Many who are only just becoming familiar with the details of intellectual property might confuse two forms of intellectual property: service marks and trademarks. This is understandable because these two types of intellectual property share certain features. Some of these similarities involve matters such as registration, scope of protection, and infringement, among others. There are also certain differences between service marks and trademarks. It is important to understand these similarities and differences before registering a trademark in Malaysia or anywhere else.

Scope of Protection

The primary difference between trademarks and service marks lies in the scope of items to which they provide intellectual property protection. Trademarks are words, names, symbols, devices, or any combination of the preceding which are used or intended to be used for two distinct purposes. The first use of this form of intellectual property is to distinguish goods manufactured or sold by one entity from those manufactured or sold by another. The second is to indicate the source of the goods.

Service marks provide similar protective functions to trademarks. Like trademarks, service marks are words, names, symbols, devices, or any combination of the preceding which are used or intended to be used for purposes of distinction and indication of source. However, the difference between service marks and trademarks lies in the very name “service marks”. Intellectual properties which are defined as service marks only protect services while trademarks protect goods and services.

Symbols for Trademarks and Service Marks

To indicate a trademark, the symbol “™” may be used. This symbol may be applied to any trademarked goods or trademarked services in Malaysia or any other country. Similarly, all services which have received a service mark may use the symbol “SM”. After a trademark or service mark has been registered, the owner of the mark may use the “R” symbol instead. The “R” symbol provides evidence that the trademark or service mark in question is entitled to the intellectual property protection afforded by registration.

In most countries including Malaysia, the use of the “R” symbol by one who has not received a certificate of registration is a violation of intellectual property laws. The “R” symbol as used in Malaysia denotes a registered service mark or registered trademark in Malaysia; the same line of logic applies to the use of the same symbol abroad. In addition, those who have a registered trademark or service mark may appoint a third party to use it for business purposes. This third party may also make use of the associated intellectual property rights.

Miscellaneous Similarities and Differences

There are several other similarities and differences between service marks and trademarks. In Malaysia, service marks and trademarks are both protected by two laws regarding intellectual property: the Trademarks Act 2019 and the Trademarks Regulations 2019. Through these intellectual property laws, there is ample protection for all registered service marks and registered trademarks in Malaysia. Owners of trademarks and service marks alike may prevent any unauthorized person from using the marks, benefit from renewable 10-year intellectual property protection periods, and assign or license the use of the marks as deemed suitable.

Due to the respective natures of service marks and trademarks, there are several industries which primarily make use of service marks and their associated intellectual property rights. Examples of these industries are advertising, banking, hospitality, insurance, and graphic design. In almost every other industry in Malaysia and elsewhere, trademarks are the predominant form of intellectual property protection.
Through this article on service marks and trademarks, perhaps you will have begun to understand how these forms of intellectual property work, their similarities and differences, and which would be suitable for you to use. Whether it’s a service mark or trademark which you will own, get it protected as soon as possible – doing so will bring you and your business countless benefits.

This article is brought to you by Exy Intellectual Property