Author: Brijnandan Singh Bhar & Co
TRADEMARK REGISTRATION IN MALAYSIA
The competition in 21st century among businesses has risen significantly and this trend is expected to continue since customers have higher and higher expectations. What will happen when you have invested few years, sleepless nights and a lot of money to create and manage a very successful trademark and one day receive a Legal Cease & Desist Letter warning you, that you have infringed someone’s rights and taken advantage of his/ her hard earned reputation? Ceasing the use of the trademark is not the only consequence. Defending your reputation and valuable assets can be time consuming and a costly experience.
One of the most important tools for every company to guarantee, that it is one step ahead of its competitors is creating a unique trademark. Hence, every organization should take an initiative to register its trademark, because in the very near future it can turn to be the most valuable intellectual asset.
What is a trademark?
Trademarks governed by the Trade Marks Act 1976 (or “Trademark Act 1976) and Trade Marks Regulations 1997, as objects of intellectual property are signs, which in general distinguish a product (good or service) of one trader from other identical product/s provided by competitor/s. According to the Trade Marks Act 1976, a “mark” includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”. Depending on the object (goods or services) identified, the marks can be trademarks and service marks (service marks are registrable from 1 December 1997). For convenience, the term “trademark” when used herein also includes “service mark” unless otherwise specified. The body, which is responsible for the administration, processing and registration of trademarks in Malaysia is the Trade Mark Registration Office of The Intellectual Property Corporation of Malaysia.
Advantages and importance of registering your trademark
The advantages of registering your trademark can be seen in the numerous functions they perform, such as:
1. Distinctive (Origin) Function – trademarks must not mislead customers introduced. Trademarks have to indicate the origin as well as those, who are responsible for the goods produced and services provided.
2. Quality Function – trademarks assure the quality of the products as far as they are linked to a concrete manufacturer. This function depends on the reputation of the manufacturer and quality controlling measures, which are imposed by the owner.
3. Choice and Protective Functions – these functions aim to facilitate the customer to choose goods or services, guided by his/her experience, in which once discovered products of satisfactory quality, to continue to rely on the same quality in each successive choice of a product of the same trademark.
4. Marketing and Economic Functions – trademarks can play a crucial role in advertising, creating a powerful identity for a product and can also turn into a valuable asset for every organization.
Importance of trademark registration:
– Registration assures the owner a legal protection of the trademark;
– Registration prevents third parties from using the trademark, which will damage the owners reputation and lead to confusion amongst customers;
– Registration blocks third parties from registering a similar trademark on owners goods and services;
– A registered trademark is usually a condition for applying for Government grants and can be a persuasive tool for obtaining funding from financial institutions.
APPLICATION AND REGISTRATION PROCEDURE
Pre-filing search
Conducting a search is the first step, which should be done prior starting with the application procedure for registration of every trademark, and it can be undertaken either in person at the The Trade Mark Registration Office of The Intellectual Property Corporation of Malaysia in Kuala Lumpur, or via online access to MyIPO’s database. In no way the pre-filing search should be underestimated, because it is fundamental to learn whether any conflicting trademarks exist in the marketplace.
Why is it crucial to conduct a search?
– Confirming the fact that nobody is legally using the intended trademark in the marketplace.
– Confirms if in fact that there is a lack of infringement of competitor’s rights.
– Determining whether or not to proceed with the registration process of the intended name.
Step-by-Step Application and Registration Guide
I. Actions undertaken by the Applicant: The applicant (who is an individual and a citizen of Malaysia; or a foreigner who holds Permanent Residency status and who resides in Malaysia; or a legal entity) has to file an application for registration of a trademark with the Registration Office of The Intellectual Property Corporation of Malaysia (IPCM), including completing the following:
– A completed and signed TM5 Form (five copies from this form must be submitted);
– A completed TM1 Form in case an agent is appointed;
– A Statutory Declaration;
– The prescribed fee of RM250 for each application;
– Form 49 (Companies Act 1965) for application by a legal entity;
– A copy of draft rules to control the use of the trademark (in case the mark is a certification trademark);
– A certified translation and transliteration for marks containing non-English words/ characters.
