Social enterprises and non-profit organisations would of course be very familiar with the word “trademark”.
You would probably have heard how “valuable” some trademarks, slogans and brands are
as well....for example, everyone knows that the“Apple” brand and its corresponding apple-shaped trademark, is worth millions. Same goes for Nike’s “swoosh” and its
trademarked slogan “Just Do It”.
As your small social enterprise or non-profit organisation begins its journey, you might feel as though you need to know more about trademarks. The resources and links below will hopefully give you a better idea of what trademarks are and how they are protected in Malaysia (and internationally).
1. What qualifies for registration as a trademark?
Section 3 of the Trade Marks Act 1976 provides a list of stuff that could qualify for trademark registration. The list includes words, logos, slogans, heading, brands, names, signatures...basically, just about anything linked to sales and marketing of any product or service under the sun, could be a trademark. The "legalese" definition of a trademark, for those who are interested, is as below:
"… the mark is an indication of a connection in the course of trade between the goods/services, and, the owner of the trademark" (FYI, the “owner” is usually referred to as the “registered proprietor”).
2. How is a trademark created and which statute contains the law governing trademarks?
The Malaysian Intellectual Property Office (MyIPO) provides a lot of useful, free information on trademarks as well as other forms of intellectual property. Some basic info on trademarks is here.
In short, trademarks are regulated by the Trade Marks Act 1976 (including all subsequent amendments thereto) and the corresponding regulations.
3.Who can apply to register a trade mark?
Any person, whether a Malaysian citizen or not, who is the owner of the trade mark used or proposed to be used, by him in Malaysia, may apply for the registration of a trademark in Malaysia. The owner may be an individual, partnership, company or organization.
4.When can you apply for a trademark?
An application for trade mark may be filed at any time, whether it has been used, or has yet to be used.
5.What can be registered as a trademark?
Section 10 of the Act provides a list of what kinds of marks do and don't qualify for registration. Essentially, a trademark should be distinctive. This is a complicated way of saying that a trademark should be "different from other trademarks". For a more detailed list of the do's and don't, go to Section 10 of the Act.
6.What cannot be registered as a trade mark?
Some logos or words are statutorily prohibited from registration. See Section 14 of the Act and also,
Also, Item 7 of the MyIPO Trademark FAQs.
7.What are “Classes” and why do I need to know about them?
Basically, trademarks (for products) and service marks (for services) are registered under different classes, which are arranged according to descriptions of the products and services. You can review all the trade and service mark classes here. As a general rule, service marks are always registered under Class 42.
8.How do I do an online search and how do I file my application?
Before opting to file a trademark application, you should do a search first. This basically means that before
filing your application, you should first check what other similar or even identical marks have already been grated registered trademark status, in your category of goods or services. This will help save you the time and costs involved in applying to register a trademark which is identical or
similar to trademarks registered earlier on by other parties.
All searches can be done at the Public Search Room, at the MyIPO. A fee of RM 20 per hour will be charged.Alternatively there is an online search option here. However, it is better to do a manual search just in case the online records have not been updated. A manual search can be done by completing and submitting Form TM4A and annexing a representation of the mark. Form TM4A and other forms can be downloaded from MyIPO's web portal, here.
As for the actual filing, there’s a list of forms and documents forming part of the application and a list of filing fees, here..
According to MyIPO’s website, each applicant must file form TM5 (5 copies) and submit a Statutory
Declaration declaring ownership of the mark and pay the prescribed fee. If payment is by cheque/money
order/postal order, it should be in the name of Perbadanan Harta Intelek Malaysia.
One also needs to submit other supporting documents such as Form 49 for a company (sole proprietor and partnership), documents for Priority Date Claim (PDC) and others.
MyIPO’s website goes on to state that an application can be filed at, and inquiries can be made at, the
following address :
Intellectual Property Corporation of Malaysia (MyIPO)
Unit 1-7, Ground Floor, Menara UOA Bangsar
No. 5 Jalan Bangsar Utama 1
59000 Kuala Lumpur
Tel: +603-22998400
Fax: +603-22998989
Unit 1-7, Ground Floor, Menara UOA Bangsar
No. 5 Jalan Bangsar Utama 1
59000 Kuala Lumpur
Tel: +603-22998400
Fax: +603-22998989
9.Is it necessary for an applicant to appoint a registered trade mark agent for purposes of filing an application?
A local applicant may file a trade mark application directly himself. A foreign application can only be filed
A local applicant may file a trade mark application directly himself. A foreign application can only be filed
through a registered trade mark agent.
