A trademark is a distinctive sign – like a logo or word – that differentiates your goods / services or your “brand” from your competitors in the course of trade. A trademark can be any word, name, symbol, or device, or any combination. Trademark also includes shape, sound or even smell under the new Trademarks Act 2019.
Registering your trademark makes it easier to take action against third parties using identical or similar marks.
Further, your trademark will be on the searchable Register of Trade Marks, Malaysia once you have applied for registration, which will result in dissuading others from using it.
A registered trademark gives the owner a statutory monopoly for the exclusive right to use the mark in relation to the goods or services for which the mark is registered. A registered trademark becomes your property just like land or chattel, which you can sell, licence, franchise or even use as a security interest in accordance with new Trademarks Act 2019. Trademark owners are also given the right to take legal action for infringement under the Trademarks Act 2019 against third parties utilising their trademarks without consent.
In Malaysia, it is possible to gain ‘common law rights’ on a trademark simply using it over time. Nonetheless, a registered trademark will be a more straightforward and cost-saving way for you to prevent third parties from using identical or similar marks.
The application for registration of a trademark can be filed in the name of the trademark owner; usually a company, individual, partnership, organisation or association etc.
Unfortunately no, if your trademark is contrary to the public interest or to morality; deceptive; or contains scandalous or offensive matter; or matter which might be prejudicial to the security of the country and etc. More commonly, a trademark should not be descriptive of the goods/services applied for and must be "distinctive”. For examples, word mark “Worst” or “Best” could not be registered as a trademark simply due to its descriptiveness to the goods/services.
Yes, one (1) application may cover several classes of goods and services under the Nice Classification. A multi-class trademark application will result in one (1) trademark registration only, but application fees are to be paid for each class.
If you would like to protect a trademark internationally, you have two options:- i. Direct filing in each country in which you are seeking protection ii. Filing international application through WIPO’s Madrid System and designate to each desired country which is a member of the Madrid Protocol
Before you file an application to register a trademark, it is advisable to conduct searches of existing trademark registrations and pending applications on the Register of Trade Marks, Malaysia to ensure that there are no marks identical to, or closely resembling your trademark, filed or registered by others for similar goods or services. We can conduct the searches for you and our search report and advice on the availability and registrability of your trademark will be delivered within three (3) to five (5) working days upon receipt of your instruction.
The estimated time frame from the filing of an application to the issuance of registration certificate for a smooth application is approximately twelve (12) months to fourteen (14) months. However, if there are any objections or complications, the time taken maybe longer.
We may assist you in the following ways to overcome the Registrar’s provisional refusal:-
a. Submitting legal argument by way of a written submission
b. Applying to the Registrar for an oral submission
c. Amending the application for registration of a trademark to meet the conditions, amendments, modifications or limitations imposed or directed by the Registrar
d. Filing statutory declaration incorporating evidence of the use of your trademark
Your trademark will be valid for ten (10) years from the date of application and is renewable perpetually every ten (10) years.
Renewal
Your trademark registration is valid for ten (10) years from the date of application. You are required to renew your registration to keep it valid and in force.
Change of Name or Address
If there is any change to the trademark owner’s or the applicant’s name or address, the new details should be recorded on the Register of Trade Marks, Malaysia, failure to record a change might cause problems on the trademark protection.
Assignment
If a trademark registration is assigned (sold) to another person or company, the new owner's details should be recorded on the Register of Trade Marks, Malaysia, failure to record the assignment might cause problems on the trademark protection.
Use It!
Most countries require a trademark registration to be used within a certain time and to not be subject to an uninterrupted period of non-use in order to maintain its validity. Once a trademark is registered, we recommend you frequently reviewing your registration and considering whether any new applications are required to take account of developments in your commercial or geographical focus.
In Malaysia, if at any time during its registration your trademark is not used for a continuous period of three (3) years, your registration may be removed upon application of an aggrieved party.
Unfortunately, no. Trademark rights are territorial in nature. You need to apply for registration of your trademark in every country that you wish to seek trademark protection either through (1) direct filing in the desired country; or (2) filing international application via WIPO’s Madrid System and subsequently designate to your desired country. A Malaysian application can be used as a basis for claiming priority in countries which are parties to the Paris Convention and a basic application for filing international application via Madrid System. The registration process, duration, requirements and fees vary from one country to another.
™: You may use “™” symbol while your trademark is pending for registration. This “™” symbol serves as a ‘warning’ to other traders that you consider your brand to be a trademark.
®: You can only use “®” symbol once your trademark has been successfully registered. It is illegal in Malaysia (and most other countries) to use “®” symbol before your trademark has been registered. Please note that any person who falsely represents that a trademark is a registered trademark will be liable to a fine up to RM 10,000.00.
An experienced registered trademark agent has the expertise and knowledge on trademark laws and will be able to provide you with well-grounded advice on the registrability of your trademark, assisting you to conduct pre-filing searches, file trademark application, handle any provisional refusal raised by the Registrar of Trade Marks, Malaysia with skillful analysis of situations as well as opposition proceeding initiated by third parties up to registration and maintenance of your trademark. We can assist you in all aspects of trademark protection and enforcement. Feel free to contact a member of our team or contact us at general@chphoonlaw.com.my should you have any questions.