II. Actions undertaken by The Trade Mark Registration Office of The Intellectual Property Corporation of Malaysia:
1. The registration office of the IPCM issues an application number and filing date;
2. The application undergoes a formality examination and during this stage, the application will be examined with respect to compliance with formality requirements like completeness of the submitted documents as well as the completeness of filing of the application form. Two consequences can occur at the end of this examination:
– If all necessary documents are submitted and properly filed in, then the application will proceed to the next stage known as “substantive examination” (search and examination stage); OR
– If any document is missing or documents are not properly filed in, then a non-compliance notification will be sent and the Trade Mark Registration Office will proceed only to the next stage when the required documents are complete and properly filed in.
3. During the second stage of the examination process, known as “substantive examination” (search and examination stage), the application is examined with respect to compliance with all legal requirements for registration, namely:
– Whether the mark is in conflict with any existing mark/s on the Trade Marks Register in the related class/es;
– Whether the mark is a registrable trademark as determined in Section 10 of the Trademark Act 1976[1];
– Whether the mark is a non-registrable trademark.
Two consequences may occur after the end of this examination:
Either the Registration Office of IPCM will issue an acceptance letter (TM29 Form) to allow the registration in case all the requirements are fulfilled or the Registration Office of the IPCM will issue an objection letter (TM70 Form).
The applicant has the right to file a response within two months from the date of the notice (receiving the objection letter).
1) If the applicant does not submit a response within the stated period, the application will be treated as abandoned.
2) If the applicant decides to submit a response, then the examiner of the application has the right to make one of the following two decisions:
– To allow the registration of the mark or to maintain the objection.
– In this case a notice of the decision will be sent to the applicant and the latter will be given two months to request for an ex-parte hearing session to appeal for the registration of the mark.
– If the applicant does not submit a response within the stated period, the application will be treated as abandoned.
4. The Registration Office of IPCM will issue an acceptance letter (TM29 Form) to allow the registration in case all the requirements are met. The applicant will be invited to pay the prescribed publication fee of RM450 and file a request for advertisement.
5. Upon payment of the prescribed publication fee and filing of the request for advertisement, the trademark will be advertised in the Government Gazette. Any third party has the right to file an opposition (TM7 Form and the prescribed fee) against the registration within two months from the date of the advertisement. If no opposition is submitted, then the application proceeds to registration.
If there is an opposition, then the applicant is allowed to file a counter-statement (TM8 Form) within two months of receipt of the notice of opposition. The opponent is obliged to file evidence in support of his opposition (a copy of this evidence should be sent to the applicant) within two months of receipt of the counter-statement. The applicant, on the other hand, shall within two months of receipt of the evidence, file evidence in support of the application (a copy of this evidence should be sent to the opponent). The opponent has the right to file evidence in reply by way of a statutory declaration (a copy of this evidence should be sent to the applicant) within two months of receipt of the copies of applicant’s evidence.
6. Upon completion of all the actions stated above, The Registration Office of the IPCM is obliged to determine a date by which date the applicant and the opponent are allowed to send any arguments or submissions in writing.
7. The IPCM is obliged to take a decision and communicate it to the parties. The trademark will be registered if it has not been opposed or the opposition is overcome, i.e. the decision is favorable to the applicant.
8. Trademark Certificate: Finally, the owner of a successfully registered trademark will be provided with a Trademark Certificate issued by IPCM. This Certificate can be used as a legal evidence of trademark ownership in the Court in case the owner initiates legal actions under the Trade Marks Act 1976.
Expediting the Registration process
An applicant for registration of a trademark is allowed to file a request for expedition of examination (this is allowed only for applications filed after 15 February 2011 and only the timeframe is shortened within which the trademark is examined) provided that it is filed within four months from the filing date.
The request must be reasoned and subject to approval by the Registrar on the following grounds:
– National or public interest;
– There are ongoing infringement proceedings or evidence of potential infringement;
– Registration of the trademark is a condition for obtaining monetary benefits from the government or institutions recognised by the Registrar;
– Other reasonable grounds.
Post Registration Actions
After the successful registration owners have to ensure that the registered trademark is used, otherwise it may be expunged from the Register (if not used for a period of three years or more).
After successful registration of the trademark, the owner is also obliged to notify The Trade Mark Registration Office of The Intellectual Property Corporation of Malaysia of any changes in name or address (by submitting TM16 Form and the prescribed fee), sale or assignments[2] (TM15 Form, deed of assignment and the prescribed fee) and licensing[3] (TM23 Form, agreement and the prescribed fee).
