Apply for the mark that you use in your business
Why You Should Register Your Trademark?
A registered trademark is proof that you have the exclusive right to use the trademark.
As registered owner of the trademark, you have the right to stop others from using your trademark. You may also allow others to use your trademark in return for some royalty fees.
It also gives you the right to use the ® trademark symbol.
Watch this 1-minute video on what Sandy did wrong and how you can avoid it.
How to Register Your Trademark in Malaysia?
Below are the basic steps to register a trademark in Malaysia. For a more detailed explaination on the steps and procedures involved in a trademark registration, please click to expand the trademark registration steps below.
The steps and procedures for filing a trademark in Malaysia. Nearly every business from a local electrician, large concrete business organisation and food and beverage industries have their very own individual mark or marks which indicate the origin of their products and services. Trademarks have become a valuable identity for businesses of all shapes and sizes. In order for a trademark to be valid and enforceable, registration of the trademark at the registry is necessary. Starting early and doing things right from the start can really reap the benefits, save time and most importantly money.
Here are some quick links to jump to each step:
- Preparation before Trademark Application
- Trademark Search at the Trademark Registry
- Trademark Application at the Trademark Registry
- Trademark Publication at the Official Gazette
- Trademark Certification
- Monitoring and Maintenance of Trademark
- Objection by the Registrar and / or the public.
Before applying for a trademark in Malaysia, it is important to have a clear plan what your mark should look like. The simplest way to design a mark is to identify the design or word that is capable to distinguish your goods and services to others that are available in the current market. From a design perspective, a clean and clear design with catchy words or phrases is ideal.
Once you have identified the mark that you wishes to use, the next step is to ascertain on which product or services the mark is to be used for. A list of goods and/or services is helpful to identify the correct class/es of goods and/or services to be applied for.
#2: TRADEMARK SEARCH
Next, a search at the Trademark Registry in Malaysia is necessary to ascertain the availability of the mark for use. If you wish to skip this step, you are free to do so but we strictly advise against this . If search is conducted, you may get the result of the availability of the use of your mark very much earlier at a minimum costs. The search will be conducted by our experienced trademark agents who are equipped with the necessary skills to conduct the search at the Trademark Registry.
#3: TRADEMARK APPLICATION
If the result of the search is satisfactory, you may proceed to application. An application for a trademark currently takes about nine to 12 months for a response from the Trademark Registry. During this time, you may start to use your ‘applied for’ mark/s.
#4: TRADEMARK GAZETTING
If your application is approved by the Registrar, your application will proceed to the gazette stage. Here, your mark will be published at the official journal issued by the Trademark Registry indicating to the public that you are applying to use the mark. If no one opposes your application, your mark will then proceed to registration.
#5: TRADEMARK CERTIFICATION
A certificate of registration will be issued by the Trademark Registry once the trademark is registered and it will last for ten years from the date of application.
#6: TRADEMARK MONITORING AND RENEWALS
It is important to note that, the registration is valid as long as the renewal fee is paid. In the event, you discover that another party has infringed your right, you are advice to seek legal representative to enforce your right.
#7: TRADEMARK OBJECTIONS
Not all trademark is registrable and your application may face an objection by the Trademark Registrar. Our experienced agents will advice you and provide you with a solution in the event your mark is objected to by the Registrar.
What To Prepare Before Trademark Application?
The Idea of 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.
A Word, A Device Or Both?
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.
One Mark or Series Marks
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.
In Black and White, In Color or Both
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.
List of Goods and/or Services
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.
Appoint us to conduct a trademark search at the relevant Trademark Registry on your behalf. This is to make sure that your mark is available for use and registration. Our trademark search report includes our opinion on the chances of getting a registration of the mark of your choice.
Determine the name and address of the Applicant*(*The Applicant can be a company, partnership or in individual name).
Appoint Us as Your Trademark Agent
Once you have your mark ready for application, appoint us as your 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. As your trademark agent, we would ensure that your application conforms to the requirements of the relevant Acts and Regulations.
Use Your Trademark
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.
How To Classify Your Trademark In The Correct Class/es?
Classifying your trademarks in the correct class is important. Trademarks must be applied under the correct class or classes in order to get maximum protection.
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”).
Click here to see the 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
TRADEMARK include any distinctive words, letters, numerals, drawings, pictures, shapes, colors, logotypes, labels or any combinations of the above used. A trademark is used in relation to or upon goods for the purpose of indicating a connection between the goods or services. This shows that the proprietor is the rightful owner having the right to use the mark. Any other party who wishes to use the same or similar mark will have to get the consent from the rightful owner before they can use the mark on their goods or services.
Registration of a trademark 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.
The time required for the registration of a trademark with the trade mark registry varies significantly from country to country, generally ranging from 3 months to 18 months or more, depending, among other things, on whether the trademark registry conducts substantive examination. We recommend clients to first conduct a trademark search to ascertain whether there are any other similar trademarks on the trademark registry before proceeding to apply their trademark for registration.
A term of protection may vary, in a large number of countries; registered trademarks are protected for 10 years. Registration may be renewed indefinitely (usually, for consecutive periods of 10 years) provided renewal fees are paid in time.
The legal rights arising out of a trademark registration are normally limited to the territory to which they pertain; so, ordinarily, valid registration of a trademark in Malaysia, for example, only gives the rights to use the trademark only in Malaysia unless the trademark 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. In order to make sure that your rights are protected in each and every country you wish to use your trademarks, it is advisable to apply for your mark first. It is highly advisable to register your trademark 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.
We provide professional trademark services and only charge based on the stage of the work to be done as we do not contract to do work so far in the future. The total charges for a normal trademark application for one mark in one class without any problem costs about RM3,000++. This is subject to the revision in the government charges.