A trademark is an identity for a business. It is served to distinguish a product or service from others in the trade. A trademark coupled with a brilliant branding strategy could make millions even billions for a company. Given the importance of a trademark, registration of trademark is always a priority of a sophisticated entrepreneur.
However, many entrepreneurs are perplexed by the complexity and tediousness of the trademark registration process and requirements. No worries, here’s the step by step guide on how to register a trademark.
Although this article focuses on trademark registration process in Malaysia, the process is also similar in other jurisdictions.
Step 1: Design a Trademark.
Yes, it is elementary. Still, many are confused that a trademark only means logo, actually more than that! According to the definition of Trademarks Act 2019 of Malaysia, a trademark means any sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning or sequence of motion or any combination thereof that is capable of being represented graphically, at the same time, it is also capable of distinguishing goods or services of one undertaking from the others.
Other than being creative and eye-catchy, a trademark should fulfil all requirements under the Malaysian Trademarks Act 2019, especially it should not fall foul of the absolute and relative grounds of refusal.
Step 2: List Down the Goods / Services Under the Trademark and Determine the Classification
A trademark is protected in respect of the goods and/or services. Therefore, it is essential to deliberate the exact list of goods and/or services that are being provided under the trademark. Thereafter, identify the relevant classes under Nice Classification.
This step is crucial because the specification of goods or services determine the scope of protection of the trademark. The trademark may not be protected on the goods or services that are not covered in the registration. By all mean, cover as much classes as possible!
In view of the gravity, triple check the list of goods and services of the trademark to ensure its comprehensive protection!
Step 3: Do a Pre-Filing Trademark Search
Before filing the trademark application, it is advisable to conduct a pre-filing search and analysis to evaluate the chances of registration of the trademark. The searches will focus on the earlier marks in database of the Trademark Registry. Nevertheless, the searches can be expanded to cover the database in other jurisdictions.
The unofficial search is entirely optional and not part of the official registration process. The applicant may also request for an official pre-filing search from the Malaysian Registry of Trademarks. Nonetheless, this step is highly advisable in order to check if there is any identical or similar marks. Most of the time the Trademark Offices will take a few months or even more than a year to issue decision on a trademark application. Therefore, we would not want to only know our trademark is not registrable only a year later.
We can, of course, conduct the trademark searches ourselves as the many countries have made the database publicly accessible. However, A trademark search certainly is not as simple as just type in the name! It is prudent to engage a competent trademark agent or attorney who knows how to conduct a trademark search more effectively, accurately and, consider the relevant provisions in the Trademarks law, for example the absolute and relative grounds of refusal.
A trademark search is certainly not a glance at the crystal ball, but we could gauge the chances of success of the trademark registration, by looking into the sighted marks and the relevant provisions in the Trademarks Act.
Step 4: Identify the Trademark Owner
Pursuant to the Malaysian Trademarks Act 2019, it is permissible to register the trademark in the name of individual, company or other organisation.
It is advisable to think twice at this stage to identify the desired owners so that we could avoid the extra cost to transfer the trademark ownership in future, unless necessary.
Step 5: Prepare and File Trademark Application
Generally, filing a trademark application in Malaysia requires the following information:-
1. Full name of the trademark applicant
2. Full address of the applicant
3. List of goods and services provided under the trademark
4. Class number (Nice Classification for filing in Malaysia)
5. A softcopy of the trademark in high resolution
6. Priority information, if priority right is being claimed
7. Certified translation of the trademark if it contains non-Roman characters.
Different countries may have different formality and documentation requirements for filing trademark applications. For example, China only requires a simply signed Power of Attorney, whereas Thailand requires the Power of Attorney to be notarized by a Notary Public. On the other hand, trademark applicants in United States are required to state the basis of applications.
Therefore, it is advisable to consult a competent trademark agent or attorney on the detailed requirements of filing a trademark application, to avoid any unnecessary refusal or office action.
Once the information is ready, we may proceed the application by filing the relevant official forms and paying the prescribed fees. The cost of trademark application will multiply according to the number of classes selected.
After the application has been filed, we still cannot use ® on our trademark. In Malaysia, it is an offence to represent a trademark as registered without complete registration, which upon conviction, shall be liable to a fine not exceeding RM10,000.00. In this regard, many countries has similar law too.
Therefore, we have to wait for the trademark to be registered in order to use the ® sign. At this stage, we could use the "TM" sign with our trademark.
Step 6: Examination by Trademark Examiner
After filing the trademark application, the Registrar of Trademarks will verify the documents and information submitted, this is known as Formality Examination. If any irregularities are found on the trademark application, the applicant will be given opportunity to respond or rectify the irregularities.
Once the formality requirements have been complied, the Registrar of Trademarks will proceed to conduct substantive examination on the trademark to examine the registrability of the trademark under the requirements of the Trademarks Act 2019, for example, whether the trademark is devoid of any distinctive character, whether the trademark falls under of the absolute or relative grounds of refusal, whether the trademark is contrary to public interest or moral.
The Registrar of Trademark of Malaysia would generally take about 6 to 12 months to examine a trademark application. Other countries may have different timeline.
If the trademark application does not fulfil any requirements under the Trademarks Act 2019, the Registrar will issue a refusal notice. Indeed, the applicant will be given opportunity to respond to the said refusal, or amend the trademark application, whichever necessary.
Step 7: Publication in Malaysian IP Official Journal
Once the Registrar finds the trademark application fulfils the requirements under the Trademarks Act 2019, the trademark will be accepted and it will proceed to advertisement in the Malaysian IP Official Journal. Within 2 months from the date of advertisement, the public is given the opportunity to oppose the trademark registration.
In the event that someone opposes the trademark registration, the trademark application will enter into a separate opposition proceedings to determine the registration. This process involves filing of notice of opposition, counter statement, exchange of statutory declarations and legal submissions between the parties. We will be sharing this proceedings separately.
If no opposition is filed, the trademark will be registered in respect of the goods or services.
Step 8: Registration of Trademark
Upon registration, the Registrar shall issue a notification of registration of the trademark with the seal of the Registrar. The registered proprietor may make a request if he wishes to have a certificate of registration, the Registrar shall issue the certificate of registration which shall be equivalent to the notification of trademark.
At this point the registered trademark proprietor may use the ® sign with the trademark. The trademark is now protected and the proprietor is granted exclusive use on the trademark in respect of the registered goods or services for a period of 10 years from the date of filing. Technically, the registration of trademark is perpetual as long as it is renewed every 10 years.
A smooth trademark registration process usually takes about 12 to 18 months from the date of filing. It will take longer if the application encounters any office action or opposition proceedings during the registration process.
Now the trademark has been successfully registered, remember to review your registration from time to time to ensure its validity. Some countries may have post registration compliance to be observed to maintain the trademark.
Last but not least, contact us today to engage our professional services to protect your trademark.
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
IP Executive
Bachelor of Communication
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
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