trademark application? Can I register both of them in a single application??”
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“Would it be true that there is no refund I can get from the Malaysian Intellectual Property Corporation if my trademark application is subsequently rejected??”
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The above statements illustrate some of the common understandings of the general public regarding trademark registration in Malaysia.
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We shall explain the current position/ applicable rules and regulations in our article below.
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Question 1： Does the registration fee need to be paid every year?
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According to Section 39 of the Trademarks Act 2019，trademark registration is valid for ten (10) years from the date of filing of the application papers to The Intellectual Property Corporation of Malaysia.
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Once registered，the registered owner is only required to pay renew fee for a further period of ten (10) years before the date of expiration.
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Therefore, it is not true that the registration fee needs to be paid every year. In the situation where no one challenges the registration of trademark or files opposition proceedings, the applicant would only need to pay the registration fee/renewal fee every 10 years.
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Question 2: Can the applicant register his business name and logo in one single application?
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According to Section 21 of the Trademarks Act 2019), a person may make a single application for a number of trademarks if the trademarks resemble each other in material particulars.
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Hence, an applicant can register his business name and logo in a single application if his business name and logo if both of them resemble each other in material particulars.
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However, it is important to note that if the business name consists of the words commonly used in the industry such as furniture, coffee, stationary etc. The Applicant’s application would be rejected by the Registry based on the absolute ground for refusal under Section 23 of the Trademarks Act 2019。
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Therefore, it is generally recommended to register the company logo only in a single application. If the applicant also wants to register his business name, we would suggest that the applicant seek advice regarding the registrability of his business name before filing the application.
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Question 3: Can the Applicant get a refund if his trademark registration application is rejected by the Registry?
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Generally, if the trademark registration application is rejected by the Registry, there is no refund of registration fee which was paid earlier.
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Therefore, it is generally recommended to appoint a registered trademark agent to file an application for preliminary advice from The Intellectual Property Corporation of Malaysia，requesting the Registrar to give his/her legal opinion in relation to the registrability of the trademark.
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If the Registrar gives a positive confirmation in relation to the registrability of the trademark, however the trademark application is subsequently being rejected. The applicant can then make an application for refund under Rule 16 of Trademarks Regulations 2019.
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These are the information regarding trademark registration that we would want to share with you today. If you have any inquiries about it, please do contact us: https://wa.link/q3kmv5
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*****If you want know more about trademark registration and its advantages, you can read our article
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*****About the time and documents needed for register a trademark, you can read our article
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