A business name and/or logo is used in the course of trade to identify your goods/services offered. Once you’ve started to use the business name/logo, you’re developing a common law trademark protection for them. To give more grounded protection to your trademarks, you must register them with the Malaysia trademark office, i.e. Intellectual Property Corporation of Malaysia (MyIPO).
Trademark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
According to MyIPO, a trademark can be:
“any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, color, sound, scent, hologram, positioning, a sequence of motion or any combination thereof.”
The steps for you to register a trademark in Malaysia are as simple as do a Malaysia trademark search, file an application, to follow-up, regular monitoring, etc. The outline of the steps you need to take to secure and maintain your trademark is as follows: –
#1 Do Your Homework and Do a Malaysia Trademark Search
The MyIPO will not allow your trademark to be registered if the use of which is likely to confuse or deceive the public or contrary to law; if it contains or comprises any scandalous or offensive matter or would not otherwise be entitled to protection in any court of law; or if it might be prejudicial to the interest or security of the nation, i.e. it may be that a mark contains an inflammatory statement or words.
To minimize the chance that your application to be rejected, for these reason, you must conduct a comprehensive Malaysia trademark search before applying for a trademark in Malaysia. A comprehensive search will include searches for Malaysia trademarks that are registered with MyIPO.
#2 Apply Trademark in Malaysia
If your Malaysia trademark search doesn’t reveal any conflicts with pending or registered trademarks, the next step is to file a trademark application with the Malaysia trademark office, MyIPO. Representation of your mark is required to be provided as it appears by itself. You must also identify the types of goods or services that you use your mark for. It’s important to be accurate because the extent of your trademark protection is very dependent on the types of goods or services you listed in your application.
#3 Respond Promptly to Office Actions or Oppositions
Once your trademark application has been submitted, it will be then assigned to a MyIPO Examiner who will peruse and review it. If the MyIPO Examiner has any questions or concerns regarding your trademark application, he/she will send you an official letter called an “Office action”. Office actions are not unusual, and it’s important to take them seriously and respond by the stipulated deadline. If you miss the deadline, your application might be considered abandoned. To respond to an Office action, you must address the problems/concerns to the satisfaction of the MyIPO Examiner. Once all issues/concerns have been resolved, your trademark will proceed to be published in the Government Gazette/IP Journal and anyone who objects to the trademark registration may file an opposition.
#4 Monitor Your Trademark
Once your trademark has successfully been registered, you can start using the registered trademark symbol, ® on your trademark. But your efforts to protect your trademark shouldn’t end there. The MyIPO registers trademarks, but it does not enforce them—that’s up to you.
One way to protect your trademark is to monitor MyIPO filings and oppose any applications to register trademarks that are similar or identical to yours. You may also be assertive if you have the knowledge or are aware of another individual/company is using a name or logo that’s similar to your registered trademark in the course of trade by issuing a simple cease and desist letter to stop the infringer. But, if that does not work, you may consider filing a lawsuit for trademark infringement with the court in Malaysia.
#5 Maintain Your Trademark
Trademark registrations will last for 10 years and are renewable perpetually for every 10 years.
Once your trademark is registered, be sure to monitor it to ensure that your hard-earned trademark protection lasts as long as your business.
#6 Continued Use of the Trademark
Additionally, you must also continue to use your trademark or it may be revoked after 3 years of not being used in good faith in Malaysia.
#7 Register Your Trademark Overseas
Registering your trademark in Malaysia will also allow you to register it in other jurisdictions overseas via the Madrid Protocol whereby Malaysia has recently acceded as one of the member countries. Madrid Protocol is a system for registering trademarks in multiple countries with a single application.
Madrid Protocol process would be useful if you intend to expand your business overseas, as it is a much simpler and more cost-effective process than registering your trademark in multiple jurisdictions individually.
A thoughtful trademark strategy adds value and prevents misuse of your brand/trademark by others. Keeping the above steps in mind while formulating your trademark strategy will help you to build a dynamic brand that aligns with your current and future business goals.
Ready to protect your trademark? Pintas Group is here to help. Pintas Group offers a wide range of IP services including filing your trademark, responding to office actions, monitoring, and maintaining your trademark portfolio.