Trademarks

Trademarks

How do you register or secure trademark rights and what protection does it grant?

The registration of trademarks is governed under the Trademarks Act 1976 and the Trademark Regulations 1997. An application to register a trademark can be made by any party claiming to be the bona fide owner of the mark.

Registration of a trademark provides exclusivity to the registered proprietor to use the mark on the goods or services for which the mark is registered, and the prima facie right to take legal action under trademark infringement against wrongful use of the registered mark, or any confusingly similar mark, in relation to the goods or/services in respect of which the mark is registered. The trademark is protected for a period of 10 years and can be renewed every 10 years thereafter.

If the trademark is not registered, the proprietor of the mark will have to rely on the common law remedy of passing off; this involves the owner of the mark establishing its rights through evidence, which is more burdensome and expensive to establish.

What are the key threats to trademark owners?

A key threat to trademark owners is the unlawful misappropriation of their trademark rights, which has become ever more frequent with the growth of the online trading environment.

What are the most common mistakes trademarks owners make?

A common mistake of trademark owners is to invest in product development, branding and the marketing of their products only to realise later that the trademark is not available for use and registration. Adopting a brand protection and registration strategy, including an emphasis on pre-filing searches in the local and foreign trademark registers, is an important consideration before embarking on a new brand.

Have there been any changes to the trademark law in the last 18 months?

Expedited examination of trademark applications was introduced on February 15, 2011. Online filing of trademarks and patents has also been implemented. Malaysia is expected to accede to the Madrid Protocol in 2013.

An expected and significant change to the trademark legislation is the introduction of non-traditional trademarks which would expand the definition of a trademark to include 3D marks, colour, smell, sound and other non-conventional marks.