Five Tasks to Complete Before Trademark Registration
The process of how to register for a trademark in Malaysia is not as cut and dry as some may think. Proper planning and research should be done before anyone tries to do so. If you don’t do what is necessary before you register for a trademark, it is likely that you will run into several problems.
Thus, we would like to present five tasks to complete before you attempt to register for any trademark:
1) Learn About What Can and Cannot Be Registered
Not every name, symbol, logo, or image can be registered as a trademark. In Malaysia, a person may only apply for a trademark if the person:
- is using or plans to use it for business purposes
- has authorized or plans to authorize someone else to use it for business purposes
Malaysian trademark laws define a trademark as “a sign distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings”.
If anyone attempts to register any of the following in Malaysia, the trademark’s application process will result in a rejection:
- trademarks devoid of any distinctive character
- signs consisting exclusively of a shape resulting from the nature of the goods themselves, necessary to obtain a technical result or shape giving substantial value to the goods
- trademarks that are of such a nature as to deceive or mislead the public regarding the nature, quality, or geographical origin of the goods or services
- trademarks that are contrary to public interest, morality, interest, or security of the country
- trademarks consisting of the flag of a country, national emblem, or royal arms
- trademarks consisting of an international non-proprietary name as declared by the World Health Organization
2) Ensure Compliance with Domestic and International Laws and Agreements
All trademarks and their registrations in Malaysia are governed by the Trademarks Act 2019 and the Trademarks Regulations 2019 . These are Malaysia’s main intellectual property laws. They protect intellectual property rights across the country. Malaysia is also a part of several international agreements related to trademarks. These include the Madrid Agreement, the Paris Convention, the Nice Agreement, the Vienna Agreement, and the World Trade Organization’s Agreement on Trade-related Aspects of Intellectual Property Rights. All trademarks to be registered in Malaysia must comply with all laws and agreements mentioned as well as the details specified within them.
3) Conduct a Trademark Search
After applying through a specific form and paying the prescribed fee, the trademarks register will be made available for inspection. Should a request be made, the registrar may provide advice and search results to any person who intends to apply for trademark registration about whether the mark is prima facie a trademark which may be legally registered. All advice and results are fully confidential and unavailable to the public. Should the trademark be deemed impossible to register in Malaysia, the applicant might even choose to raise a refusal if it is believed that there is a case for one.
4) File a Trademark Application
Before registration, an application for a trademark has to be filed. Trademark applications in Malaysia must contain the following:
- the name and address of the applicant
- a representation of the trademark (if it is not to be displayed in normal typescript)
- a list of the goods or services to be covered by the trademark registration
- the International Classification applicable to the goods or services
- the application form (TM5)
- the Power of Attorney (TM1)
- the Statutory Declaration declaring that the applicant is the lawful proprietor of the mark applied for
- priority details of the basic application in respect of a Convention; Convention applications must be filed within six months of the basic application from which priority is claimed
- a certified translation and transliteration of the mark applied for if the trademark contains any word or words in a language or alphabets other than the Malay or English language/alphabets respectively
5) Consult an Intellectual Property Agency
Even after completing all these steps, you’ll probably want an expert’s opinion just to confirm every point of which you need to be aware. This isn’t an issue if you consult an intellectual property agency full of capable, experienced staff members. By working with a competent trademark agent in Malaysia, you will gain knowledge about all the ins and outs about trademark registration there. It will spare you much effort, stress, energy, time, and often even money.
This article is prepared for you by Exy Intellectual Property.