10.Who is a registered trade mark agent?
A registered trade mark agent may be an individual, firm or company who has been registered in the
10.Who is a registered trade mark agent?
A registered trade mark agent may be an individual, firm or company who has been registered in the
Register of Trade Marks Agents.
They are appointed by the applicants to act on their behalf, in obtaining trade mark registration.
While small social enterprises and non-profit organisations would of course need to economise and manage resources wisely, when it comes to intellectual property matters, I would suggest that you get the assistance of a registered trade mark agent right from the start.
While small social enterprises and non-profit organisations would of course need to economise and manage resources wisely, when it comes to intellectual property matters, I would suggest that you get the assistance of a registered trade mark agent right from the start.
While a lot of information is available online, navigating the morass of rules, regulations and procedures is not at all a simple process.
You could make mistakes or waste time trying to work out what you need to do. Besides, online resources, including this article, cannot be taken to amount to proper legal advice.
It is best to use a qualified trademark agent or intellectual property lawyer as such professionals are well-versed in the rules and regulations. Such agents are usually located in legal firms or in intellectual property consulting companies.
For a list of registered trademark agents in Malaysia go to MyIPO's List of Registered TM Agents.
11. How does one secure protection abroad?Does a Malaysian filing give you automatic protection in all countries in the world?
No,so if you plan to expand your business to penetrate new markets in other countries, you’ll need to apply
for registration separately in each of those countries. However, a Malaysian application can be used as a
basis for claiming priority in countries which are parties to the Paris Convention and are members of the
World Trade Organization (WTO).
In terms of costs, this is certainly an issue - as the more jurisdictions you need to protect your trademark in, the higher your application, prosecution, enforcement and renewal costs. Be sure to ask your trademark
agent about these costs.
12.How long is a registered trademark valid?
13.How long does it take to register in Malaysia and what is the process?
A flowchart showing the end to end process is available on MyIPO's website. Flowchart and Expedited Examination Flowchart.
It should be noted that the exact timeframe will depend on whether there are any objections (from the Registrar) or oppositions (from third parties) to your application. If there are, you’ll need to overcome them before proceeding to the next step. If not, you’ll sail through the stages right up to registration. Given that the outcome depends on whether there are objections/oppositions or not, it’s not possible to
predict exactly how long the process will take.
14.Why register a trademark? What rights does the registered owner get?
15.Is trade mark registration compulsory?
The purpose of trademark registration as discussed earlier, is really to obtain exclusive rights for purposes of exploitation and commencing infringement actions. However, registration is not compulsory.
16.What happens if the trade mark is not registered in an action for infringement?
16.What happens if the trade mark is not registered in an action for infringement?
So what happens if you didn’t register, and you find someone using your trademark? The reality is, the use of a registered trademark or service mark or even an unregistered one, without the permission of the owner, still amounts to an infringement and you as the owner of the mark would potentially still have a case.
However, there is a key difference. Registration of the mark is conclusive evidence of ownership of the mark and the exclusive right to deal with the trademark. It is therefore easier to win your case if you are the
registered proprietor.
If your mark is not registered however, it doesn’t mean you can’t commence legal action, but you won’t be able to so under the Act - instead, you’ll be in for a much harder time trying to establish the elements of what is known as the common law tort of passing-off. This case outlines a trademark dispute with the element of passing-off thrown in as well.
17.What actions are prohibited under the Act?
a) Unauthorized use of a similar or identical mark in respect of the same goods or services in a way that confuses or deceives the public;
b) Unauthorised use of a mark which is identical/highly similar to the registered mark, such that it imports a reference to the registered proprietor.
18.Other than civil remedies involving the owner funding his own litigation in court, what other
enforcement actions and criminal sanctions are available under the Act?
As long as you are the registered proprietor of the trademark under the Act, you may avail yourself of the
enforcement strategies under the Trade Descriptions Act 2011. Under this piece of legislation, you can apply to court for a declaratory order declaring that the particular trademark or get-up is is a false trade description.
Under the Trade Description Act 2011, the enforcement division of the Ministry of Domestic Trade, Co-operatives and Consumerism can act on the complaint.
This is especially useful when the trademark owner does not know who the infringer is - only that there are products in the market bearing a mark similar of identical to his registered trademark, and yet they were not manufactured or distributed by him.
This article provides an overview of the Trade Descriptions Act.
No comments:
Post a Comment