5 Steps to Create Protectable Trademark
Updated: Dec 16, 2019
To protect your trademark in Malaysia, it’s necessary to fulfill all the legal requirements. It is often misunderstood that “as long as this trademark is created by myself, I am entitled to register the trademark and claim ownership”. However, the reality doesn’t work this way.
1. Create invented word / name
The best idea is the trademark is a self-coined or created name. It is even better if the trademark does not exist in dictionary or our day to day language. For example, Coca-cola is a coined name which originally does not have its own meaning.
2. No direct reference to the products or services
Always use a trademark not directly referring to your products and services. It would be best if the trademark is totally irrelevant with your business. For example, you may use “Apple” as a trademark to sell computer and smartphones, but you should not use “Apple” as a trademark to sell ….apple! Avoid using those names directly referring to the nature or character of yours business. For example, avoid using “Tasty” as trademark for restaurant or “Table” as trademark for table.
3. Distinctive trademark
Distinctiveness is one of the important requirements to register your trademark in Malaysia. You should design a brand capable of distinguishing your products or services from competitors. For example, a name or logo which is unlikely to be used by competitors in the course of trade. Usually self-designed a logo or stylish name would help fulfilling this requirement.
4. Do not use trademarks identical or similar with others’
We all know that that we should not use trademark which are identical with others. But we also should not simply make minor changes or adopt others’ trademarks. This is because we just cannot be sure whether those changes would expose us to the risk of trademark infringement.
5. Pre-filing search and registrability analysis
It’s always advisable to do a trademark clearance search to check if anyone has registered the same (or similar) trademark. It is risky to assume that nobody will register your trademark as there are millions of businesses out there, and how can we be so sure that nobody would create the same name by co-incident? While it is possible to conducts searches via online public database, it would be prudent to engage a professional trademark agent or trademark attorney to evaluate the chances of registrability according to the applicable legal requirements. Feel free to call us today for free consultation to protect your trademark!
Written by, Lawrence Tan Trademark, Patent & Industrial Design Agent Email: email@example.com