Thinking of Registering Your Trademark? Don’t Miss These 6 Essential Trademark Registration Tips
- IP Gennesis
- 3 days ago
- 6 min read
If you are planning your Trademark Registration in Malaysia, here are the simple steps to start strong.
Registering a trademark is one of the smartest moves for any entrepreneur. It protects your brand name, logo, or design — the core elements that make your business unique. In Malaysia, trademarks fall under the broader umbrella of Intellectual Property, and getting this right early can save you from disputes, copycats, and expensive mistakes.
Before you file your Trademark Application, it’s important to understand how to give your mark the best chance of approval. This guide breaks everything down in friendly, practical terms. You’ll learn how to choose a strong and distinctive Trade Mark, avoid common pitfalls, and understand what happens after you submit your application.
Whether you’re launching a new business or growing an existing brand, these tips will help you move through the Trademark Registration process with clarity and confidence.
Treat your trademark like your business identity. Protect it early, protect it correctly. Let’s dive in.
Tip 1: Make Sure Your Trademark Is Distinctive – Invent a New Word!
A distinctive trademark is one that helps people instantly recognise your brand — and not confuse it with someone else’s. The best approach is always invent a new word.
What “Distinctive” Means Under Trademark Law
Under Section 2 of the Trademarks Act 2019 (TMA 2019) and the Trademark Laws of many other countries, a trademark is distinctive if it can:
Show that your goods or services come from your business; or
Indicate a clear connection between you (the trademark owner) and the goods or services.
In simple terms: your Trade Mark should stand out. It should make people think of your brand the moment they see it.
Strong vs Weak Trademarks
A strong mark is often distinctive:
Invented (e.g., “Rolex”)
Unique or unusual
Not commonly used in your industry
Not describing your goods, services, or their quality
A weak mark is often:
Too descriptive (“Best Watches”, “Fresh Bread”, “Speedy Delivery”)
Too generic (“Watches Store”, “Milk & Grocery”)
Too common in the market
Descriptive terms usually fail because they tell people what the product is — not who it comes from.
A distinctive trademark is easier to protect and more likely to pass the examination by the Trademark Office.
Real Example on Distinctive Trademark
“Rolex” works because it is an invented word. It doesn’t describe watches. But “Premium Watches” or “Quality Leather Bags” will usually fail because they describe the product, not the brand behind it.
Practical Takeaway
Create something unique. Avoid common industry words. The more creative your Trade Mark, the higher your success rate.
Treat your brand like a fashion designer, as Heidi Klum says, “You’re either in or you’re out!” A distinctive mark keeps you in.
Tip 2: Conduct a Trademark Search and Registrability Analysis Before Filing
A Trademark Search helps you find out whether someone else has already registered a similar trademark before you.
Why a Trademark Search Matters
Even if your mark feels unique, another business may have registered something close — sometimes without you even realising it. For example, you may file “TOM D. HARRY”, only to discover that “TOM & HARRY” was registered two years earlier.
This can easily block your Trademark Registration.
A good Trademark Search and Registrability Analysis in the country where you plan to file will:
Check for identical or confusingly similar Trade Marks already on the register
Early detection of the marks that could cause an objection from the trademark office
Assess whether your Trademark Application has a good chance of being approved
Highlight risks before you invest money into filing
With so many marks already filed, even small similarities (sound-alike, look-alike, meaning-alike) can cause problems.
Always get a professional search report before filing your Trademark Application. It’s a small cost compared to the stress, delay, and extra fees of dealing with an objection later.
Tip 3: Your Trademark Should Not Describe Your Goods or Services
A good Trademark represents your brand identity — not just the product you sell.
Why Descriptive Trademarks Are Rejected
Under Section 23 of the Trademarks Act 2019 (TMA 2019), the Registrar can refuse a Trademark Application if the mark only describes the kind, quality, quantity, purpose, value, or other characteristics of the goods or services (s.23(1)(c)).
In simple English, your trademark cannot simply say what the product is.
If you name your bakery “Delicious Cakes” or “Fresh Bread Bakery”, you’re describing your goods and services, not branding them. These names tell people what you sell, but not who you are.
