Trademark

What is a trade mark and a service mark?

A trade mark is a distinctive symbol (eg. a word, logo, numerals, device or, label ) that identifies particular goods of a trader to the general public. A trade mark is also used to indicate the origin of goods and to distinguish the products of an individual or enterprise from those of others. On the other hand, a service mark is a logo used by the service industries to distinguish its services from those of another provider (e.g. entertainment, transportation, or travel agents.)

Why is the registration of a trade mark important?

Once a trade mark is registered, it is prima facie proof of ownership of the applicant. The proprietor of the registered trade mark will then have all the benefits, remedies and protection afforded by the Trade Marks Act., 1976.

Who can register a trade mark?

Companies, individuals, partnerships or lawful associates can be provided they met the requirements of the Trade Mark Act.

When should you apply for the registration of a trademark?

As soon as your mark is being used or intended to be used, you are advised to file your application. It must be noted that an early application is advisable because the date of registration dates from the day on which the application is lodged. An earlier lodged application has prima facie priority over later applications.

How long does it take for normal trademark registration?

The normal registration process will take approximately 18 months.

Could it be done quicker?

Pursuant to the Trade Mark (Amendment) Regulations 2011, the applicant may expect to secure the trade mark registration around 6 months and 3 weeks through a fast track process upon filing in the prescribed form and fee along with the reason.

How long is the Trademark registration valid for?

Under the new Trade Mark Registrations 1997, the trade mark registration is valid for ten (10) years from the date of application and is renewable for successive periods of every ten (10) years on payment of a renewal fee.

Does a local trade mark registration give protection in overseas countries?

No, a trade mark registered in Malaysia only gives protection in Malaysia. If you intend to export your goods overseas, a separate application must be made in each of the countries where you seek protection.

Can a trade mark filed in black and white or in colour?

You may file your trade mark application in black and white, greyscale or colour. Unless for a particular reason your trade mark is limited to a particular colour or colours, your rights extend to all colours.

Can you assign a trade mark during pendency of the application?

Yes. You can assign the mark during pendency of the application or after registration has been issued. However, the assignment will only take effect upon the registration of the application.

What is the difference between ® and TM?

The ® is the universally recognized symbol for a registered trade mark. If a trade mark is unregistered, the TM symbol is used.

Is it an offence to use the ®, if your trade mark is not registered?

Yes, it is an offence – pursuant to section 81 of the Trade Marks Act 1976.

Is there a penalty if the letters ™ are used?

No, however there is a penalty if ® is used on an unregistered trade mark.

When does Malaysia accepted Madrid protocol application?

Malaysia becomes the 106th member of the Madrid Protocol System upon depositing the instrument of accession of the Protocol relating to the Madrid Agreement concerning the International Registration of Marks with the World Intellectual Property Organization (WIPO) on 27 September 2019. The Protocol entered into force in Malaysia on the same date.

What is the requirement of filing Madrid application ?

A Madrid application must be based on a national application of the same trade mark filed to the Intellectual Property Corporation of Malaysia (MyIPO). Nevertheless, the Madrid application can be done in conjunction with the national application or at any time after that.

Would the registered proprietor allowed to designate their subsequent new designated countries after the trade mark has been registered under the Madrid System ?

YES, the registered proprietor is allowed to add on subsequent designated countries even after the trade mark has been registered under this system.

What is the Advantages of the Madrid System

i)  Simplified procedure – Trade Mark owners would only have to pay a single set of fees in one currency (Swiss Francs) and submit a single application.

 

ii)  Centralised management – The Madrid system offers the advantage of a centralised management for a company’s portfolio of trade marks. The maintenance and renewal processes have become relatively easier since the Madrid registration only has a single registration number and renewal date regardless of the number of jurisdictions designated.

 

iii) Cost savings – Trade Mark owners are able to save significant costs via the Madrid System if multiple jurisdictions are designated.

 

iv) Time efficiency – Trade mark offices in the designated jurisdictions would have to examine the applications and provide their examination reports within a stipulated timeframe pursuant to guideline set by the System, hence this will expedite processing period in some jurisdictions.

