Descriptiveness and Acquired Distinctiveness Under the Trademarks Act 2019: Section 23(1) and the Statutory Declaration Threshold

Malaysia’s trade mark registration system applies a strict filter against descriptive marks. Under Section 23(1) of the Trademarks Act 2019 (TMA 2019, Act 815), the Registrar of Trademarks at the Intellectual Property Corporation of Malaysia (MyIPO) must refuse registration of signs that are devoid of distinctive character, exclusively descriptive, or that have become customary in trade. However, the Act also provides a critical safety valve: Section 23(2) allows registration of an otherwise non-distinctive mark if the applicant can demonstrate that it has acquired distinctive character through use in Malaysia before the filing date. The evidentiary vehicle for this claim is a statutory declaration — a sworn statement that must meet a demanding threshold of proof.

The Legal Framework: Absolute Grounds for Refusal

Section 23(1) of the TMA 2019 lists the absolute grounds on which the Registrar must refuse registration. The key descriptiveness-related prohibitions are:

• Section 23(1)(a): Signs which are not capable of being represented graphically and not capable of distinguishing goods or services of one undertaking from those of other undertakings.
• Section 23(1)(b): Trade marks which are devoid of any distinctive character. This covers marks that are too common, too simple, or too directly related to the goods or services to function as indicators of commercial origin.
• Section 23(1)(c): Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics of goods or services, or the time of production of goods or rendering of services. This is the core descriptiveness prohibition.
• Section 23(1)(d): Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade (generic terms).

Section 23 also contains additional absolute grounds, including marks likely to deceive or cause confusion, marks contrary to law, public interest, or morality, marks that mislead the public as to the nature, quality, or geographical origin of goods, and marks containing scandalous or offensive matter.

What MyIPO Considers “Descriptive”

MyIPO examines descriptiveness from the perspective of the average Malaysian consumer. A mark is descriptive under Section 23(1)(c) when it directly and immediately tells the consumer something about a characteristic of the goods or services. The assessment is made in relation to the specific goods or services designated in the application.

Common categories of descriptive marks that trigger refusal include:

• Kind or type of goods: Words naming the product itself or its category (e.g., “COFFEE” for coffee products).
• Quality or characteristic: Words describing a quality, attribute, or feature (e.g., “FRESH,” “PREMIUM,” “SUPER”).
• Intended purpose: Words indicating what the goods are used for (e.g., “SLIM” for dietary products).
• Geographical origin: Place names that consumers would understand as indicating where the goods come from (e.g., “SARAWAK” for pepper).
• Laudatory terms: Words that merely praise or commend the goods without identifying origin (e.g., “BEST,” “EXCELLENT,” “PERFECT”).

MyIPO also considers terms in Malay, English, Chinese, and Tamil — reflecting Malaysia’s multilingual consumer base. A word descriptive in any language commonly understood by a significant segment of the Malaysian public may be refused.

The Limits of Minor Stylisation

As in many jurisdictions, applicants often attempt to overcome a descriptiveness objection by filing a figurative (logo) version of the descriptive word rather than a pure word mark. MyIPO may accept a figurative mark containing a descriptive word element if the graphical elements are sufficiently distinctive on their own to impart trade mark character to the overall sign. However, the protection obtained is limited: the descriptive word element itself remains weak, and the effective scope of protection covers primarily the design, not the word.

Simple additions such as standard fonts, basic borders, commonplace geometric shapes, or stock colour treatments are generally insufficient to overcome a descriptiveness finding. The figurative elements must contribute independently distinctive character.

Acquired Distinctiveness: Section 23(2)

Section 23(2) of the TMA 2019 provides a statutory exception to the descriptiveness bar:

“Notwithstanding paragraphs (1)(b), (c) and (d), the Registrar shall not refuse to register an application of a trademark if, before the date of application for registration, the trademark has in fact acquired a distinctive character as a result of its use.”

This means a descriptive mark can be registered if the applicant proves it has become factually distinctive — that is, the Malaysian consuming public has come to recognise the descriptive term as a brand identifier (an indicator of commercial origin) rather than merely a description.

Critically, the acquired distinctiveness must exist before the filing date. Post-filing evidence of use does not satisfy the requirement.

The Statutory Declaration: Format and Requirements

Under Regulation 17(c) of the Trademarks Regulations 2019, evidence of acquired distinctiveness must be submitted by way of a statutory declaration (Akuan Berkanun). This is a sworn statement made pursuant to the Statutory Declarations Act 1960. The declarant — typically the applicant or a senior officer of the applicant company — must affirm the document before a Commissioner for Oaths in Malaysia, or before a Notary Public if the declarant is based abroad.

The statutory declaration is not a legal argument — it is a factual presentation. The declarant sets out the facts of use and attaches supporting exhibits. Legal submissions, if any, are made separately in a written reply or at an ex parte hearing.

