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Top 5 Reasons to Appoint a Trademark Agent To Register Your Trademark

Updated: May 20

“Is it necessary to appoint a trademark agent or can I register a trademark myself?”


This is one of the many common questions faced by trademark owners. Legally, you can register a trademark on your own in Malaysia, without appointing a trademark agent.


However, in Section 95(2) of the Malaysian Trademarks Act 2019 (“TM Act”), it also states that if you do not reside or carry on your business principally in Malaysia, then it is compulsory to appoint a trademark agent to register and act on your behalf.

While it is an established fact that you can do a trademark registration on your own, it is always better to appoint a trademark agent to manage the registration process for you. Here are the top 5 reasons on why you should appoint a trademark agent:



A. LEGALLY QUALIFIED


Malaysian Trademark Agents are registered professionals under the purview of the Malaysian Trademarks Act 2019. It states that a qualified trademark agent needs to fulfil the prescribed qualifications and pass the examination conducted by the Registrar of Trademarks.


Therefore, a registered trademark agent is in better position to advise on how to register your trademark; whether it is registrable pursuant to the laws, how to optimise your trademark rights or other legal issues.



B. PRIVILEGED COMMUNICATION


Many business owners are concerned with confidentiality issues while revealing their newly minted trademark or business plan to a third party.


The Malaysian Trademarks Act 2019 protects your communication with a registered trademark agent. As Section 98(1) of the Malaysian Trademarks Act 2019 states that: a communication made between a registered trademark agent and the person appointing and authorizing the agent in matters relating to trademarks, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his client



C. TIME-SAVING


Appointing a trademark agent can substantially save a lot of your time in managing a trademark registration, which could be a long process, especially for first-timer trademark applicants.


Besides that, a trademark agent can also help you in deciphering issues raised by the Registrar of Trademarks. It will be often that the Trademark Examining Officer will raise objections or other legal issues concerning a trademark application (also known as “Office Action”). For example, imposing a disclaimer or condition on a trademark registration can unnecessarily limit your exclusive rights to requesting clarifications on goods and services, clarifications on the ownership of the marks and many more. All these could be troublesome for layman applicants, especially those who are not trademark agents themselves.


Engaging a trademark agent will save your time in finding out what those issues mean, their impact on your trademark and how to respond without unnecessarily limiting your legal rights.

Furthermore, you will need to ensure that you are doing things lawfully, especially if you are appealing against a refusal. Under the new Malaysian Trademarks Act 2019, we only have ONE opportunity to appeal before the Registrar of Trademarks. With this, we should certainly make good use of the only opportunity we have.


Overall, a competent trademark agent will monitor your trademark application with the Registrar of Trademarks. According to the current status of your application, the agent will know better on which department of Registry to follow up with.

D. COMPREHENSIVE IP STRATEGY FOR YOUR BUSINESS Registering a trademark is not as simple as just submitting a form with your trademark. It requires comprehensive strategies to protect your trademark. For instance, we will help investigate on whether your trademark is registrable. A competent trademark agent will be able to conduct a thorough search to check for identity or similar marks, analyse the chances of success, identify any potential risk in the registration journey and how to overcome it.

Other examples on the issues of registration would be: 1) How many classes are sufficient to cover your business comprehensively? 2) Should a trademark be filed with both word mark and logo combined or separately? 3) How should we draft the wordings on specification of goods to avoid conflict with other similar marks in the database of Register of Trademark?

Planning all the above would require an experienced trademark agent to understand your business model thoroughly as there is no easy way out.



E. GLOBAL CONNECTION


Trademark protection territory based. Therefore, it is crucial to register your trademark in each of the country separately. However, every country has different legal and documentation requirements on trademark registration. Some countries require notarisation or legalisation of documents while some may require the Declaration of Use filing. In regard to this, an experienced trademark agent with strong connections and competent trademark attorneys on an international scale will be able to handle the abovementioned for you to protect your trademark globally.


The above summarises what a good trademark agent can contribute in the journey of protecting your trademark. If you are unsure on where to start or how to find an experienced trademark agent, contact us today!




Written by,

Lawrence Tan

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.



Copyright reserved 2021 © IP Gennesis Sdn Bhd

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