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- Trademark & Copyright Registration on MYIPO in Malaysia
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What Is Trademark And Why You Need One To Protect Your Brand
A trademark can be in a form of word, phrase, slogan, symbol, design such as logo, or combination thereof which work as the identity of a product or service that makes them recognizable and distinct from the other products or services. These trademarks let others and consumers know that the goods come exclusively from you, not from other people nor the other company. Put it in a simple way, it can be seen as a brand that protected by intellectual property rights.
Trademark is not only limited to products, logo or goods. Besides trademark, there is also another form which is the service mark. While the trademark identifies the source of the products, the service mark identifies the source of services. Commonly, a service mark can also refer as a trademark. The symbol of the trademark is TM and the symbol of service mark is SM, only when the mark is already registered you can use the ® symbol beside your mark. You can search for any trademark via MYIPO in Malaysia. Anyone can become the owner or register a trademark, including an individual, business organization, or any other legal entity. The mark can be put on a package of a product, label, displayed on the company building, or be used in the product itself.
As intellectual property rights, a trademark can be registered although it is not mandatory. However, when it registered you or your company can legally claim the ownership of the mark, hence making it exclusively yours and forbid others to use it without legal permission. Whilst similar, a trademark is different from patents and copyrights. It can last forever as long as you continue to use it and file certain documents along with fees at regular intervals if it is registered. Both patents and copyrights have limitations in terms of time applied. In Malaysia, the registered trademark lasts for 10 years than can be renewed again every 10 years. Please do note that a registered trademark is only valid in the country where the registration is conducted. Hence, if you only register the mark in Malaysia, it is only protected in Malaysia. But, you can use your registration in Malaysia as the basis to register the mark in another country.
Different Types Of Trademark
Any signs that can be represented graphically which is capable of distinguishing products as well as services different than others can be used as a trademark. The signs can be one or a combination of several things below:
- The shape of goods or their packaging
- Sequence of motion
There are also several types of trademarks, which are as follows.
- Certification marks Marks which are used to demonstrate that the products have met a set of certain standards regarding their quality, accuracy, or some other characteristics such as origin, material, or mode of manufacture and have been certified by a certifying authority. Rather than distinguishing the source of product, it shows the quality of the goods or services. Owners of the certification mark may license the mark to anyone or any company that met their requirement standards, and the arrangement of the licensing may work for a one-time fee, ongoing royalty, or no monetary compensation at all.
- Defensive marks: Already well-known invented word(s) marks which registered in respect of products other than their products but their registration cannot be removed from the Register on grounds of non-use. The defensive marks will provide protection against misuse of their trademark in a way that can cause harm to the value or reputation of the established trademark.
Even though you can creatively make any kind of trademark, not all signs can be registered lawfully as a trademark. If you want to register one, make sure that your planned trademark does not fall to one of these criteria:
- The use of the sign is likely to deceive and/or cause confusion to the public and would be contrary to the law.
- Deceive or mislead the public or consumer regarding the nature, quality, or geographical origin of the products
- Contrary to the public interest or morality
- Contain or consist of any scandalous or offensive matter
- Contain a matter that might be prejudicial to the interest of the security of the country
- Contain or consist of the name or representation of another person without the consent of that person
- Contain or consist flag of a country, national emblem, emblem, insignia, or royal arms unless having the authorization to do so
- Contain or consist of a word which is commonly used or is the accepted name of any single chemical element or compound as it is declared by the World Health Organization as an international non-proprietary name
- Contain or consist any for the following sign: the word “Patent”, “Patented”, “By Royal Letters Patent”, “Registered”, “Registered Design”, and “Copyright”
- Identical or similar to a well-known trademark whether it is registered in Malaysia or not
In addition to the above, for a trademark (other than a certification trademark) to be registrable it should have at least one of the following:
- Name of the individual, company, or firm which is represented in a particular or special manner
- Signature of the applicant or the predecessor in the business
- An invented word/words
- A word that has no direct reference to the quality or character of the products or services which the ordinary meaning is not a geographical name or surname
- Any other distinguishing mark
Purpose Of Trademark
The main purpose of a trademark is to allow the consumer or potential one to identify a product, whether it is an item or a service of a certain company in order to differentiate it from many other similar or identical products produced by the competitors. This plays a significant part in the strategy of marketing and branding of the company, which contributes the most to the image of the product to the consumers and the public.