Marks like these are usually rejected because anyone in the industry should be free to use descriptive terms.
If you feel compelled to use non-invented words as your trademark, then choose those that are not describing or relevant to your products and services.
Examples of Non-Descriptive (Strong) Marks
“Apple” for phones and computer
“Amazon” for e-commerce platform
“Orange” for telecommunication
A non-descriptive mark is:
More likely to pass the Trademark Registration exam
Easier to enforce
Easier for customers to remember
More suitable for long-term brand building
Always remember, a trademark should point to you, not your product. The more creative your brand name, the stronger your Intellectual Property protection.
Tip 4: Don’t Panic If Your Trademark Gets Refused / Objected
Getting a refusal on your trademark application can feel alarming, but it’s actually quite common. With tens of thousands of trademarks already on the register, overlaps happen — even when your brand feels unique.
If your application is refused on relative grounds under Section 24(2)(b) of the Trademarks Act 2019 (meaning your mark is considered too similar to an earlier mark for related goods/services), you still have options. A refusal is not the end of your branding journey.
Option 1: Redesign Your Trademark
Create a new, more distinctive version of your mark.
You’ll need to submit a fresh application, since a filed trademark cannot be changed mid-process.
Option 2: Appeal the Refusal
If you genuinely believe your mark should be registrable, you can challenge the refusal.
In an appeal, many times the Re Pianotist test is applied, which examines:
How consumers encounter the marks
How the goods/services are marketed
The trade channels used
The behaviour of the average consumer
Even if two marks appear similar, they may still coexist legally if the goods or services are different and move through separate trade channels.
For Example:
The mark “TROPICANA” is registered for property development and also for fruit juices in Malaysia. These two products are unrelated, so consumers are unlikely to assume a connection.
A refusal doesn’t mean you did anything wrong. It simply means the Registrar thinks there may be a conflict, but with the right strategy, many refusals can be overcome.
Once you clear the refusal, your trademark journey continues.
Protecting your brand is a process, and every step you take strengthens your business identity.
Wish to know more about how to overcome provisional refusal on a trademark registration? Click this link!
Tip 5: Monitor and Enforce Your Trademark
Registering your trademark is a big milestone — but it’s only the beginning.
To keep your brand safe, you must actively monitor and enforce your rights.
Here’s what you should do:
Keep an eye on new trademark filings in your industry.
Watch for marks that look or sound similar to yours.
If a conflicting mark appears in the Trademarks Journal, you can file an opposition to stop it before it becomes registered.
Under Section 35 of the Trademarks Act 2019:
Anyone can oppose a trademark published in the Journal if it conflicts with their existing rights.
The opposition must be filed within two months from the publication date.
his is often the most effective early defence to prevent future infringement issues.
Wish to know more about how to trademark opposition works in Malaysia? We have a detailed explanation on the process, click here!
Acting quickly helps preserve your trademark’s strength.
By monitoring the market, you ensure your brand stays uniquely yours and fully protected.
Tip 6: Don’t Forget to Maintain Your Trademark
Trademark protection doesn’t last forever unless you renew it.
In Malaysia, a trademark is valid for 10 years from the filing date, and it can be renewed every 10 years, indefinitely.
Why Trademark Renewal is important:
Keeps your trademark legally enforceable
Prevents others from trying to register similar marks
Ensures your brand remains strong and exclusive
The Bottom Line: Protect Your Brand With a Strong Trademark
Your trademark is more than a name or logo — it’s the heart of your brand identity.
A strong and distinctive trademark, backed by proper monitoring and timely renewals, gives your business long-term credibility and legal security.
Whether you’re registering your first mark or strengthening an existing portfolio, careful planning today prevents costly problems tomorrow.
Ready to Protect Your Brand? Let’s Secure Your Trademark.
If you need help with trademark searches, filings, oppositions, or renewals, we’re here to guide you through the entire process — clearly, strategically, and professionally.
👉 Contact us to get started and protect your brand with confidence.
Written by,
Legal Executive
LL.B (Hons)
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor
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.