Trademark Express - Trademark Basics

A trademark is a sign which can distinguish your goods and services from those of others i.e. a trademark is basically your BRAND NAME. A trademark can be a word, logo, sign, picture, slogan or combination of one or more of them.

You can apply for a trademark so long as your mark fulfills ONE of the following requirements:

(a) it is a name of company or individual
(b) it is a signature mark
(c) it is an invented word
(d) it is not descriptive of the your product/service, not a geographical name and not a surname
(e) it is distinctive.

If your trademark is registered in Malaysia, it provides exclusive rights to prevent unauthorized use of the trademark in Malaysia. The main benefits of registering a trademark include:

1. You become the legal owner of your mark.
2. You can put the ® symbol and this may deter potential infringements.
3. You have the right to sue infringes of your trademark in court.
4. You can obtain registration in foreign countries with an earlier date by using the priority date.

No. All trademark applications are examined by the Trade Mark Registry who may object in the event of non-compliance and also open for public opposition. If an objection or opposition is raised, you will be informed and given and opportunity to defend your application.

TM stands for “Trademark” while SM stands for "Service Mark". The symbol TM can be used for both goods or services while SM can only be used for services. You can use the "TM" or "SM" designation at any time in any place as it does not indicate that you are the legal owner of the mark.

"®" symbol stands for “Registered”. You cannot put this symbol beside your trade mark unless it is registered. Use of the "®" designation where you do not have a registration is an offence and may result in a fine.

No. Registered trade marks territorial. Therefore, if your trademark is registered in Malaysia only, it grants you protection in Malaysia only. If you wish to get protection elsewhere, you will have to apply for trademark registration in that respective country. We can assist you to file your trademark anywhere in the world.

Incorporation of your company with the Companies Commission of Malaysia where your company name contains the name which you trade does not provide you trade mark protection. Neither does a domain name registration.

No. However, if you do not reside in Malaysia, you must appoint a registered trademark agent as part of the application process.

A registered trademark lasts 10 years and renewable for a further 10 years upon expiration. If you renew your trademark periodically, your trademark is yours indefinitely.

It takes about 2-3 years provided that your application is smooth and not objected to. The lengthy period taken is procedural in nature. Please refer to the Trademark Application and Registration Process below:

STEP 1 : Trademark SEARCH (this is OPTIONAL)
Before you file a trademark application, we recommend that you first conduct a search to find out if your name is available or if it may infringe on another.

STEP 2 : Trademark APPLICATION
If our search discloses no conflicting marks, our trademark consultants will prepare the relevant forms for you and submit your trademark application.

STEP 3 : EXAMINATION by Registrar
Upon submission of trademark application, the Trademark Registry will EXAMINE your trademark application. This process takes approximately 12-18 months. The Trademark Registry may accept or object to your application. If your application is being objected to, the grounds of objection will be disclosed and you may choose whether to appeal to the Registrar to overcome the objections or to abandon your application.

STEP 4 : PUBLICATION
Once your trademark application has been ACCEPTED by the Registrar, your trademark will be PUBLISHED in the Gazette. Our trademark consultants will assist you to prepare the relevant form and artwork at this stage.

STEP 5 : OPPOSITION
After publication, a period of 2 months is open for OPPOSITION by anyone. If an opposition is filed by a third party, you may choose to defend or abandon your application.

STEP 6 : REGISTRATION
If there is no opposition or you have successfully defended against any opposition, a CERTIFICATE of REGISTRATION will be issued. The Certificate of Registration is proves that you are the owner of the mark.