Registration of TradeMark in Malaysia and Asian Countries
Your brand is the face of your business. It is the recognition of that which brings in your customers. Unless it is protected, it can easily be copied and misused by others, leaving very little scope for legal action.
If you have not registered your mark, we urge you to do so, to ensure protection against Intellectual Property (IP) theft or misappropriation.
Should your mark be already registered, we would suggest you also determine the following, to ensure that your trademark is properly protected:
- Check the class in which your mark is registered and ensure it is the correct one
- Be sure that the mark is registered in all relevant countries and under the rightful owner
- Execute all enforceable licensing arrangements
We provide a hassle-free and cost effective assistance for the protection of your IP rights be it your marks/tag lines, products and technology in Malaysia and in any other country. We are keen to share with you valuable insights on patent and trademark licensing and franchising so that you can obtain maximum returns from your R&D efforts.
If you are uncertain and need assistance on the above, or in terms of identifying, protecting and maintaining your IP Rights, we will be more than happy to help. We have the experience, expertise and resources to assist you in obtaining protection and enforcement for your IP Rights in all your markets – just as we have done for many other business owners throughout the years.
Our range of services includes helping you with trademarks registration in Malaysia. If your company has a logo or any items that need to be trademarked, we will assist you in carrying this out as your own unique logos will ensure a strong brand image for your business.
We will help you to determine all the issues involved that include proper and full documentation for application, ensuring the availability of the logo and design and submitting them to MyIPO (Intellectual Property Corporation of Malaysia). Where needed, we will also assist you in designing your logo for better effectiveness and corporate image while following-through the whole application process.
If you own a product or a brand identity that you do not want others to copy, then you need to get it trademarked. Often, you will notice a small ‘TM’ on the footnote of a logo which means it is registered and that no one else can use the same logo.
What is a Trademark?
Basically, a trademark is an identity that you have which represents the trade you are in. What it does really is to differentiate you from others. That is why logos are mostly trademarked like Coca-Cola or KFC.
Why you should trademark?
The main reason you should trademark is that you want to protect your reputation. If you are concerned with your brand image, then you should trademark your product or logo. The choice is yours and with a little bit of effort, you get protected in a long way. But if you really need a reason to, it can be:
- Straigthforward process – The process is easy and simple. You need to fill-up the form, get documents and submit them. Then, wait for the approval.
- Easy to classify – There are 45 different classes of Trademarks. They are classified into almost every type of commercial activity conceivable and your business could easily be in one or a few of them.
- Affordable – The registration fees in Malaysia is less than RM1,000 and that is considered to be very cheap. Once you get the trademark, you own it.
- Protection – With a trademark, it stops others from using your brand or name. It also helps you to win any lawsuit if anyone breaches the trademark.
- Value for business – Your customers are more confident of your brand or product because it is trademarked and not of imitation or fake. It also helps someday when you decide to sell your business.
What can you trademark?
A trademark can be in various forms such as a number, a logo, an image, a symbol, a string of words or characters or combinations of any of them. However, there are several items that cannot be trademarked in Malaysia which:
- are against the Malaysian law
- can confuse or deceive the public
- are offensive or disturbing material which is against the law
- might be prejudicial or cause social unrest (according to the opinion of the Registrar)
- might be similar, identical or resemble any mark to other businesses that are trademarked
- and others.
Some tips on trademarking
Malaysian companies and businesses are not known to trademark their entities mostly because many are not aware of its importance. If you are considering trademarking any part of your business, you might want to consider:
- Specially coined names that are commonly used for brands. For example, Coca-Cola or Fujitsu which are all special names.
- Descriptive names like Kluang White Coffee. This indicates a place and the signature beverage but when they are put together, they signify a certain brand which the customer could associate with. Take note that descriptive names might be confusing and might not be registered. For instance, you might not be able to trademark the name ‘Best Tuition Centre’.
- Not using names that are similar to the one which is already trademarked. You would most likely not succeed in registering a trademark for a name McDunells which has a similar pronunciation with McDonald’s.
In other words, if you have your own logo or a business name that you feel is distinctive and illustrates your business very well, then you should have it trademarked. This will give you assurance and protection at the same time so that others cannot use your name for their own benefits.
Registering your trademark
In order to trademark your identity, you need to have it registered. In Malaysia, you need to do this via MyIPO (Intellectual Property Corporation of Malaysia). You need to download the TM5 form from its website or send it in via the online process. This will incur a cost of RM370. Besides that, you need to submit several documents which include:
- 5 Copies of the TM5 form
- The original Statutory Declaration of the trademark intended.
- A copy of the company details as stated in Form 49 (for registered businesses)
- A copy of the translation of the intended trademark (if your trademark is not in Roman Characters)
The application process
To register your trademark, the process is as below:
- Submission of application to MyIPO
- Formality examination by MyIPO
- Statutory requirements checking. If it is not fulfilled, there will be a Provisional Refusal. Otherwise, it will proceed to the next step.
- Substantive Examination stage and if fail, then you will receive a Provisional Refusal.
- If you pass the Substantive Examination, then you will be accepted and published into the Intellectual Property Official Journal.
- If there are no objections at this stage, your trademark can hence be registered.
What else do you need to know?
Basically, your trademark lasts for 10 years. This starts from the date your trademark was registered. After that, you can extend it for another 10 years. This can be done by paying RM420 and submitting the TM12 document. If your trademark is registered in Malaysia, it is only valid in Malaysia and not in other countries.
You will receive the Certificate of Registration of Trade Mark once your registration is successful. If you do not use your trademark for 3 years or more, your registration might be revoked.
No on the parties can use your mark once it is registered and anyone who does so would have infringed your rights as the legal owner and you can then take appropriate action against them.
Extending your Trademark internationally
Malaysia recently became the 106th member of the Madrid System which consists of 122 countries. This is where your Malaysian-registered trademark can be protected in the countries of the system by filling up an application and paying the required fees.
