A
Absolute Grounds for Refusal
Reasons relating to the inherent nature of a trademark that may prevent its registration. These include marks that lack distinctiveness, are merely descriptive or customary, are likely to deceive the public, are contrary to law or morality or contain other prohibited matter.
Acquired Distinctiveness
Distinctive character developed through the use of a trademark before its application date. A mark that was initially descriptive, customary or lacking distinctiveness may be registrable if evidence shows that the public has come to recognise it as identifying a particular commercial source.
Applicant
The individual, company, organisation or other person who applies to register a trademark.
Application
A formal request submitted to the Registrar of Trademarks for a trademark to be registered in relation to specified goods or services.
Assignment
The transfer of ownership of a trademark from one person to another. An assignment of a registered trademark may be complete or limited to certain goods or services. It must generally be recorded in writing and signed by the relevant parties.
Authorised Use
Use of a trademark with the consent of its registered proprietor, including use by an authorised licensee.
B
Basic Mark
A Malaysian trademark application or registration used as the basis for filing an international trademark application through MyIPO under the Madrid System.
Brand
A name, logo, symbol, design or other commercial identity used to distinguish the goods or services of one business from those of another. A brand is not automatically a registered trademark.
Brand Protection
The legal and commercial measures taken to protect a brand from unauthorised use, imitation, counterfeiting, infringement, passing off and misuse.
C
Certification Mark
A sign indicating that the goods or services used in connection with the mark have been certified by the proprietor in respect of matters such as origin, material, method of manufacture, method of performing services, quality, accuracy or other characteristics.
Class of Goods or Services
A category under the prescribed trademark classification system into which particular goods or services are placed. Trademark protection is limited to the goods or services covered by the application or registration.
Collective Mark
A sign that distinguishes the goods or services of members of an association from those of other businesses. The association is the proprietor of the collective mark.
Colour Limitation
A restriction under which a trademark is registered in one or more specified colours. Where a trademark is registered without a limitation as to colour, it is generally treated as registered for all colours.
Confusing Similarity
A degree of similarity between trademarks that may cause the public to believe that the relevant goods or services originate from the same business or from commercially connected businesses.
Counterfeit Goods
Infringing goods bearing a counterfeit trademark that falsely represents the goods as genuine goods of the registered proprietor or its licensee.
Counterfeit Trademark
A sign that is identical to a registered trademark and is applied without the proprietor’s consent to falsely represent goods or services as genuine goods or services of the proprietor or its licensee.
Convention Priority
The right of an eligible applicant who has filed an earlier trademark application in a Convention country to claim the filing date of that earlier application as the priority date of a corresponding Malaysian application, subject to the applicable requirements and time limit.
D
Deceptive Trademark
A trademark whose use is likely to deceive or confuse the public, including by creating a false impression regarding the nature, quality, origin or commercial source of the goods or services. Such a mark may be refused registration.
Disclaimer
A statement that the applicant or registered proprietor does not claim an exclusive right over a specified element of a trademark separately from the trademark as a whole.
Distinctiveness
The ability of a trademark to distinguish the goods or services of one business from those of other businesses. Distinctiveness may be inherent in the trademark or acquired through use.
E
Earlier Right
A legal right existing before the filing or priority date of a trademark application. It may include rights arising from an earlier trademark, passing off, copyright, industrial design rights or other recognised rights.
Earlier Trademark
A registered trademark, protected international registration designating Malaysia or qualifying pending application with an earlier filing or priority date. A trademark that was already well known in Malaysia at the relevant date may also constitute an earlier trademark.
Examination
The process by which the Registrar reviews a trademark application to determine whether it complies with the legal and procedural requirements for registration.
Examination Report
A written communication issued during the examination of an application identifying objections, deficiencies, conditions or requirements that must be addressed before the application can proceed.
Exclusive Licence
A licence that authorises the licensee to use a registered trademark to the exclusion of other persons, subject to the terms of the licence.
F
Filing Date
The official date on which a trademark application satisfying the applicable filing requirements is treated as having been filed. It is important when determining priority between competing applications.
G
Goods and Services
The products, activities or commercial services in relation to which a trademark is used or proposed to be used. The specification of goods and services determines the scope of the application or registration.
