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  • Writer's pictureIP Gennesis

6 Steps to Protect Your Trademark

“How to protect our trademark from copycats?” The most common and straightforward answer would be to register it and claim ownership. Actually, it is not as simple and there are more to be done. Now let's look into the 6 critical steps to protect your trademark.

1. Create registrable brand / trademark

From legal perspective, a trademark includes brand name, slogan, logo, symbol and label. Not all trademarks are eligible for legal protection. Therefore, it is crucial to make sure we create trademark which is legally eligible for protection. In summary, a trademark 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 trademarks.

2. Conduct a clearance search and registrability analysis

Once you have designed a new trademark, it is prudent to conduct a clearance search to ensure your trademark is not similar to those registered trademarks. Further, seek legal opinion of a trusted trademark agent or attorney to analyse whether the trademark has fulfilled all legal requirements. They will provide professional advice on the chances of registrability. 3. Cover all goods and services in trademark registration

Protection on a trademark 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 trademark. 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 trademark owners lost their rights against the competitors due to the goods not covered in the trademark registration. 4. Register trademark at all desired countries

Trademark protection is on territorial basis. While it is not necessary to register all countries at the beginning, you should at least register your trademark in the countries that you are having businesses. Thereafter, gradually expand the coverage of your trademark 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 trademark like you do, not to mention copycats!

5. Use your trademark

Unlike domain name, trademark 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 trademark to be used within certain period of time. In Malaysia, the trademark 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 trademark first before successful registration.

6. Renew your trademark registration

Trademark 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 trademarks in a few countries. If a trademark registration has expired, you may have to re-apply and go through the entire trademark prosecution process again. Or worse, someone may take advantage of the expiry and register the trademark in their name. Contact us now to find out more about adopting the above steps to protect your trademarks!

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