What is trade mark?
Trade mark acts as a badge of origin. The purpose is to indicate a connection between the goods or services and the person having the right to the trade mark. A trade mark is also a mark which distinguishes the goods and services of one trader from those of another. Today, trade mark is used as a marketing tool to enable customers in recognizing the goods or services of a particular trader. In Malaysia, trade mark protection is governed by the Trade Marks Act 1976.
Is it true that only words can be registered as trade mark?
Trade mark protection is not limited to words. Word, label, ticket, brand, logo, device, heading, numeral, signature, letter or any combination thereof can be registered as a trade mark. Malaysia still does not have any provision that allow for registration of sound or smell marks.
What marks are registrable as trade marks?
This is provided under S.10 Trade Marks Act 1976. Only one of the following particulars must be satisfied:
Trade mark acts as a badge of origin. The purpose is to indicate a connection between the goods or services and the person having the right to the trade mark. A trade mark is also a mark which distinguishes the goods and services of one trader from those of another. Today, trade mark is used as a marketing tool to enable customers in recognizing the goods or services of a particular trader. In Malaysia, trade mark protection is governed by the Trade Marks Act 1976.
Is it true that only words can be registered as trade mark?
Trade mark protection is not limited to words. Word, label, ticket, brand, logo, device, heading, numeral, signature, letter or any combination thereof can be registered as a trade mark. Malaysia still does not have any provision that allow for registration of sound or smell marks.
What marks are registrable as trade marks?
This is provided under S.10 Trade Marks Act 1976. Only one of the following particulars must be satisfied:
· The name of an individual, company or firm represented in a special or particular manner
· The signature of the applicant for registration
· An invented word(s)
· A word that has no direct reference to the character or quality of the goods or services,
geographical name or surname
· Any other distinctive mark
· Not deceptive/confusing, or contrary to law and scandalous/offensive
· Not identical or similar to earlier registered/application trade marks
· Not identical or similar to well-known trade mark
Is trade mark registration compulsory?
In Malaysia, registration of trade mark is not compulsory unlike registration of companies and business. Unregistered trade mark may still obtain protection under common law passing off as long as it has been put to use and it acquires strong goodwill and reputation.
I have registered a business name so I don’t need to register a trade-mark.
Registration of business name is not equivalent to registration of trade mark. Registering business names offers very little protection. Business name registration merely provides a record of the business’s existence, its owners and its contact details. It does not give you exclusive right to use that business name unless you have registered it as a trade mark. Other parties may use a business name that is similar to yours. Hence, register “Powerful Station” as a business name does not stop someone from setting up a business called “Powerful Station”.
Hence, if you intend to use the business name to identify your goods or services, you should register it as a trade mark. Besides, someone may have already registered your proposed business name. It is therefore prudent for you to check with the trade mark office before registering your business name as you may be infringing another person’s trade mark rights.
Is my domain name equivalent to my trade mark?
A domain name provides no exclusive right to you. It is a means of internet navigation. Securing a domain name and a trade mark at the same time will assist you to avoid domain name and trade mark disputes.
When can I use ™ or ® ?
Normally, ™ is used while pending trade mark registration. Nevertheless, you may use ™ at anytime even before filing a trade mark registration. It serves as a notice to others that you intend to protect your rights. However, you may not use ® until the trade mark has been registered. Otherwise, it may amount to an offence of falsely representing a trade mark as registered (see S.81 Trade Marks Act 1976).
How long is the trade mark protection?
Once a trade mark is registered and as long as it has been put into use, the duration of protection is indefinitely, subject to payment of renewal fees for every ten years.
So, if I don’t register my trade mark, I have no protection at all?
An unregistered trade mark, however, is still protected under the common law of passing off. As long as the trade mark is in use, it acquires such a common law right regardless of whether it is registered or not. However, it is very difficult and expensive for you to stop someone else from using your trade mark. You do not have automatic legal right. The only problem is the difficulty in proving strong goodwill and reputation acquired through the use of the trade mark in the business. Substantial evidence is needed to establish goodwill and reputation. You will have to incur expensive surveys and paying for expert witnesses.
What is the protection granted if I register my trade mark?
Upon registration of a trade mark, you are granted the exclusive use of the trade mark for the designated classes of goods or services. The burden of proof for a trade mark infringement action is easier than the burden for a common law passing off action. You will have the automatic legal right to stop anyone in the country to use your trade mark. You will have the right to sue the other party for “Trademark Infringement”, not “Passing Off” law. All you have to prove is that you have a registered the trade mark and the other party is now using the trade mark. The court is likely to order the infringing party to change his trade mark and to pay damages to you. Because the other company's lawyer will tell them this, the case is unlikely to even go to court, and they are likely surrender very quickly. It is strongly advised to register the trade mark as the remedies for trade mark infringement are more cost effective and comprehensive.
Since I have a registered trade mark, my trade mark will always prevail over an identical or similar unregistered trade mark, correct?
Just because your trade mark has been registered, it does not mean it can never be challenged or defeated. The first to show significant use of a trade mark will own that mark even where there is a later registered trade mark. Assuming that the Mr. A has an unregistered trade mark and the trade mark has been in used prior to yours, your trade mark may be challenged by Mr. A if he can prove goodwill and reputation.