What is the Disadvantages and possible challenges of the Madrid System?

i)  Central attack – The main disadvantage of the Madrid System is that Trade Mark owners are exposed to the risk of the “central attack” at any time during a five (5) years period starting from the date of the Madrid registration, which is the process by which the Madrid registration may be defeated for all countries in which it is protected, by means of a single invalidation or revocation action against the registration. If this occurs, the trade mark owner has to initiate damage control by transforming their Madrid registration into separate national registrations in the jurisdictions that they have designated for which additional expenses is anticipated.

 

ii) Not all countries part of Madrid Union – not all countries are members of the Madrid Union, for example, Taiwan, Hong Kong, Saudi Arabia and the United Arab Emirates. Therefore, the proprietors would have to resort to engaging local Trade Mark attorney or representative to apply trade mark in those countries of interest.

 

iii) Series mark not available – Applicant can only choose to file 1 mark (either in colour or black and white) in the designated jurisdictions under Madrid System.

 

iv) Cost implications – it is very much depending on the number of jurisdictions of interest, it may ONY appear to be beneficial towards the Applicant who have many export markets scattered across multiple jurisdictions to enjoy the cost saving adopted under the System, otherwise it might be cheaper if one opt to file separate national applications.

 

v) Consistency of trade mark specimen and usage – As each of the jurisdiction laws pertaining to what constitute trade mark use varies, it is sometimes very challenging to ensure the subject mark and specification of goods are fully accepted by respective Trade Mark offices in different jurisdictions as the only one (1) mark representation can be chosen for filing for all designated countries under the System.

Is filing of MULTIPLE CLASS Madrid Single Application based on the Prior Registrations permissible?

The international application may be based on more than one basic mark. The basic mark must be registered or applied for registration in national office to which the applicant is connected by establishment, domicile or nationality.

You may file for a multiple class in international application based on existing national trademark application/registration but need to ensure the followings:

  • The applicant named in the international application is the same as the owner of the basic mark.
  • The mark in the international application is the same as the basic mark.
  • The goods and/or services listed in the international application are covered by the scope of the basic mark.
  • Any indications, such as a claim to  colour as a distinctive feature of the mark, are the same as those contained in the basic mark.

Why do I need to register my mark?

1) An exclusive right

A trade mark registration is an exclusive right to use the mark in the territory in which protection is granted. If you renew your trade mark registration at the appropriate time, you have a right which lasts in perpetuity.

 

 

2) To avoid the uncertainty and expense of passing off

If you do not register your trade mark, it is still possible to take action against another party on the basis of ‘passing off’. This is a common law right, and to be successful you must prove:

  • You have goodwill/ reputation in the mark
  • The other party has made a misrepresentation
  • This has caused you damage.

Unlike trade mark infringement, where you can point to the existence of a registration certificate as proof of your rights, passing off is difficult and therefore costly to prove. Such actions are potentially far beyond the budget of most companies. You may find that if you cannot enforce your name, you may have to give it up, perhaps after years of trading.

 

3) To add value to your business

A trade mark is your intellectual property and is a tradable commodity. It has value. You can:

  • Sell it.
  • Licence it.
  • Franchise it.

A trade mark adds credibility, which enables greater sales, and increased profits.

 

4) Trademarks identify origin

One of the main purposes of a trade mark is to prevent confusion in the marketplace. Your trade mark tells your customers who you are, and where to return to if they like your product. Your brand is a valuable marketing and advertising tool. It sets you apart, especially if your competitors are producing inferior or defective products.

 

5) Counterfeit goods

Having a trade mark registration helps relevant authorities to bring charges against counterfeiters if they are using your trade mark.

Is it compulsory to conduct the trade mark search before the application stage?

Before filing your trademark, it is important that you evaluate possible obstacles that may arise during registration process. Our Trademark Comprehensive Study will not only list similar trademarks (graphic/phonetic) found in the official Trademark Database that may conflict with yours, but also give you an opinion about registration possibilities. This trademark search report is optional but highly recommended.

If I registered my trade mark in Malaysia, does it means that I can also sell my products/services in overseas?

Yes, you may still sell your products/services to overseas, but please be highlighted that a trade mark registered in Malaysia only gives protection in Malaysia. If you intend to export your goods to overseas, a separate application must be made in each if the overseas countries where you want to seek protection.

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