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.