A well-known and good trademark can be a valuable business asset for the company since the consumers have put their trust in the image and the qualities associated with the mark. Hence, they will be more willing to pay the higher price for the product since it meets their expectation of the mark. The reputation hold by the trademark will provides any company that owns it a competitive edge.
There are several privileges you can get when you register your trademark officially. The registered trademark can provide exclusive rights as well as legal evidence. Having a trademark registration provides a defense in case there is an attack by a third party who challenges the usage of your mark. You can take legal action against any party who infringes upon your registered trademark. By submitting a complaint to an infringer, a raid and seizure action may be conducted as well as prosecuting the infringer. Thus, protecting your brand from any harm regarding the intellectual property rights your trademark possessed.
How To Apply for Trademark In Malaysia
In Malaysia, the registration of a trademark can be conducted by applying a submission to the Intellectual Property Corporation of Malaysia, which is known as MyIPO. Given that there is no obstacle in the registration process of the trademark, it usually takes about 12-15 months for a mark to be fully registered. Once registered, the trademark will be valid for 10 years and can be renewed again every 10 years. The registered trademark must be used when it successfully registered, as non-use of registered trademark for a period of three years from the date of registration will result in revocation of the registration.
Here is the step by step guide on how to register a trademark in Malaysia:
- Design your own distinguished trademark. Make sure that your design such as logo shall fulfill all specifications listed in the Malaysian Trademarks Act 2019 and not fall in the criteria of the absolute and relative grounds of refusal.
- Determine the classification of your products. A trademark is registered and protected according to the type of the products, you can identify and search what classes are relevant with your products (goods or services) under Nice Classification.
- Perform a pre-filing trademark search and analysis to evaluate your chances of registration. This will avoid the potential of MyIPO to reject your submission by making sure that no one else has registered a similar mark as yours. When the result of the search proved that there is a similar mark being registered by others, you can modify the planned trademark to not look the same before the registration process proceed.
- Prepare the submission and file the trademark application, by sending the completed form to MyIPO. This form contains the contact details of the applicant, graphics such as logo or illustration of the mark that will be submitted, description of the products and the class you want to obtain the trademark registration, declaration on ownership of the mark, and pay the required fees in accordance with how many classes you applied the trademark for.
- Wait for the examination by the trademark examiner to be completed. This usually takes about 6 – 12 months in Malaysia. If any discrepancies are found within the registration, the applicant will be given the opportunity to respond or correct the irregularities.
- Publication of the trademark registration. Once the examination has been finished, your mark will be advertised for 2 months, this will give time if there are others who want to oppose your registration.
- A certificate of registration of the trademark will be issued if there is no opposition from other parties during the prescribed period of publication. At this point, you can use the ® sign within the trademark and it is now protected by law.
Registering a trademark can be a daunting and challenging task for many, especially if you are not familiar with the process that comes along with it. We can help you to get a thorough and smooth trademark application, guiding you from the very first step until you can successfully have your own registered trademark.
Our services in trademark registration assistance encompass the following activities:
Trademark Comprehensive Study
Our trademark comprehensive study service will serve as consultation and recommendation before you actually register your trademark. The services are including advising which class(es) would be appropriate for you to register your trademark, performing a depth search of existing files as well as registered trademarks that have a resemblance to your proposed mark, whether it is graphic or phonetic similarities. Lastly, based on the research results we can give you the analysis and recommendation along with the estimation of the chance of obtaining the trademark registration.
Trademark Registration Assistance
In assisting you with the trademark registration, we can help you to prepare all the necessary documents and requirements needed for the application. Once the documents ready, we help you to submit the application to the MyIPO and inform you of all the updates and events regarding the registration, especially if there are objections and opposition from the trademark examiner. In regards to such an event occurred, our company will guide you on how to solve the problem so that the registration can proceed successfully.
Trademark Renewal Assistance
As previously said before, a registered trademark can only valid for 10 years since the date of registration and must be renewed once every 10 years in Malaysia. Although similar, the renewal of trademark registration requires different forms to be completed. In this case, we can help you to prepare all the necessary documents and paperwork needed.
In addition to all the services mentioned above, our experienced consultants can also aid you with other assistance related to trademark or other intellectual property rights inquiries.
Feel free to ask and contact us if you have any questions as well as want more information related to the trademark registration and our services. We are pleased to accept any inquiry whether you are from an individual, start-up, or big corporate company, Malaysian permanent resident, or non-Malaysian applicant.
You can send us an email for any questions about our services and we will get back to you as soon as possible or in one working day. For a quick reply, please give us a call or send us a Whatsapp message. Thank you.