What Evidence MyIPO Requires

There is no fixed formula for proving acquired distinctiveness in Malaysia. Whether a mark has become factually distinctive is a question of fact assessed on the totality of the evidence. However, MyIPO and Malaysian courts consistently look for the following types of evidence:

• Duration and continuity of use: How long the mark has been used in Malaysia, and whether use has been continuous and consistent. A longer track record carries more weight.
• Annual sales figures and revenue: Quantitative evidence of commercial activity under the mark in Malaysia, ideally over multiple years. These should be specific to the Malaysian market, not global figures.
• Advertising and marketing expenditure: Investment in promoting the mark in Malaysia, supported by samples of actual advertisements (print, digital, broadcast, outdoor, point-of-sale). Both the expenditure amount and the reach achieved are relevant.
• Channels of distribution: Evidence of where and how the goods or services are sold in Malaysia — retail outlets, online platforms, distribution networks.
• Consumer surveys and market research: Professionally conducted surveys demonstrating that Malaysian consumers identify the descriptive term as a brand. While persuasive, surveys alone are not determinative.
• Media coverage and press articles: Malaysian press, trade publications, or online media referencing the mark in connection with the applicant’s goods or services.
• Awards and industry recognition: Malaysian or international awards received in connection with goods or services marketed under the mark.
• Third-party statements: Letters or declarations from trade bodies, distributors, or retailers in Malaysia confirming recognition of the mark as a brand.

The Registrar assesses the evidence globally. The key question is whether the continuous and widespread use of the mark in Malaysia has made it distinguishable in law — that is, whether the public perceives it as identifying a single commercial source.

Key Case Law

Malaysian courts have confirmed that descriptive words can acquire distinctiveness through use. In Leo Pharmaceutical Products Ltd A/S v Kotra Pharma (M) Sdn Bhd [2009] 5 MLJ 703, the court examined the circumstances under which a mark that was initially non-distinctive could be protected. The case established that the burden lies squarely on the applicant to demonstrate acquired distinctiveness through substantial evidence of use in the Malaysian market.

In Mesuma Sports Sdn Bhd v Majlis Sukan Negara Malaysia [2015] 6 MLJ 465, the Federal Court confirmed Malaysia’s “first-to-use” principle, which underpins the recognition that rights can accrue through commercial use even without registration.

The Procedure for Responding to a Descriptiveness Refusal

When MyIPO issues a provisional refusal under Section 23(1)(b) or (c), the applicant has one opportunity to respond. The response options are:

• Written reply: Submit arguments and/or a statutory declaration with evidence of acquired distinctiveness.
• Ex parte hearing: Request a hearing before the Examiner, submitting written submissions and a statutory declaration. This allows direct engagement with the Examiner but may take time to schedule.

If the Registrar maintains the objection after the response, the applicant may appeal to the High Court.

Strategic Recommendations

• Choose inherently distinctive marks: Invented words, arbitrary terms, and suggestive marks avoid the descriptiveness issue entirely and receive the broadest protection.
• Prepare the statutory declaration before filing: If you intend to file a descriptive mark, compile evidence of use in Malaysia before the filing date. The one-response window is short, and assembling evidence after receiving a refusal wastes critical time.
• Focus on Malaysia-specific evidence: Global sales figures and international advertising are helpful context, but MyIPO requires evidence of use and recognition in Malaysia. Ensure the statutory declaration demonstrates Malaysian market activity.
• Quantify everything: Vague statements about “extensive use” are insufficient. Provide specific annual sales figures, advertising expenditure, distribution data, and market presence details for the Malaysian market.
• Affirm the statutory declaration properly: Ensure the document is affirmed before a Commissioner for Oaths (Malaysia) or Notary Public (abroad). Procedural defects can undermine otherwise strong evidence.

Common Mistakes

• Filing a descriptive word mark without evidence: MyIPO examines absolute grounds ex officio. A clearly descriptive mark will be refused, and the applicant has only one chance to respond.
• Submitting only global evidence: Acquired distinctiveness must be demonstrated in Malaysia. International sales data without a Malaysian nexus will not suffice.
• Relying on a logo to protect a descriptive word: MyIPO may accept the figurative mark, but the descriptive word element receives minimal protection. The registration effectively protects only the design.
• Treating the statutory declaration as a legal brief: The statutory declaration is for factual evidence with supporting exhibits. Legal arguments belong in the written reply or hearing submissions.
• Missing the response deadline: Failure to respond within the prescribed period results in the application being deemed withdrawn. There are no extensions without specific procedural justification.

Key Takeaway

Malaysia’s Trademarks Act 2019 maintains a strict prohibition against descriptive marks under Section 23(1), but provides a clear pathway to registration through acquired distinctiveness under Section 23(2). The evidentiary threshold is demanding: applicants must submit a properly affirmed statutory declaration supported by substantial, Malaysia-specific evidence of continuous commercial use, advertising investment, sales volumes, and consumer recognition — all predating the filing date. For brand owners committed to descriptive naming, building a robust evidence file before filing is essential. For everyone else, investing in an inherently distinctive mark remains the most reliable path to registration in Malaysia.