When it comes to applying for your trademark in Malaysia, there are many things you need to prepare before applying for registration for your trademark.
Not everything in this simple checklist applies to you, but it will be a guide for you to follow before applying for your trademark in Malaysia.
Before we proceed with the checklist, let’s see why you should apply to register your trademark in Malaysia.
Why should you apply to register your trademark in Malaysia
If you do not know what a trademark is, you should stop reading this article now. Click here to read what is a trademark here. You can come back later once you’ve understood what a trademark is.
The truth is, trademark registration is not compulsory. But it is advisable for you to register your trademark.
The only problem for an unregistered trademark is the trouble you have to go through to prove your trademark rights. The process can take a long time and can be very expensive. Further, your claim must be supported with enough or sufficient evidence to prove that you are the first user of your mark.
Watch this 1-minute video on what Sandy did wrong and how you can avoid it.
After watching the video, what did you learn from it? What can you do to protect your rights without having to go through all that?
The answer to this question is easy, just apply to register your trademark at the relevant Trademark Registry.
Your trademark is a valuable asset to your business. In your business budget, you probably would have included things like how much you’re going to spend to advertise your goods and services, how much return or revenue you expect to get and some business goals you might have. But have you done enough to protect your trademark?
Business competition is unavoidable and most businesses have their very own competitors. And sometimes, competitors may use similar trademark to your trademark in an attempt to ride on your goodwill and reputation. There is a chance that your business may be affected as a result of this unfair competition.
When you write you financial budget, you should consider including some budget in protecting your trademark. A trademark indicates an origin of the good and services. It informs the public or your client / customers that the particular goods or services come from you and no other. In other instances, it is a symbol of quality. Losing your trademark to your business rival would be devastating for you as you have spent a lot of time and money building it.
A certificate of registration is prima facie evidence of ownership of a trademark. Those who wish to challenge that right will have to prove their earlier or first rights. As the registered trademark owner, you have the exclusive right to use your marks in your business. You also have the rights to take legal action for infringement under the Trade Mark Law against others who use their marks without consent.
Here’s what you need to prepare before you proceed with your trademark application:
What You Need To Prepare Before Applying For Your Trademark
- You must first determine the direction you want for your business and design your mark / logo to suit your business. The mark should preferably be simple enough for your customers to pronounce and recognize it. If you look at the famous trademarks in the world today, you’ll find that most of them consist of very simple word and/or design.
- Your mark can be a word or a device or a combination of both. It may consist of words or words with a special design or only a design logo. In this step, you could design and draw your logo yourself or hire a professional to do it for you.
- Determine whether you wish to apply your mark as a series mark or just one mark. It is common if you find yourself with a few different but similar designs for your mark which may qualify as a series mark. In this instance, you may apply your marks as a series mark.
- Determine whether you wish to apply your mark in black and white or in specific colors. If you apply your mark in black and white, your mark is protected in all colors. Alternatively, you may apply your mark both in black and white and also in specific colors for a stronger protection. This may be done separately or as a series mark.
- Write out the list of goods and/or services you wish to apply for protection in. Then check the class/es of the goods and services for your mark. More on how to classify your trademark in the correct class/es is discussed below.
- Conduct a trademark search at the relevant Trademark Registry. This is to make sure that your mark is available for use and registration.
- Determine the name and address of the Applicant*(*The Applicant can be a company, partnership or in individual name).
- Once you have your mark ready for application, find a trademark agent to register your mark for you. Alternatively, you may do it yourself at the relevant Trademark Registry. If you make mistakes in your trademark application, you may or may not be able to amend it to save your application. The worst case scenario is that you may have to reapply the whole thing again. Your trademark agent would ensure that your application conforms to the requirements of the relevant Acts and Regulations.
- You may start to use your trademark once you’ve applied for your trademark. You may only use the registered symbol once you obtain the trademark certificate. So, the earlier your apply for your trademark, the better it is for you.
Identifying and Creating Your Mark / Logo
It is easy to come out with a trademark for your product or service because all you need to do is to sit down and brainstorm a unique trademark name for them.
There are many people who use their company name as their trademark name. There are two benefits if you use your own company name as your trademark name. One, it is easy for your clients to remember and relate your trademark name to your product and two, you only need to promote one trademark which would eventually save you a lot of time and money in terms of marketing and advertisements.
There are also those who prefers to get an entirely different trademark name to their company name. One of the benefits of creating a different trademark name to your company name is that it gives you the flexibility of changing your company name in the future. It also allows you to sell and assign the trademark when it becomes irrelevant to your company.
If your trademark name and your company name is the same or similar to one another, although it is still possible to still sell and assign your trademark to a third party, it may cause confusion to the public. So think about this when you are deciding on how to trademark a name.
Once you have decided on your preferred trademark name, the next thing to do is to decide whether you would like to have a device or in another word, a design to go with your trademark.
A trademark with a special design would stand out more compared to a simple word trademark. There are more people who would recognize a special design compared to a simple word trademark.
In fact, a combination of both is better. Take a look at the biggest brands in the market today, like Apple or Google, their trademark consists of a combination of both a special design and a word trademark. The reason is simple. It stands out and people tend to remember it better than a simple word trademark or a design with no words.
