What is Trademark?

IP XPERT conducts thorough trademark searches and advises clients on the selection of trademarks. In addition to handling the filing and prosecution of trademark applications and regularly updating clients with status reports, we also work hand-in-hand with our clients to come up with the most effective strategy for trademark protection, providing professional and practical solutions to help manage their portfolio of trademarks, not only in Malaysia and the Southeast Asian region, but also worldwide.

What is a trademark?

A trademark is the face of your brand or company. Usually in the form of words, logos, pictures, names, numbers and/or taglines, trademarks are used in trade to identify the source of products/ services and distinguish it from competitors in the marketplace.

Registering your trademark gives you the exclusive right to use your mark for the goods and/or services that it covers in the country that your mark is registered in. If you have a registered trademark you can put the ® symbol next to it to warn others against using it. However, using this symbol for a trademark that is not registered is an offence.

What can be protected as a trademark?

A registrable trademark is one that can include a distinctive logo or symbol, image, name, signature, word, letter, numeral or any combination thereof.

Recent amendments to the Malaysian Trade Marks Act will see the eventual registrability of Non-Traditional Marks (NTMs) such as smells, sounds, colours, shapes, moving images, tastes and textures.

What are the factors to consider when selecting a trademark for use in Malaysia?

Malaysia is a multiracial, multicultural and multi-religious society that consists of significant population subgroups comprising of Malays, Chinese and Indians as well as various ethnic groups indigenous to Sabah and Sarawak. Islam, Christianity, Hinduism, Buddhism and other religions are practiced in Malaysia with Islam being the official religion. Malay, Chinese, Tamil, English and a wide variety of other languages are widely used in the country. Thus extra caution has to be exercised to avoid the selection of a mark that may have an undesired meaning or can be deemed an offensive trademark in respect to certain cultures, religions or societies. We can advise on the appropriateness of a proposed mark with regard to such sensitivities.

Trademarks can be filed in any language and alphabet. However trademarks which are not in the English or Malay language and not in the Latin script need to be accompanied by a certified translation and transliteration of each of the characters in the English or Malay language. The language of the word(s) must also be given.

An important note to take into account is that Malaysia adopts a First-to-Use system for Trademarks. This means that the first applicant who uses a mark in trade is entitled to registration and has better rights, in the absence of any prior user of an identical or substantially similar trademark in Malaysia.

Intention to use the trademark is sufficient. However, a registered mark may be revoked if it has not been used in trade for a continuous period of 36 months without any valid legally acceptable reason.

What are the general requirements for filing trademark application?

A filing date is accorded to the date of receipt of the application if the application contains all the following information/documents:

  1. the name and address of the applicant;
  2. a representation of the trademark (if its other than normal typescript);
  3. a list of the goods or services to be covered by the trademark registration;
  4. the International Classification applicable to the goods or services
  5. application form;
  6. Power of Attorney;
  7. Statutory Declaration declaring that applicant is lawful proprietor of the mark applied for;
  8. in respect of a Convention application, priority details of the basic application must be disclosed. Convention applications must be filed within 6 months of the basic application from which priority is claimed;
  9. where a trademark contains any word or words in a language or alphabets other than the Malay or English language/alphabets respectively, then a certified translation and transliteration of the mark applied for is required.

What is the procedure for trademark registration?

  1. The procedure to file and prosecute a trademark application in Malaysia is similar to the process in other common-law countries.
  2. Each application must be for a single mark in a single class. The application can include several goods or services all falling within the same international class without the payment of any additional fees.
  3. If the mark applied for is acceptable to the Trademark Office, i.e., the Intellectual Property Corporation of Malaysia (MyIPO), it is advertised in the Government Gazette for any member of the public to oppose the application. A period of 2 months is given for the filing of any opposition. If no opposition is received, the mark proceeds to registration. Conversely, after objections and/or oppositions are overcome, the mark proceeds to registration.
  4. Upon registration, the mark is valid for 10 years from date of filing of application and is renewable for every 10 years thereafter.
  5. If the application does not face any objections or oppositions, the trademark will be registered within 2 years.

How are trademarks classified?

Malaysia adopts the 10th ed. of the NICE International Classification of Goods and Services. There are 34 classes for goods and 11 classes for services.

The class headings for the 45 classes can be found on the website of the World Intellectual Property Organization (WIPO):

http://www.wipo.int/classifications/nivilo/nice/index.htm?lang=EN

However, do note that class headings only serve as general indications of the type of goods or services and may not cover all the goods or services in the class. You should not list or claim the entire class heading of each class of goods or services in the application form.

Contact us for assistance in itemizing the specification of goods or services of your interest in the application as you may find that they fall under more than one class or that they are described erroneously.

Why conduct a trademark search?

Most business owners choose a trademark, then go on to spend a large sum of money on the marketing, advertisement and promotion of their brand. However, when they venture into a foreign market, they do not have 100% assurance that they can use the same brand they developed in Malaysia.

We have had people who come to us too late, unable to use their local marks overseas due to a substantially similar or identical mark existing in that particular foreign country, and thus had to spend more money, time and effort:

  1. designing a new mark
  2. creating a new branding strategy, with new advertising and promotion material
  3. developing new packaging

A trademark search allows you to check and determine whether the mark you intend to register is available for registration in all jurisdictions of interest under the relevant class of goods/services. This helps ensure that there are no other possible conflicting marks in the class.

With a search, you will be able to change your brand if there is a similar brand already on the register or pending registration in the various jurisdictions.

An availability search would also help you avoid infringement of a third party’s trademark, which would be a terrible start to venturing into overseas markets as it racks up legal fees in responding to the other party’s allegations and may cause negative publicity in the country where you are trying to secure market share.

How do I go about designing/redesigning my trademark?

We can help! We provide initial branding consultation, with our logo design service to help you come up with a trademark that will have a good chance of being accepted and registered by the trademark office.