1. Create registrable brand / trade mark
From legal perspective, a trade mark includes brand name, slogan, logo, symbol and label. Not all trade marks are eligible for legal protection. Therefore, it is crucial to make sure we create trade mark which is legally eligible for protection. In summary, a trade mark should be (1) invented word, (2) not directly referring to the nature of goods and services, (3) distinctive, and (4) not identical or confusingly similar to other trade marks.
2. Conduct a clearance search and registrability analysis
Once you have designed a new trade mark, it is prudent to conduct a clearance search to ensure your trade mark is not similar to those registered trade marks. Further, seek legal opinion of a trusted trade mark agent or attorney to analyse whether the trade mark has fulfilled all legal requirements. They will provide professional advice on the chances of registrability.
3. Cover all goods and services in trade mark registration
Protection on a trade mark is only limited to the goods and services it is registered. At the point of filing application, you are required to list down the goods and services provided under the trade mark. There is no template specification of goods and services which fits everyone as it is always customized to the business model. Therefore, you must ensure all your goods and services are listed in the registration.
If you realize that some of your new goods and services are not covered in the earlier registration, quickly file a new application to cover the new goods and services. There are many examples that trade mark owners lost their rights against the competitors due to the goods not covered in the trade mark registration.
4. Register trade mark at all desired countries
Trade mark protection is on territorial basis. While it is not necessary to register all countries at the beginning, you should at least register your trade mark in the countries that you are having businesses. Thereafter, gradually expand the coverage of your trade mark registration according to your business expansion. If possible, also cover those countries that you plan to expand your business in the next few years. You just don’t know whether somebody in that country will accidentally come out with the same trade mark like you do, not to mention copycats!
5. Use your trade mark
Unlike domain name, trade mark is not something you can “lock it up” and make a windfall gain by waiting someone else to buy it. Most of the countries require the registered trade mark to be used within certain period of time. In Malaysia, the trade mark must be used within three years, failing which the registration is vulnerable to be cancelled by third party. Some countries, for example, US and Canada, may require you to use your trade mark first before successful registration.
6. Renew your trade mark registration
Trade mark protection is forever, provided it is renewed every 10 years, in most countries. Some countries may provide longer or shorter registration period. Therefore, it is important for a company to monitor the deadlines carefully. It may not sound as simple if you have several trade marks in a few countries. If a trade mark registration has expired, you may have to re-apply and go through the entire trade mark prosecution process again. Or worse, someone may take advantage of the expiry and register the trade mark in their name.
Contact us now to find out more about adopting the above steps to protect your trade marks!