The third thing on how to trademark a name is to decide on the goods or services that you are providing. One of the main criteria in trademark a name is to ensure that your trademark is not descriptive of its goods or services. An example would be the word “Best Shampoo”. No one can register this name as it is not distinctive and it is descriptive of its goods. So as long as your trademark name is not descriptive of its goods, you are one step further to trademark a name.
How To Classify Your Trademark In The Correct Class
Classifying your trademarks in the correct class is one of the main things you’ll need to do. Trademarks must be applied under the correct class or classes in order to get maximum protection.
But how do you do it?
Here, you’ll learn how to classify your trademarks complete with examples.
You’ll also learn the purpose of such classification and the Classification that Malaysia observe currently.
Goods and Services
Trademark is used in the course of trade. It may be used on goods or on services which you provide. Malaysia observes the classification of goods and services according to the International Classification of Goods and Services (ICGS) under the Nice Agreement to which Malaysia is a signatory (“Nice Classification”).
There are 45 classes in the Nice Classification. Classes 1 to 34 relates to goods and 35 to 45 relates to services. For goods, it is primarily the material from which goods are made that determines how they are classified. Services are classified according to occupation or the task that is to be achieved.
Examples for Goods
Paints and varnishes fall under class 2.
Cars and motorcycles are class 12.
Dresses or a shirt falls under class 25.
Cigarettes are class 34.
Examples for Services
Insurance services are class 36.
Telecommunication services falls under class 38.
Education services are under class 41.
Restaurants and hotels are class 43.
Two or More Classes
If you wish to use the same trademark in your goods and services, make sure that you apply for all the relevant classes.
For example, if you are selling clothing, you should apply for your trademark under class 25. You may also consider registering your trademark under class 35 to protect your clothing business.
If you are not sure on which class/es you should apply, get help. It is perfectly alright if you’re not sure how to classify your product and services correctly. It is better to get it right the first time than to amend it or to start all over again just to save a couple of ringgit.
Get Help Classifying Your Trademark in the Correct Class and Save Time and Money
Conduct a Trademark Search
Once you have your trademark and the list of goods and services, you are ready to move on to the next step. This step is very critical, so pay attention. A mistake here would cost you everything, from getting a cease and desist letter from a lawyer to losing your entire business and paying damages and / or your profits to your competitor.
I cannot emphasize how important this step is. Even though this is the first important step on how to trademark a name, there are many who would still skip this step just to save a few hundreds of bucks for quick profits.
Below are some reasons why a trademark search is important :-
1. Trademark Search to Save Time. First and foremost, think about the time you would have to spend waiting for your trademark to be approved by the Registrar of Trademark. The time taken for trademark registration may stretch from 8 months to up to 2 years. During this time, it is not advisable to use your trademark as you might infringe another person’s trademark rights. Bear in mind that, your trademark may not be approved if a trademark search is not done before trademark application. So a trademark search is advisable.
2. Trademark Search to Save Cost. For a minimum fee to do a trademark search at the trademark registry, you stand to save more costs in the long run. If the trademark search result shows that there are no others who have a similar trademark on the same or similar goods/services, then you can start trading using your trademark while applying for registration at the same time.
3. Trademark Search for a clear picture where your trademark stands. Although a trademark search does not guarantee that your trademark will be registered, but after doing a search on the trademark registry, you will roughly know the likelihood of your trademark being approved by the Registrar. If the search result is bad, i.e. you have the same/similar trademark with someone else, you may immediately redesign your trademark so as not to infringe another person’s rights. Here, you save not only cost, but also time.
Now, imagine that you do not know how to trademark a name and since you do not know how to trademark a name, you did not do a trademark search and you went straight to sell your products using the trademark. You spend a large sum of money to produce the product and market them. You make hundreds or maybe thousands of bucks. A few months down the road, you receive a court letter from your competitor. As the product is selling very well, you took on the case and went to court. You tried to defend your trademark, but you lost. You lose your trademark, you lose the right to use the trademark and on top of that, you need to account for every single profits made, pay damages to your competitor and pay for the costs for both your own legal representative and your competitor’s! This is a situation that no businessman would want to land up with! I am sure that you would not want to be in this situation either!
Conducting a trademark search is an important step on how to trademark a name and it is easy. The best and recommended way is to get an expert in trademark to do the work. A lawyer, not any lawyer, but a lawyer who is experienced in trademark laws. You may also engage a trademark agent to do the trademark search.
The reason why it is advisable for you to engage an expert in trademark law is simple. Firstly, it saves your time from having to do all the work by yourself and secondly, as they are more familiar with the trademark laws, they would be able to advise you on the applicable trademark laws and possibly increase your chance in registering your trademark without making detrimental mistakes.
You may also conduct a trademark search on your own by going to the respective trademark database in the country you want to market your products or services. If you intend to market your product in the United States for instance, you may use their search engine, the Trademark Electronic Search System (TESS) to search on the USPTO’s database of registered trademarks and pending trademark applications to find trademarks which may prevent your trademark from getting registration. In Malaysia, you may conduct a trademark search here: https://iponline.myipo.gov.my/ipo/main/search.cfm
So there you have it, the things you need to prepare before you proceed to trademark application. Applying for your trademark is actually quite straightforward. But fighting for your right back in Court is not straightforward at all and it may cost you a fortune. More so, if you have a few trademarks in different countries. Not to mention the time and energy to be taken just to get your trademark rights back.
If the above is too overwhelming for you, appoint a trademark agent today to get your trademark registered. Click here to get in touch with us.