A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.
Before you go shouting your brands from the rooftops, there are some important things you need to know about obtaining trademark in Malaysia.
Here are 10 questions you need to have the answers to.
1. What can be protected as a trademark in Malaysia?
A registrable trademark is one that can include a distinctive logo or symbol, image, name, signature, word, letter, numeral or any combination thereof.
Non-Traditional Marks (NTMs) such as smells, sounds, colours, shapes, moving images, tastes and textures are now also registrable in Malaysia. Get in touch with us if you’d like to find out whether your marks are registrable in Malaysia.
2. Must I be the creator of the trademark for me to register the mark under my name?
No, unlike copyright and industrial design law which confers first ownership to the creator of the intellectual property, trademark law confers ownership based on a first-use basis.
3. How can I protect my trademark in Malaysia?
In Malaysia, trademark protection can be obtained through registration or through use. In some countries, you can only establish rights in trademarks when you actually register them.
4. Is it compulsory to register my trademark in Malaysia?
Registration is not compulsory in Malaysia to establish rights in a mark, nor is it required to begin use of a mark. An unregistered mark may still be protected under the common law action known as “passing-off”. However, it is highly advisable to register your trademark, as registration provides distinct advantages beyond the rights acquired by merely using a mark.
5. Is a trademark search necessary to be conducted before the trademark filing in Malaysia?
A trademark search allows you to check and determine whether the mark you intend to register is available for registration in Malaysia 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 Malaysia.
6. What are the general requirements for filing a trademark application in Malaysia?
- Application Form (TMA 2).
- One clear print for a black-and-white mark; 15 prints for a colour mark.
- A list of goods or services (which closely follow the Nice International Classification 11th Edition).
- The full name and address of the applicant, company, country/state of incorporation.
- For marks that contain non-English words, a certified transliteration and translation.
- If convention priority is claimed, a certified copy of the priority application (with a certified English translation where documents are not in English).
It’s important that you consult and engage a reputable IP firm to ensure that all the requirements in registering your trademark in Malaysia have been met and so that you can get approval as quickly as possible.
7. How long does the trademark registration last?
The registration will be valid for ten (10) years from the date of filing of the trademark.
8. Can the trademark registration be renewed?
Yes. The trademark registration is renewable for an extended period of ten (10) years by submitting the prescribed form and payment for renewal.
9. Is the trademark registration in Malaysia valid in another country?
No, trademark protection is territorial in nature. If you registered your mark in Malaysia, your mark is only protected in Malaysia.
10. Can other people use my trademark once I’ve registered it?
No, being a registered proprietor of a trademark means you have the exclusive right over your trademark. This would prevent any unauthorized use of your trademark by any third party. You may however choose to licence the trademark.
Nonetheless, you may seek professional advice if you believe that someone is infringing your trademark. An intellectual property expert would be the right person to give you information on the existing options in Malaysia and, presumably, also in neighboring countries to initiate action against counterfeiting and infringement and will provide you with advice on how to enforce your rights.
Get expert help to file your trademark in Malaysia
The 10 questions we’ve addressed have given you a lot to think about. And it’s important for you to take the time to weigh the pros and cons before you get too deep into the process and lose valuable money and time.
Seek the services of a reputable IP firm like Pintas to help you through the trademark registration in Malaysia.