Good-Faith Use
Genuine use of a trademark in Malaysia by the registered proprietor or with the proprietor’s consent in relation to the goods or services for which it is registered.
Groundless Threats
Unjustified threats to commence trademark infringement proceedings. A person affected by such threats may, in appropriate circumstances, seek relief such as a declaration, injunction or damages.
I
Infringement
Unauthorised use in the course of trade of a sign that conflicts with a registered trademark in circumstances covered by the Trademarks Act 2019. This may include using an identical or similar sign for identical or similar goods or services where the statutory requirements are satisfied.
Infringing Goods
Goods or their packaging bearing an identical or similar sign where the application or use of that sign infringes a registered trademark.
Intellectual Property Corporation of Malaysia
The statutory corporation commonly known as MyIPO, which administers Malaysia’s trademark registration system and maintains the Register of Trademarks.
International Application
An application filed under the Madrid System seeking protection for a trademark in one or more designated Madrid members. A Malaysian applicant generally files the international application through MyIPO as the Office of Origin.
International Registration
A trademark registration recorded in the International Register maintained by the International Bureau of the World Intellectual Property Organization. It does not create one worldwide trademark right; protection remains subject to the laws of each designated member.
Invalidation
A declaration by the Court that a trademark registration was invalid, wholly or partly, because it should not have been registered or was obtained on an invalid basis. To the extent declared invalid, the registration is generally treated as never having been made.
L
Licence
Permission granted by the registered proprietor allowing another person to use the trademark subject to agreed terms and conditions.
Licensee
A person authorised under a licence to use a registered trademark.
Licensing
The arrangement by which a registered proprietor permits another person to use the trademark. A licence may be general or limited to particular goods, services, territories or methods of use.
Likelihood of Confusion
The likelihood that members of the public may believe that goods or services offered under one trademark originate from, are authorised by, or are commercially connected with the proprietor of another trademark.
Limitation
A restriction placed on a trademark application or registration, such as a limitation relating to particular goods, services, colours, territories or methods of use.
Logo Mark
A trademark consisting wholly or partly of a device, image, symbol, stylised wording or other visual design.
M
Madrid Protocol
An international trademark registration treaty administered by the World Intellectual Property Organization. It enables an eligible trademark owner to seek protection in multiple member countries through a centralised international application process. Malaysia has participated in the Madrid System since 27 December 2019.
Madrid System
The international system for registering and managing trademarks under the Madrid Protocol and related international arrangements.
Multi-Class Application
A single trademark application covering goods or services in more than one class. Under Malaysian law, a multi-class application results in one registration, although fees and requirements may apply separately to each class.
MyIPO
The abbreviation for the Intellectual Property Corporation of Malaysia, the authority responsible for administering trademark applications, registrations and related proceedings in Malaysia.
N
Non-Distinctive Trademark
A trademark that is not capable of identifying and distinguishing the applicant’s goods or services from those of other businesses.
Non-Use
Failure to put a registered trademark to good-faith use in Malaysia in relation to the registered goods or services. A registration may be vulnerable to revocation where the trademark has not been used within three years following notification of registration or where its use has been suspended for an uninterrupted period of three years, unless proper reasons for non-use exist.
O
Office of Origin
The trademark office through which an eligible applicant submits an international application under the Madrid System. MyIPO acts as the Office of Origin for applicants entitled to file through Malaysia.
Opposition
A formal proceeding brought to prevent a published trademark application from being registered. An opposition may be based on absolute grounds, relative grounds, lack of proprietorship, earlier rights or other grounds permitted by law.
Opponent
The person who files a notice of opposition against a trademark application.
P
Passing Off
A legal action protecting the goodwill of a business against a misrepresentation that causes, or is likely to cause, damage. Passing off may protect an unregistered trademark even though statutory trademark infringement proceedings are generally limited to registered trademarks.
Preliminary Advice and Search
A confidential service through which the Registrar provides a preliminary view and search result on whether a proposed trademark is prima facie registrable. A favourable result does not guarantee that the subsequent application will be accepted.
Priority Date
The date used to determine whether a trademark has priority over competing applications or rights. It may be the Malaysian filing date or an earlier date validly claimed under a recognised priority arrangement.
Proprietor
The person who owns or claims ownership of a trademark. For a registered trademark, the registered proprietor is the person whose name is entered in the Register as proprietor.
