Trade Mark Requirements

Basically, there are three main requirements that must be satisfied in order to register a trade mark and they are:-

• it must be a “sign”;
• it must be “capable of graphic representation”; and
• it must be “capable of distinguishing” goods or services.

What is a ‘Sign’?

In layman’s term, a Trade Mark can be in the form of words, letters, numerals, drawings, pictures, shapes, logotypes, labels or any combinations of the above. The trade mark can be in black and white, shades of gray or in colour. These are some of the basic ‘ingredients’ in designing a trade mark.

When we talk about word(s), the word(s) must be an invented word(s) and the word(s) should have no direct reference to the character or quality of the goods or services whether it is according to its ordinary meaning, a geographical name or a surname. For example, the words “The Best Coffee In Malaysia” is a direct reference in terms of its character, quality and also its geographical name.

Trade Mark Colour

The trade mark protection is also limited to the colour it was first registered. If a trade mark is applied in red colour, the trade mark will only get protection in that red colour only. In order to maximise the trade mark protection in terms of it’s colour, it is always advisable for the traders to apply their trade mark in black and white or in shades of grey. If the trade mark is applied in black and white or in shades of grey, the protection is wider and it covers any and every other colours. In short, traders can change the colours to any other colours knowing that they are entitled to the same protection given by the Trade Mark Law.

What is the meaning of ‘Capable of Graphic Representation?

As a Trade Mark is used by traders to advertise their goods or services to consumers, the trade mark must be capable of graphic representation. There are two main purpose of this requirement; i.e. it is necessary to define the mark so that it is possible to determine the precise subject of the protection to enable both the authorities and the public to know what is being claimed by the trader as a mark and it is easier for consumers to identify the origin of the goods or services.

What is the meaning of ‘Capable of Distinguishing Goods or Services?

The Trade Mark must not be the same or similar with other trade marks on the registry. The trade mark must also be capable of distinguishing goods or services from one trader to another. In other words, the trade mark used on a particular product must be distinguishable from one trader to the other so that the public will know exactly which goods belongs to which trader. This is to avoid any confusion that the public may cross when deliberating which goods or services that they intend to buy.