Trademark, What is Trademark

What is a Trademark?

A trademark is a sign which can distinguishes the goods and services of one trader from those of another. A mark can be words, logos, sign, pictures, names, letters, numbers or a combination of these.

A trademark is used as a marketing tool to enable customers in recognizing the product of a particular trader.

What can be Trademark?
You can apply for a trademark so long as your mark fulfills ONE of the following requirements:

(1) Name of company or individual
(2) Signature mark
(3) Invented word
(4) Not descriptive of the your product/service, not a geographical name and not a surname
(5) it is distinctive.

What is the law governing trademarks Malaysia?

Trademarks Act 1976
Trademarks Regulations 1997

Why is trademark registration important?

A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely on payment of corresponding fees.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Exclusive Right – Registered trademark owners are conferred exclusive right to use their marks in trade. They also have the right to take legal action for infringement under the Trademarks Act 1976 against others who use their marks without consent. They can also lodge complaints to the Enforcement Division of Ministry of Domestic Trade and Consumer Affairs (MDTCA) for appropriate actions under the Trade Description Act 1972.

Registration Conclusive – Registration Certificate issued by the Registrar is conclusive evidence of trademark ownership in the court of law. Furthermore the certificate is an important document of trade mark ownership in the course of trade or business.

Is trademark registration compulsory?

Registration of trademark is indeed important to obtain exclusive rights for purposes of exploitation and commencing infringement actions. However, registration is not compulsory.

What happens if the trademark is not registered in an action for infringement?

The owner cannot commence any action under the provisions of the Trademarks Act 1976. However, actions may be instituted under the common law principals whereby the trademark owner has a duty to convince the court that the infringing act had mislead the public and the infringing goods or services may be mistaken as his goods or services. This action is very contentious and costly.

Are all trademarks registrable?

No, in order for a Trademark to be registrable it must be:

An invented word/words;
Name of a person/firm/company represented in a specific or particular manner;
Legible applicant’s signature;
Words with no direct reference to goods or services, or geographical significance;
Any distinctive mark such as logo, picture, symbol etc.;
Not deceptive, cause confusion, contrary to law, scandalous or offensive;
Not identical or similar to earlier registered/applied trade marks; and
Not identical or similar to well-known trade marks.
A trade mark is not registrable if it contains words or representations prohibited under Section 15, Trade Marks Act 1976 and   Regulations 13, 14 and 15 of Trade Mark Regulation 1997; that is:
Patent, Patented, By Royal Letters Patent, Registered, Registered Design and Copyright.
His Majesty Yang di-Pertuan Agong, Her Majesty Raja Permaisuri Agong, The Royal Highness Sultans and Their Excellencies Yang di-Pertua Negeri.
Royal or Imperial Crowns, Arms, Crest, Armorial bearings or insignia.
The Royal Malaysian Army and Royal Malaysia Police.
Red Crescent, Geneva cross in red and Swiss Federal Cross in white or silver on red ground.
Words or representation or ASEAN and National Flower (Hibiscus).

Does Malaysian registration for trademark give protection abroad?
No, trademark protection is territorial in nature.

Sources referred from/Useful Link: Intellectual Property Corporation of Malaysia (MyIPO)