Publication
The official publication of an accepted trademark application before registration, allowing interested persons to file an opposition within the prescribed period.
R
Register of Trademarks
The official register maintained by the Registrar containing prescribed information relating to trademark applications, registrations, proprietors and recorded transactions.
Registered Proprietor
The person currently entered in the Register of Trademarks as the proprietor of a registered trademark.
Registered Trademark
A property right obtained through registration under the Trademarks Act 2019. Registration gives the proprietor statutory rights and remedies, including the exclusive right to use the trademark and to authorise others to use it within the scope of registration.
Registrar of Trademarks
The officer responsible for administering Malaysia’s trademark registration system, examining applications, maintaining the Register and exercising the powers conferred under the Trademarks Act 2019.
Registration
The formal entry of a trademark in the Register of Trademarks after the applicable examination, publication and opposition requirements have been completed.
Relative Grounds for Refusal
Reasons for refusing a trademark application because it conflicts with an earlier trademark or another earlier legal right. These grounds commonly involve identical or similar trademarks and a likelihood of public confusion.
Renewal
The continuation of a trademark registration for a further period. A Malaysian trademark registration generally lasts for ten years and may be renewed for successive ten-year periods.
Revocation
The removal of a trademark registration after registration because of circumstances recognised by law, including qualifying periods of non-use. Revocation is different from invalidation, which challenges whether the trademark should have been registered in the first place.
S
Series of Trademarks
A number of trademarks filed in one application that resemble one another in their material particulars and differ only in limited permitted respects, such as certain statements, representations, standard fonts or colours.
Service Mark
A trademark used to distinguish services rather than physical goods. Malaysian trademark law protects marks used for services under the general term “trademark”.
Sign
A letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or packaging, colour, sound, scent, hologram, positioning, sequence of motion or a combination of these elements.
Specification of Goods and Services
The description of the goods and services for which registration is sought or granted. The specification defines the commercial scope of the trademark application or registration.
Sub-Licence
Permission granted by a licensee to another person to use the trademark, where the terms of the principal licence allow the licensee to grant such permission.
T
Trademark
A sign capable of graphical representation that is capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Trademark Agent
An individual, firm or company registered in the Register of Trademark Agents and appointed to act on behalf of an applicant or proprietor in trademark matters. A foreign applicant is generally required to act through a registered trademark agent in Malaysia.
Trademark Application Number
The unique reference number assigned to a trademark application after filing.
Trademark Infringement
See Infringement.
Trademark Owner
The person who owns the trademark. Where the trademark is registered, the legally recognised owner is generally referred to as the registered proprietor.
Trademark Search
A review of trademark records and other relevant sources to identify earlier identical or similar trademarks that may affect the use or registration of a proposed trademark. A search reduces risk but does not guarantee registration or freedom from legal claims.
Trademark Watch
An ongoing monitoring service used to identify newly filed, published or used trademarks that may conflict with an existing trademark.
Transmission
A transfer of trademark ownership by operation of law rather than by an ordinary commercial assignment, such as a transfer arising from death, succession, insolvency or corporate restructuring.
U
Unregistered Trademark
A trademark that has not been registered under the Trademarks Act 2019. Its owner generally cannot bring a statutory trademark infringement action but may have rights under passing off or other applicable laws.
Use in the Course of Trade
Commercial use of a trademark in connection with goods or services, including use on goods, packaging, business documents, advertising or other commercial materials.
V
Voluntary Cancellation
The cancellation of all or part of a registered trademark at the request of its registered proprietor.
Voluntary Disclaimer
A disclaimer submitted by an applicant stating that no exclusive right is claimed over a specified element of the trademark separately from the trademark as a whole.
W
Well-Known Trademark
A trademark that is well known in Malaysia and satisfies the requirements under the Trademarks Act 2019. A qualifying well-known trademark may receive protection even where its proprietor does not conduct business or possess goodwill in Malaysia, subject to the statutory conditions.
Word Mark
A trademark consisting of words, letters, numerals or a combination of these elements, without a claim to a particular logo or graphic design.
Disclaimer
This dictionary is provided for general information only. The definitions are simplified for public understanding and do not constitute legal advice. The application of Malaysian trademark law may depend on the facts of each case, the applicable legislation, regulations, practice directions and decisions of the Registrar or the courts.