Now that you have put in all the hard work in getting your company set up, creating your name and corporate ID, it’s time to think about protecting your Intellectual Property and register your trademark. Is it necessary? What are the benefits of registering a trademark? What kinds of protection would be afforded? And just as importantly, how much would it cost and what are the procedures? Here we take a closer look at all the ins and outs.
There are many types of Intellectual Property that can be protected in Malaysia, the most common ones being patents, trademarks and copyright.
- Trademarks: Trademarks are generally signs that are capable of being represented graphically for the purposes of distinguishing the goods or services of one undertaking from those of other undertakings. Trademarks can consist of words, a symbol, logo, letter, signature, numeral or any combination of these. The new Trademarks Act 2019 which came into effect on 27 December 2019 has now also provided for the registrability of Non-Traditional Marks (NTMs) such as smells, sounds, colours, shapes, holograms, positionings and sequences of motion.
What is the purpose of a Trademark?
Trademarks assist consumers to choose goods and services with ease. It is a crucial part of branding and distinguishes your products and services from your competitors. Trademarks may be licensed or franchised.
How to register my Trademark in Malaysia?
The Intellectual Property Corporation of Malaysia or MyIPO is the regulatory authority for processing and granting all applications in Malaysia. First you would need to define what you wish to trademark, list down the goods or services to be protected under the Trademark and determine the classification, for classification reference: http://www.myipo.gov.my/en/apply-for-trade-marks/.
Before filing an application, it is a good idea to do an IP online search https://www.myipo.gov.my/en/search-trade-marks/ to determine whether the trademark that you intend to register is available for registration or not, and whether there are possible conflicting marks in the class. This also protects you from possible infringement of a third-party trademark.
Next you would need to prepare the following information/documents:
- The applicant’s full name and address;
- List of goods and services to be protected under the trademark;
- International classification(s) of the goods and services;
- A representation of the trademark in high resolution;
- Priority information, if priority is being claimed; and
- Simple translation of the trademark if it contains any words or alphabets that are not in the English/Malay language.
A smooth trademark registration process usually takes about 12 to 18 months from the date of filing. It will take longer if the application encounters any objection or opposition during the registration process.
Trademark registration is valid for 10 years from the date of application and may be renewed every 10 years in perpetuity. However, a registered mark may be revoked if it has not been used in trade for a continuous period of 36 months without any valid legally acceptable reason.
Malaysia adopts a First-to-Use system for Trademarks, the first applicant who uses a mark in trade is entitled to registration and has better rights, in the absence of any prior user of an identical or substantially similar trademark in Malaysia.
Trademark protection is territorial in nature. If you have registered the mark in Malaysia, your mark is only protected in Malaysia.
However, not all marks are registrable, if the mark is, among others, likely to deceive or cause confusion to the public or would be contrary to law; if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law; if it is identical with or so nearly resembles a mark which is well known in Malaysia for the same goods or services of another proprietor.
Patents: A patent can be applied for to protect new inventions, inventions that can be made or used, for example, vaccines, machinery, electronics, pharmaceuticals, etc. New means that the invention has not been publicly disclosed in any form, anywhere in the world. It involves an inventive step, that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and it can be industrially applicable, meaning it can be mass-produced. A patent is protected 20 years from the date of filing.
Copyright: Copyright law primarily protects original expression in literary, dramatic, musical and artistic works, for example novels, software, plays, films, songs, paintings, photographs and sculptures. Copyright is applicable on average for a period of at least 50 years, depending on the subject matter.
Get Assistance from our Team
The process might appear quite daunting at first but experience shows it is definitely worth taking steps to protect your IP – after all, it is what makes your business unique and helps you stand out from your competitors. If you have any questions about Intellectual Property Protection and Trademarks you can contact our team for further advice and guidance.