The duration of protection of a registered trademark is 10 years from the date of application. If owners would like to continue using the trademark, at any time, not less than three months before the expiration of the mark, the owner is allowed to submit TM12 Form and the prescribed fee for the renewal of the duration period for another 10 years.
Exclusive rights
The owner of a registered trademark has exclusive rights to use the mark for the goods or services for which the registration is obtained as well as allow other individuals or businesses to use it (for free or for royalty payments). The proprietor also maintains the rights to prohibit third parties using the trademark and take legal actions against everyone infringing his/her registered mark without consent. However, the owner has the right to defend his trademark in case it is not registered, relying on the common law remedy known as “passing off”, in which the owner can sue (the disadvantage is that the dispute can be time consuming, difficult and expensive) the infringer for passing off its mark as that of the owner.
The following remedies can be obtained from the court in case the infringement or passing off action is successful:
– Obtain an Injunction. This will prohibit the party who is using the mark from continuing to use it;
– Obtaining an Anton Piller Order allowing the plaintiff to enter specific premises to inspect and take infringing documents where it is highly likely the documents will be destroyed or concealed;
– Seeking Damages for an infringement of a trademark and “passing off” under common law.
– Obtaining a Trade Description Order (hereinafter referred to as “TDO”) under the Trade Description Act 1972, is another remedy against an infringer of a trademark or a person liable for passing off. The TDO can be used by the officers of the Ministry of Domestic Trade, Cooperative and Consumerism to seize goods affixed with the trademark and prosecute the manufacturers and/or the sellers.
–
–
FAQ – Frequently Asked Questions
–
1. What is a trademark (TM)?
A trademark, as an object of intellectual property is a sign/ distinctive mark, which consists of device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof, and functions in a way to distinguish the goods of one trader from another.
2. What is a service mark (SM)?
A service mark, is a sign/distinctive mark, which consists of device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof, and functions in a way to distinguish the services of one provider from those of another.
3. What is the difference between TM, SM and “R”?
TM is a sign used to indicate a trademark, and SM is a sign used to indicate a service mark. When a mark is registered, the registered trademark symbol “R” is used in order to indicate a registered trade or service mark.
4. Can I use the “R” symbol before my mark is registered?
No. It is illegal in Malaysia to use the registered trademark symbol “R”, before you have received your Trademark Certificate for registration.
5. Is registration of trademarks in Malaysia mandatory?
It is not mandatory, however businesses and individuals or potential owners are strongly recommended to register their trademark.
6. How long does the application process take?
The period varies, but in general the entire procedure takes between 13-18 months. If there are any objections or complications, the duration can be longer.
7. What is the protection duration of a registered trademark?
The duration of protection of a registered trademark is 10 years from the date of application. Owners of trademarks are allowed to renew the registration indefinitely for consecutive periods of 10 years where renewal fees are paid.
8. How many classes are there in the trademark classication?
There are 45 classes in total within the 10th Edition of Nice Classification (it sets out 34 classes of goods and 11 classes of services) adopted by the Intellectual Property Corporation of Malaysia. Applicants do not need to apply for all 45 classes. They need to apply only for those classes which are applicable to their products.
9. If my trademark is registered in Malaysia, is it protected worldwide?
No, trademark protection is territorial. If you want to seek IP protection in other countries, you have to file a new trademark application in every intended country using the Malaysian application as a basis for claiming priority in countries which are parties to the Paris Convention or World Intellectual Property Organization (WIPO).
The above summary of the trade mark registration process produced by Brijnandan Singh Bhar & Co is extremely simplified. It is provided for general information purposes only. It cannot be interpreted or construed as an expert individual consultation or expert legal advice. Each situation will vary depending on the facts of each case. For this reason, before acting on any issue described and if you are seeking more legal information and advice, please contact Brijnandan Singh Bhar & Co.
–
[1] 10. Registrable trade marks. (1) In order for a trade mark (other than a certification trade mark) to be registrable, it shall contain or consist of at least one of the following particulars:(a) the name of an individual, company or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or of some predecessor in his business;
(c) an invented word or words;
(d) a word having no direct reference to the character or quality of thegoods or services not being, according to its ordinary meaning, ageographical name or surname; or
(e) any other distinctive mark.
[2] A trademark assignment means the transfer of ownership of the mark from the owner to a third party. [3] A trademark licensing is granting the right to use the trademark by the owner to any person, who will be introduced in the Register as a Registered User.
