Q&A on Trademark Registration
Updated: Apr 14
1. What is trademark?
A trademark includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion, or any combination thereof. It is used to distinguish their goods and services from the competitors in the trade.
2. How do I know whether my trademark has been registered by others before I do?
We can conduct a pre-filing search and send you the analysis report within 3 to 5 working days.
3. Is it correct that once my trademark is registered, nobody can use my trademark?
A trademark is only protected in respect of the classification and goods / services it is registered. You should file multiple class applications if the goods and services fall under different classes. While it is recommended to register all relevant classes, you may choose to register either one or a few more important classes. The total costs would multiply according to number of applications. Kindly send us the complete list of goods and services and we will assist you in identifying the classifications.
4. What if the Registrar objects to my application?
You may appeal against the objection or amend the application as required by the Registrar. The estimated cost for filing such appeal or amendment with the Registry of Trademarks is usually in the range of RM500.00 to RM3,000.00 for 1 mark 1 class (excluding applicable official fees, disbursements and 6% Service Tax).
5. Does the trademark registration in Malaysia cover the whole world?
No. Registration of trademark is territorial based. Currently there is no unitary registration system to cover the entire world. It is necessary to register the trademark in each country separately. However, there are options for regional registration or simplified international registration through Mardrid Protocol.
6. What is the difference between TM and ®?
Only a registered trademark may use the ® symbol. You may use the TM symbol while waiting for the registration process. Any person who falsely represents a trademark as registered commits an offence and shall, upon conviction, be liable to a fine of not exceeding RM10,000.00.
7. Why should we register our trademark and how long will the protection last?
To secure exclusive use of the trademark and to prevent others from using it. Upon registration, it is protected forever, provided renewal is filed every 10 years.
8. How long is the entire registration process?
Application will be filed within 1-2 working days upon confirmation. A smooth registration process from filing date up until issuance of certificate will take about 12 to 18 months.
9. Is it guaranteed that my trademark will be registered?
We are not able to guarantee the successful registration of a trademark as it is the sole discretion of the Registrar of Trademarks by considering all the requirements under the Trademarks Act 2019 of Malaysia.
10. What is Classification?
It is known as Nice Classification, which is a system of classifying the goods and services for trademark registration.
11. What are the information needed to file a trademark application?
i. Softcopy of the trademark in .jpeg or .pdf format in high resolution
ii. Applicant’s full name and identity’s number (for Malaysian applicants)
iii. Applicant’s address
iv. List of goods and/or services (and the Classification if it is known to the Applicant)
v. Certified translation of the trademark if it is not in Roman characters, or the Malaysian National language or English language.
vi. If priority is claimed, please provide:-
a) Filing date of the priority application
b) Convention country of the priority application
c) Application or registration no. of the 1st Convention application
d) Certified priority document of the priority application, if required by Registry. Translation required if the certificate is not in English language.
Have more queries? Talk to us now!
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https://wa.me/60172458162 Wei Jun
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017-245 8162 Wei Jun
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
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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