Trademark Registration in Malaysia: Knowing Your Nice Classification

Trademark Registration Malaysia: Know your Classes

Before filing your trademark in Malaysia, one of the most important steps is deciding what you want to protect. Every trademark application must specify the goods or services it covers, and that is where the Nice Classification comes in.

When it comes to brand protection, understanding your trademark class is essential. Consider this your first lesson — class is in session.

What Is the Nice Classification?

The Nice Classification is an international system used to categorize goods and services for trademark registration. It was established under the Nice Agreement (1957) and is now adopted by more than 150 jurisdictions, including Malaysia.

There are 45 classes in total:

• Classes 1–34 cover goods (products).

• Classes 35–45 cover services (activities and business offerings).

  
  

When you apply for Trademark Registration in Malaysia with MyIPO, you must choose one or more classes that reflect your business. The classes define the scope of protection for your trademark, meaning what your rights cover and what others cannot use your mark for.

Why It Matters

Choosing the right class is not just an administrative step. It is the foundation of your brand protection strategy.

• Wrong class, no protection. If your mark is registered under the wrong class, your competitors may still use a similar mark in the right one.

• Every class costs money. MyIPO charges RM950 per class for a standard application. Over-filing wastes cost, while under-filing leaves gaps in protection.

• Strategic classification prevents disputes. Many objections and oppositions arise because of inaccurate or overlapping class selections.

  
  

Example: If you own a café, you will need Class 43 for food and drink services. But if you also sell your own packaged coffee beans, that falls under Class 30. Filing only in one class could leave your product line exposed.

How to Identify the Right Class

Start by asking two key questions:

1. What do I sell? These are your goods.

2. What do I do? These are your services.

   
   

Once you have that list, refer to the Nice Classification published by the World Intellectual Property Organization (WIPO). Review the class headings and individual terms to find the best match.

You can also explore our quick visual guide on Facebook:👉 Trademark Classes Explained: Understanding the Nice Classification

Some examples:

• A clothing brand selling apparel → Class 25 (Clothing)

• A fashion retailer operating an online store → Class 35 (Retail services)

• A tech company offering a mobile app → Class 9 (Software) and possibly Class 42 (Software as a service)

  
  

Expert Tips: If you plan to expand your offerings in the near future, consider including classes that cover your future business activities too.

MyIPO’s Pre-approved List of Goods and Services

To make the process smoother, MyIPO provides a Pre-approved List of Goods and Services, which contains thousands of commonly accepted terms already aligned with the Nice Classification.

Applicants are encouraged to use these pre-approved terms when describing their goods or services, as doing so reduces the likelihood of objections or delays. You can search this list directly through MyIPO’s online class search portal:

http://onlineapps.myipo.gov.my/tmclass/search_class.php

Using the pre-approved list helps ensure that your application passes examination faster — and keeps your trademark top of the class.

Common Mistakes Applicants Make

Filing under the wrong class is one of the most frequent and costly mistakes. Some common pitfalls include:

• Copying another brand’s classes without checking if they apply to your business.

• Confusing goods and services, such as a bakery filing only for food products but not café services.

• Using vague descriptions like “business services” or “technology products,” which can trigger objections for lack of clarity.

• Overlooking related classes that cover connected business activities, such as mobile apps in Class 9 and online retail in Class 35.

Getting It Right the First Time

Selecting the correct Nice Class is both an art and a science. It requires understanding how your business operates today and how it might grow tomorrow. A well-chosen class can strengthen your trademark protection, simplify renewals, and prevent unnecessary disputes.

At Gordian IP, we help startups, SMEs, and international brands identify the right classes before filing, ensuring every application is precise, compliant, and strategically sound.

Because in protecting your brand, you never want to be outclassed.

Trademark Registration in Malaysia: Refusals - When Your Trademark Application Hits a Roadblock

Trademark Application hitting a roadblock?

Trademark registration is a journey, and like any journey, there may be a few roadblocks along the way. When the Intellectual Property Corporation of Malaysia (MyIPO) issues a Notice of Provisional Refusal, it is a signal to pause, reassess, and make sure your application is on the right track. With the right support, you can get past the obstacle and continue toward registration.

At Gordian IP, we help clients navigate these trademark registration roadblocks and get their applications back on track toward approval.

What is a Provisional Refusal?

A notice is issued when MyIPO finds that an application does not meet one or more requirements under the Trademarks Act. The notice explains the reasons and invites a response, usually within two months from the date of the notice. If you do not respond in time, the application will lapse.

