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Trademark Registration: What, Why & How?
HELLO, LEGENDS! We recently conducted a sharing session addressing amongst others the distinction between the components of Intellectual Property (“IP”). During the sharing session, we discovered that the most relevant part for business owners and entrepreneur was trademark registration. So for this content, we will zoom into How to Register Your Trademark?
(See previous article: Components of Intellectual Property)
1) What classifies as a trademark?
Simply put, trademark includes almost all visual presentation, such as device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof used in relation to the goods or services.
The illustrations are as provided here: Components of Intellectual Property
[Important Note: For clarity purposes, certification mark (e.g. SIRIM mark) and defensive mark i.e. a well-known mark will not be addressed here.]
2) Is it mandatory to register a trademark?
No, it is NOT mandatory. If there is no prior use of a similar or identical trademark in Malaysia, the first person to use the trademark will have the rights to the trademark.
However, a user of a non-registered trademark will not be entitled to all statutory rights granted in respect of a registered trademark.
3) Why should you register your trademark?
For any businesses, the goodwill associated with a trademark is an extremely valuable asset. Trademark registration technically protects the goodwill of the business from abuse and unauthorised use.
The significant advantages conferred on registered trademark are:
- if there is any infringement, a registered owner has the right of action, without having to prove used and goodwill.
- the registered owner may initiate an action under the Trademarks Act 1976, to prevent or to recover damages for the infringement of a trademark if it is not registered;
- a registered owner enjoys exclusive rights to use and to authorize others to use the mark in relation to the goods or services;
- a registered proprietor enjoys exclusive rights to use the mark, and therefore, a registered proprietor has the ability to enter into agreements such as licensing agreement or assignment of the trademark for a value.
- Prima facie evidence of ownership and subsequent transmission or assignment.
[Important Note: for the unregistered trademark, some rights and measure of protection is nevertheless provided under the common law of “passing off “]
4) What is the cost of trademark registration in Malaysia?
The processes involved in an application to register a trademark comprise of 2 stages and the respective cost involved is set out below:
|Stage||Estimated Cost (RM)|
*per mark, per class
|Stage 1 (upon submission of application for registration)||370|
|Stage 2 (Upon submission of application for advertisement in the Government Gazette)||650|
[*Note: Goods and services are divided into 45 classes, and it is necessary to identify the class(es) that the goods/services fall under. Separate application must be submitted in respect of each class.]
5) What do I do to register a trademark?
You can either do it yourself via MYIPO or hire a registered Trademark Agent to do it for you.
The flowchart of the process could be seen here: TM Application Process Flowchart
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