Trade Mark Protection in Malaysia

Why should your company protect its trade mark(s) in Malaysia and other oversea countries?

• Registration of a trade mark symbol gives your company the exclusive right to prevent others from marketing identical or similar products under the same or a confusingly similar mark.
• It is much easier to license a registered trade mark to other companies, thus providing an additional source of revenue for your company, or may be the basis for a franchising agreement.

How to protect your company’s trade mark?

• Trade mark protection can be obtained through registration or, in some countries, also through use. Registering a trade mark will provide stronger protection, particularly in case of conflict with an identical or confusingly similar trade mark.
• In general, any person who intends to use a trade mark or to have it used by third parties can apply for registration. It can be either an individual or a legal entity.

How long does it take to register a trade mark with the trade mark registry?

The time required for the registration of a trade mark with the trade mark registry will vary significantly from country to country, generally ranging from three months to two years or more, depending, among other things, on whether the trade mark registry conducts substantive examination. We recommend clients to first conduct a trade mark search to ascertain whether there are any other similar trade marks on the trade mark registry before proceeding to apply their trade mark for registration.

How long is your registered trade mark protected?

A term of protection may vary, in a large number of countries; registered trade marks are protected for 10 years. Registration may be renewed indefinitely (usually, for consecutive periods of 10 years) provided renewal fees are paid in time.

Is trade mark registration in your home country valid internationally?

The legal rights arising out of a trade mark registration are normally limited to the territory to which they pertain; so, ordinarily, valid registration of a trade mark in Malaysia gives the rights to use the trade mark only in Malaysia unless the mark is considered to be a well-known mark. Well-known marks are marks that are considered to be well-known by the competent authority of the country where protection for the mark is sought.

Should you consider protecting your trade mark abroad?

It is highly advisable to register your trade mark abroad for applicant’s who want to commercialize the products in foreign markets. This will enable your products to be recognized in foreign markets, allowing your company to build a reputation and image among foreign consumers, which may result in higher profits.