If I have a registered trade mark in Malaysia, does it mean I have trade mark protection in every country in the world? Is there a “world trade mark”?
Trade mark rights arise territorially and registration must be done on a country by country basis. If protection of trade mark is required in other countries, it will be necessary to apply for registration separately in each country. However, a Malaysian application can be used as a basis for claiming priority in countries which are party to the Paris Convention and World Health Organisation (WHO).
I have not started to use my trade mark yet. Can I register my trade mark?
S.3 Trade Marks Act 1976 defines trade mark as “a mark that is used or proposed to be used …”. Hence, it is clear it is not necessary to have actual use of the trade mark before registration. An intention to use is sufficient. When you set up a new business, you should register your trade mark at an early stage to ensure that you do not start using a trade mark that owns by others. It can also ensure your trade mark is properly protected against your competitors.
Once I have registered my trade mark, is it ok if I do not use it?
A registered trade mark must be put into use. If a registered trade mark was registered without a genuine intention to use it or there has been no such bona fide use of the mark for at least 3 years after the registration, the registered trade mark may be removed from the register. This is known as “non-use”.
After I register my trade mark, can I change or amend it without having to file a new registration?
Your registered trade mark only remains valid if it is used as registered. If there is any material changes or amendment, then you should file a new registration.
I got the idea for my new trade mark from another company’s registered trade mark. Is it ok if I change a little bit so that my trade mark is different from the prior registered trade mark?
Trade mark infringement does not only occur where the two different trade marks are exactly identical. If your trade mark is confusingly similar to the prior registered trade mark in relation to the same goods or services such that it will likely to deceive or cause confusion to the member of public or it may import a reference to the registered trade mark owner, that will amount to a trade mark infringement as well.
Therefore, misspellings, used with different graphics will likely to be considered as infringing the prior registered trade mark, particularly if the meaning and pronunciation has not changed. For example, Burger King rather than BurgerKing.
Is it better to register a logo, or the words in a special font style, rather than just plain words?
Registration of the words in standard character form usually provides broader protection. It also allows changes to the font style without re-registration.
If I register the English version of my trade mark, do I automatically obtain protection for the Bahasa Malaysia or Chinese version?
Registering the English version will not protect the Bahasa Malaysia or Chinese version of the trade mark. separate application for Bahasa Malaysia or Chinese will have to be made if you want to protect the trade mark in those languages.
If my company owns a trade mark, can I allow my subsidiary companies or any other person to use it too?
A trade mark will only remain valid if it is used either by the party that registered it or by its licensee. A licensor who allows licensee to use his trade mark must apply for licensee to be entered on the Register as a registered user whether with or without any conditions or restrictions. However, it is a condition of registration that the licensor shall retain and exercise control over the use of the trade mark and over the quality of the goods or services provided by the licensee.
The permitted use of a registered trade mark by a licensee shall be deemed to be used by the licensor, even if the licensor never uses the trade mark himself. This would insulate the licensor from any action of cancellation of the trade mark on the ground of his non-use.
What does well-known trade mark mean?
Under S.70B Trade Marks Act 1976, an owner of well-known trade mark is entitled to protection of the use of a mark in Malaysia which is identical or confusingly similar to the well-known trade mark. A well-known trade mark is protected whether or not its owner carries on any business or has any goodwill in Malaysia.
· Any other distinctive mark
· Not deceptive/confusing, or contrary to law and scandalous/offensive
· Not identical or similar to earlier registered/application trade marks
· Not identical or similar to well-known trade mark
Is trade mark registration compulsory?
In Malaysia, registration of trade mark is not compulsory unlike registration of companies and business. Unregistered trade mark may still obtain protection under common law passing off as long as it has been put to use and it acquires strong goodwill and reputation.
I have registered a business name so I don’t need to register a trade-mark.
Registration of business name is not equivalent to registration of trade mark. Registering business names offers very little protection. Business name registration merely provides a record of the business’s existence, its owners and its contact details. It does not give you exclusive right to use that business name unless you have registered it as a trade mark. Other parties may use a business name that is similar to yours. Hence, register “Powerful Station” as a business name does not stop someone from setting up a business called “Powerful Station”.
Hence, if you intend to use the business name to identify your goods or services, you should register it as a trade mark. Besides, someone may have already registered your proposed business name. It is therefore prudent for you to check with the trade mark office before registering your business name as you may be infringing another person’s trade mark rights.
Is my domain name equivalent to my trade mark?
A domain name provides no exclusive right to you. It is a means of internet navigation. Securing a domain name and a trade mark at the same time will assist you to avoid domain name and trade mark disputes.
When can I use ™ or ® ?
Normally, ™ is used while pending trade mark registration. Nevertheless, you may use ™ at anytime even before filing a trade mark registration. It serves as a notice to others that you intend to protect your rights. However, you may not use ® until the trade mark has been registered. Otherwise, it may amount to an offence of falsely representing a trade mark as registered (see S.81 Trade Marks Act 1976).
How long is the trade mark protection?
