A trade mark is a recognizable form of intellectual property that distinguishes your business or company or corporation from the rest. Like any other forms of intellectual properties such as copyright, industrial design, and patent, trade mark is an intangible asset capable of ownership by an individual, business or a company or corporation.
It may come in various forms such as a sign, signature, number, name or any combination of these.
A trade mark has to be registered in The Official Portal of Intellectual Property Corporation of Malaysia (MyIPO) in order to enjoy the privileges of a registered trade mark in Malaysia. These privileges include the right to exclusive use of such mark for trading purpose within Malaysia.
However, not every mark is registrable as a trademark. In order for a mark to be registrable, it must technically comply with at least one of the 5 factors stipulated under Section 10 of the Trade Marks Act 1976 (‘TMA 1976’) as follows:-
(a) the name of an individual, company or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or of some predecessor in his business;
(c) an invented word or words;
(d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or
(e) any other distinctive mark
is worth noting that such marks have to fulfil the distinctive test in the eyes of the registrar at the MyIPO.
On the other hand, Section 14 TMA 1976 also provides for factors of a non-registrable trade mark, amongst others:-
(a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law;
(b) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;
(c) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation;
A preliminary search is a must to determine the availability of a registrable mark within local jurisdiction under the related classes of goods or services in which the trade mark intended to be registered in. This also prevents a potential conflict of marks from being registered.
A registration certificate will be issued by the registrar office (MyIPO) is a prima facie evidence of trade mark ownership which allows you to use ® instead of ™.
A trade mark, once registered in Malaysia, will be protected in Malaysia. If protection of a trade mark is required in other countries, it will be necessary to apply for registration separately in each other countries.
The validity period for a trade mark registered in Malaysia will be 10 years from the date of application and can be renewed every 10 years by applying for renewal within 3 months prior to the expiration.
A registered trade mark does not only act as a shield in preventing others to have an exclusive claim over your trade mark, it also acts as a sword to the owner by empowering the owner to have a right in taking a legal action provided under the Trade Marks Act 1976 against others who use their mark without prior consent.
In addition to that, the registered owner of a trade mark may also take civil action or lodge complaints to the Enforcement Division established under the Ministry of Domestic Trade, Cooperatives and Consumerism (MDTCC) for appropriate action in the form of criminal prosecution under the Trade Description Act 1972.
Timeline and Cost
We understand it is commercially prudent for certainty in the estimation of timeline of application and cost. Kindly click into Timeline and Cost for one trade mark to be registered under one class only.
There are total 45 classes which a trade mark may be registered in, as seen in website of MyIPO: http://www.myipo.gov.my/en/apply-for-trade-marks/?lang=en%2F#classes-of-goods-services%20.
About the Author:
This article was written by Chia Swee Yik, Partner of this Firm (assisted by legal intern, Hah Kai Di, Samantha), who has provided advice on Intellectual Property Law.
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