Filing a trademark application is only the first step towards securing trademark registration. Before a trademark can proceed to registration, it is examined by the Registrar to determine whether it complies with the requirements of the Malaysia’s Trademarks Act 2019 and the Malaysia’s Trademarks Regulations 2019.
If the Registrar identifies any issues during the examination process, a provisional refusal may be issued setting out the grounds of objection. While receiving a provisional refusal may initially seem concerning, it does not necessarily mean that the trademark application will ultimately be refused. In many cases, the objections can be successfully overcome by filing written submissions, presenting arguments through ex-parte oral hearing and/or complying with the Registrar's requirements.
This article highlights two important grounds of objection under Malaysian trademark law, namely Regulation 4(1)(m) of the Trademarks Regulations 2019 and Section 23(5)(a) of the Trademarks Act 2019.
While objections based on distinctiveness or conflicts with earlier trademarks are more commonly encountered, the two provisions discussed below operate in a broader context and are often overlooked in their application.
1. Regulation 4(1)(m) – Can You Register a Trademark Containing a Place Name?
Business owner often incorporates the name of a city, town or locality into their trademarks for commercial reasons. A geographical name may help communicate where the business originates, strengthen the brand's association with a particular place, or capitalise on the goodwill and reputation attached to that location.
However, from a trademark perspective, geographical names are generally understood by consumers as identifying a place rather than a particular business. Allowing one trader to obtain exclusive rights over the name of a city or locality could unfairly restrict other businesses operating in or connected with that area from legitimately referring to the same place.
For this reason, trademarks consisting of or containing the name of a city, borough, town or other place within a Convention country may attract an objection under Regulation 4(1)(m) of the Trademarks Regulations 2019.
Fortunately, an objection under Regulation 4(1)(m) does not necessarily prevent a trademark from proceeding to registration. The Regulation provides that such an objection may be overcome where the consent of the relevant authority has been obtained for registration purposesa.
For example, where a trademark contains the word "Sandakan", the Registrar may require the applicant to obtain a letter of consent from the relevant local authority, such as Majlis Pembandaran Sandakan, before the application can proceed to registration.
That said, applicant should not assume that such consent will automatically be granted. Whether consent is available and the requirements for obtaining it will depend on the policies and discretion of the relevant authority. As there is no uniform procedure, the process may vary depending on the circumstances.
Accordingly, business owner intending to incorporate a geographical name into their branding should assess the registrability of their trademark at an early stage. Where there is a likelihood of an objection under Regulation 4(1)(m), applicant should consider the practical feasibility of obtaining the necessary consent and factor this into their branding and filing strategy. Taking these matters into account early can help minimise uncertainty and avoid unnecessary delays during examination.
2. Section 23(5)(a) – When a Trademark May Deceive or Cause Confusion
Another important ground of objection is Section 23(5)(a) of the Trademarks Act 2019, which provides that a trademark shall not be registered if its use is likely to deceive or cause confusion to the public or would be contrary to any written law.
Unlike objections under Section 24, which primarily concern conflicts with earlier trademarks, Section 23(5)(a) focuses on whether the use of the proposed trademark is likely to mislead or deceive consumers. Given the broad wording of this provision, the circumstances in which an objection may arise are not exhaustive. The following examples illustrate some of the situations in which an objection may be raised in practice.
Example 1 – Foreign Trademark with Established Presence
One example is where the proposed trademark is identical or substantially similar to an earlier trademark that has already been adopted by an overseas business for the same or similar goods or services.
Although trademark rights are generally territorial, the Registrar may nevertheless consider whether Malaysian consumers are likely to associate the proposed trademark with the overseas business, particularly where that business has established a commercial presence, reputation or recognition among the relevant public.
If the use of the proposed trademark could mislead consumers into believing that the goods or services originate from, are endorsed by, or are otherwise associated with the overseas business, an objection may be raised under Section 23(5)(a) on the basis that the trademark is likely to deceive or cause confusion to the public.
Accordingly, businesses should not assume that a trademark is registrable merely because no identical or similar mark exists in Malaysia. Where a proposed trademark is already associated with an overseas business, particularly one with an established reputation or market presence, it is prudent to assess the potential risk of confusion before proceeding with the application.
Example 2 – Trademark Suggesting Another Business Identity
Another example arises where the trademark itself conveys the impression that the goods or services originate from, or are connected with, a particular company or business entity when this is not the case.
This may arise where a trademark incorporates the name of another company or wording that identifies another business, thereby creating the impression that the applicant is that company or is otherwise commercially connected with it. If such an impression is likely to mislead or deceive consumers, an objection may be raised under Section 23(5)(a).
Depending on the circumstances, such objections may be overcome by demonstrating the applicant’s legitimate relationship with the relevant party. This may include evidence of authorisation, distributorship, agency, licensing or other commercial arrangements. In appropriate cases, a letter of consent from the relevant party may also assist in addressing the Registrar’s concerns.
Conclusion
Ultimately, a provisional refusal should not be viewed as the end of the trademark registration process. Many objections can be successfully overcome by addressing the Registrar's concerns through the submission of supporting evidence, written submissions, oral arguments at an ex parte hearing, and/or compliance with the Registrar's requirements.
By understanding the common grounds of objection discussed above enables business owner to make more informed branding decisions, minimise delays during examination and improve the likelihood of securing trademark registration.
If you have any queries on the above, please feel free to contact the authors of the article, Henry Phoon (henryphoon@chphoon.com) or Tan Chee Wei (cheewei@chphoon.com)
** This article is intended for general information of the clients of our Firm. It should not be regarded as legal professional advice. If you require advice based on specific facts, please feel free to contact us.
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