Types of Trademark Refusals in Malaysia

(i) Formality Refusal

Administrative or procedural issues, typically found at formality examination:

• Missing or incorrect applicant details

• Unclear or inconsistent mark representation

• Wrong or incomplete goods/services listing

• Incorrect fee or incomplete forms

These are usually straightforward to correct. Once rectified, the application moves to substantive examination.

(ii) Substantive Refusal

Concerns the registrability of the mark itself:

• Absolute grounds: descriptive, generic, deceptive, or lacking distinctiveness

• Relative grounds: conflict with earlier identical or similar marks that may cause confusion

Substantive refusals require a targeted legal and evidential response.

How to Respond to a Notice of Provisional Refusal

You generally have two routes to move forward:

Option 1: File a Written Submission

Within two months from the date of the notice, you or your trademark agent can file a written submission addressing the Registrar’s objections.

Depending on the issue, this may include:

• Legal reasoning showing why your mark is registrable (for example, it is distinctive or not descriptive)

• Evidence of use, such as advertisements, website screenshots, invoices, or sales records showing use of the mark in Malaysia or abroad

• Amendments to the list of goods or services (where appropriate) to clarify or limit the specification

• Consent letters from owners of conflicting marks, if the refusal is based on relative grounds

  
  

Option 2: Request an Ex-Parte Hearing

An Ex-Parte Hearing is essentially the same as a written submission but with one added advantage: it allows you to present your case face to face before the Registrar. This gives you the opportunity to explain your position in person, clarify any misunderstandings, and discuss the nature and use of your mark directly.

Following your written submission or hearing, the Registrar will issue a decision either accepting your mark for publication or maintaining the refusal.

If the refusal is maintained, you have the right to appeal the decision to the High Court.

How to Avoid Getting a Provisional Refusal

While a refusal can often be overcome, prevention is always better. Many refusals can be avoided entirely with the right preparation before filing. Here are a few key steps to reduce your risk:

• Run a comprehensive search to identify conflicting marks before filing

• Choose a distinctive mark, not one that describes your product or service

• Classify your goods and services correctly under the Nice Classification

• Gather proof of use if your mark has built recognition through use

• Consult a trademark professional early to spot risks and plan your filing strategy

  
  

With the right preparation, you can reach registration faster without hitting unnecessary stops.

Need Help?

At Gordian IP, we have helped local startups and international brands overcome trademark roadblocks in Malaysia and beyond. Our team provides:

• Expert advice tailored to MyIPO practices

• Clear, practical strategies for refusals

• Transparent fees and responsive communication

Final Thoughts

Getting a Provisional Refusal is not the end of the road. With the right guidance, you can clear the obstacle and continue toward full registration.

If your trademark application in Malaysia has hit a roadblock, we are here to help get it moving again.

📞 Contact us today to review your notice and discuss your next steps.

Tenom Coffee Case Sparks Warning: Misusing Geographical Indications in Malaysia Can Cost You

samples of GIs

On 9 September 2025, a Johor coffee company (KK Tanom Coffee Sdn Bhd) and its director were charged in court for allegedly misusing the registered geographical indication (GI) “Tenom Coffee” on their packaging. This is the first prosecution under Malaysia’s Geographical Indications Act 2022. If convicted, the fines can reach thousands of ringgit for each product found with a misused GI.

But what is a Geographical Indication?

A Geographical Indication is a name that shows a product comes from a specific place and that its special quality or reputation is linked to that place. Famous global examples include Champagne, Scotch, Swiss Chocolate and Roquefort cheese.

Why you should pay attention? Malaysia already has more than 80 registered GIs, and the list keeps growing. Some of these names are part of everyday life. For example:

• Klang Bak Kut Teh

• Sarawak Pepper

• Musang King Durian

• Halia Bentong

• Tenom Coffee

If you casually put these names on your menu, packaging, or online shop without meeting the GI standards or being authorised, you could be breaking the law. Even small variations or “look-alike” names can be risky.

Any tips for businesses and creators?

1. Avoid using place-linked names unless you are genuinely producing the GI product.

2. Check the GI register on MyIPO’s website before printing packaging, menus, or marketing materials.

3. Use generic wording instead of directly naming the GI if you do not qualify.

   
   

Geographical indications protect authentic local products and help consumers know they are getting the real thing. With names like Klang Bak Kut Teh and Musang King already on the protected list, the Tenom Coffee case is a timely reminder to double-check before you brand or market your product.

If you have any issues or questions about GIs and how they might affect your business, feel free to get in touch.