Once a trade mark is registered and as long as it has been put into use, the duration of protection is indefinitely, subject to payment of renewal fees for every ten years.
So, if I don’t register my trade mark, I have no protection at all?
An unregistered trade mark, however, is still protected under the common law of passing off. As long as the trade mark is in use, it acquires such a common law right regardless of whether it is registered or not. However, it is very difficult and expensive for you to stop someone else from using your trade mark. You do not have automatic legal right. The only problem is the difficulty in proving strong goodwill and reputation acquired through the use of the trade mark in the business. Substantial evidence is needed to establish goodwill and reputation. You will have to incur expensive surveys and paying for expert witnesses.
What is the protection granted if I register my trade mark?
Upon registration of a trade mark, you are granted the exclusive use of the trade mark for the designated classes of goods or services. The burden of proof for a trade mark infringement action is easier than the burden for a common law passing off action. You will have the automatic legal right to stop anyone in the country to use your trade mark. You will have the right to sue the other party for “Trademark Infringement”, not “Passing Off” law. All you have to prove is that you have a registered the trade mark and the other party is now using the trade mark. The court is likely to order the infringing party to change his trade mark and to pay damages to you. Because the other company's lawyer will tell them this, the case is unlikely to even go to court, and they are likely surrender very quickly. It is strongly advised to register the trade mark as the remedies for trade mark infringement are more cost effective and comprehensive.
Since I have a registered trade mark, my trade mark will always prevail over an identical or similar unregistered trade mark, correct?
Just because your trade mark has been registered, it does not mean it can never be challenged or defeated. The first to show significant use of a trade mark will own that mark even where there is a later registered trade mark. Assuming that the Mr. A has an unregistered trade mark and the trade mark has been in used prior to yours, your trade mark may be challenged by Mr. A if he can prove goodwill and reputation.
If I have a registered trade mark in Malaysia, does it mean I have trade mark protection in every country in the world? Is there a “world trade mark”?
Trade mark rights arise territorially and registration must be done on a country by country basis. If protection of trade mark is required in other countries, it will be necessary to apply for registration separately in each country. However, a Malaysian application can be used as a basis for claiming priority in countries which are party to the Paris Convention and World Health Organisation (WHO).
I have not started to use my trade mark yet. Can I register my trade mark?
S.3 Trade Marks Act 1976 defines trade mark as “a mark that is used or proposed to be used …”. Hence, it is clear it is not necessary to have actual use of the trade mark before registration. An intention to use is sufficient. When you set up a new business, you should register your trade mark at an early stage to ensure that you do not start using a trade mark that owns by others. It can also ensure your trade mark is properly protected against your competitors.
Once I have registered my trade mark, is it ok if I do not use it?
A registered trade mark must be put into use. If a registered trade mark was registered without a genuine intention to use it or there has been no such bona fide use of the mark for at least 3 years after the registration, the registered trade mark may be removed from the register. This is known as “non-use”.
After I register my trade mark, can I change or amend it without having to file a new registration?
Your registered trade mark only remains valid if it is used as registered. If there is any material changes or amendment, then you should file a new registration.
I got the idea for my new trade mark from another company’s registered trade mark. Is it ok if I change a little bit so that my trade mark is different from the prior registered trade mark?
Trade mark infringement does not only occur where the two different trade marks are exactly identical. If your trade mark is confusingly similar to the prior registered trade mark in relation to the same goods or services such that it will likely to deceive or cause confusion to the member of public or it may import a reference to the registered trade mark owner, that will amount to a trade mark infringement as well.
Therefore, misspellings, used with different graphics will likely to be considered as infringing the prior registered trade mark, particularly if the meaning and pronunciation has not changed. For example, Burger King rather than BurgerKing.
Is it better to register a logo, or the words in a special font style, rather than just plain words?
Registration of the words in standard character form usually provides broader protection. It also allows changes to the font style without re-registration.
If I register the English version of my trade mark, do I automatically obtain protection for the Bahasa Malaysia or Chinese version?
Registering the English version will not protect the Bahasa Malaysia or Chinese version of the trade mark. separate application for Bahasa Malaysia or Chinese will have to be made if you want to protect the trade mark in those languages.
If my company owns a trade mark, can I allow my subsidiary companies or any other person to use it too?
A trade mark will only remain valid if it is used either by the party that registered it or by its licensee. A licensor who allows licensee to use his trade mark must apply for licensee to be entered on the Register as a registered user whether with or without any conditions or restrictions. However, it is a condition of registration that the licensor shall retain and exercise control over the use of the trade mark and over the quality of the goods or services provided by the licensee.
The permitted use of a registered trade mark by a licensee shall be deemed to be used by the licensor, even if the licensor never uses the trade mark himself. This would insulate the licensor from any action of cancellation of the trade mark on the ground of his non-use.
What does well-known trade mark mean?
Under S.70B Trade Marks Act 1976, an owner of well-known trade mark is entitled to protection of the use of a mark in Malaysia which is identical or confusingly similar to the well-known trade mark. A well-known trade mark is protected whether or not its owner carries on any business or has any goodwill in Malaysia.
© 2008 Edwin Lee
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