What is a Trade Mark?
A Trade Mark distinguishes goods or services. It can be words, pictures, logos, alphabets or a combination of them.
Words other than English and Malay are acceptable, except a translation and transliteration is needed.
What are the conditions for Malaysian Trade Mark registration?
Generally, there are three conditions:
- the trademark is not used by others (You may conduct a search to find this out);
- the trademark is not prohibited by the Trademarks Act; and
- the trademark is acceptable by the Trademarks Act, such as it is distinguishable and does not refer to the character of the goods or services.
Any examples of Trade Marks?
For goods Trade Marks, “MERCEDES-BENZ” for cars, “SHELL” for petrol, “Canon” for cameras.
For services Trade Marks, “Fedex” for courier services, “Shangri-la” for hospitality service, “Visa” for credit card services.
Can I use a mark without registering it?
Yes. However, others may copy your mark and you may require great effort to prove your ownership. In short, it is risky.
Why bother to register?
It is to prevent your mark from being used by someone else. If someone does that, he could enjoy your goodwill. With registration, the Government backs you up.
Is this Malaysian registration worldwide?
No. It is local; and includes Sabah and Sarawak.
For overseas registration, you need to apply on a country-by-country basis or a regional basis. An European community trademark application is one example of a regional application.
Can I apply for a trademark before using it?
Yes. In Malaysia, you can apply without first using it.
Is a trademark search necessary?
Strongly recommended. If you don’t want to discover that your mark cannot be registered, after spending a lot of money on brand promotion!
If you invent the trademark yourself, i.e. it is original, a search may not be necessary.
What is a priority claim?
After first filing in a Paris Convention member country, you may then apply to Malaysia or other member countries within 6 months from the first filing date. Then, all subsequent applications can carry the first filing date.
Claiming priority is not compulsory.
Applications without claiming priority can be filed anytime.
Who can apply to register a trademark?
Either an individual or a company can apply for a registration.
How soon can I expect to obtain the registration certificate?
2 to 3 years (for a straight forward case).
How long a trademark registration is valid?
As long as renewal fees is paid – First term (10 years) plus Renewal terms (10 years each).
When to use “TM” and “®”?
Use “TM” – after the application is filed.
Use “®” – after the application is approved and registered.
What happen when someone infringes or imitates my mark?
If your mark is registered, you can stop them from using it by complaining to the relavant Government authorities.
If your mark is not registered, you have to sue them in court.
|
