Trademark Renewal and Validity in Malaysia

Trademark Renewal and Validity in Malaysia: A Practical Guide

Managing trademark renewal is a crucial part of maintaining exclusive rights over your brand identity. Once a trade mark is registered with the Intellectual Property Corporation of Malaysia (MyIPO), its legal protection remains in force for ten years from the date of filing. However, this protection does not continue automatically. TM owners must take active steps to renew their rights periodically to avoid expiration and potential legal complications.

Duration and Validity of a Registered Trademark

In Malaysia, a registered trade mark is valid for ten years from the application date. At the end of each ten-year term, owners must file a continuation request to maintain their protection. The mark can be prolonged an unlimited number of times, each for another ten-year period, provided all formalities are fulfilled and the required charge is paid.

Failure to renew within the prescribed time frame can lead to removal from the register. However, MyIPO allows a six-month grace period after the expiry date during which the owner may still restore the mark by paying a late extension fee.

Trademark Renewal in Malaysia: Step-by-Step Process

Filing a trademark renewal involves several steps. Ensuring timely compliance helps preserve legal rights and avoids unnecessary delays. Below is a breakdown of what applicants should expect:

• Check extension eligibility
  Confirm the time window based on the original registration date.
• Prepare the necessary documents
  Include the registration number, owner details, and supporting declarations if required.
• Submit the extension request
  This can be done manually at MyIPO or online through the official IP portal.
• Pay the continuation charge
  The official cost may vary depending on the number of classes and whether filing occurs on time or during the grace period.
• Receive confirmation
  Once approved, the renewed status will be updated in the official records and reflected in the Register.

Key Considerations for Trademark Owners

Owners should be proactive and well-informed about the extension process to avoid lapses. Here are some essential tips:

• Set calendar reminders at least 6 months before expiry
• Verify contact information with MyIPO to receive timely notices
• Work with an experienced legal advisor if unsure about eligibility or timing
• Keep copies of all correspondence and proof of payment
• Extend even unused marks if they are part of a defensive strategy

Being prepared and following a consistent strategy ensures continuous brand protection.

Consequences of Non-Renewal

Allowing a registered sign to lapse can have serious consequences. Once removed from the register, the mark becomes available for registration by third parties. This could result in loss of brand identity, customer confusion, and potential legal battles to regain rights. Although re-registration may be possible, it typically requires going through the full application process again, including examination and opposition periods.

In certain cases, owners who missed the deadline and grace period may explore legal avenues to restore their mark, but this is not guaranteed and usually requires justifiable reasons.

Conclusion

Maintaining a registered designation in Malaysia requires more than just a successful initial filing. Ongoing attention to deadlines, administrative requirements, and strategic planning is key to preserving long-term legal protection. Whether handled independently or with the assistance of an attorney, managing trademark renewal efficiently safeguards your brand’s legal standing and market value. With clear processes and digital access through digital systems, staying compliant has never been more straightforward