WHAT IS A TRADE MARK?

A trade mark is a sign which distinguishes the goods and services of one trader from those of another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these.

A trade mark is used as a marketing tool to enable customers in recognizing the product of a particular trader.

FUNCTIONS OF TRADE MARK

Origin Function – A trade mark helps to identify the source and those responsible for the products and services sold in the market.

Choice Function – A trade mark enables consumers to choose goods and services with ease while shopping.

Quality Function – Consumers choose a particular trade mark for its known quality.

Marketing Function – Trade marks play an important role in advertising. Its normal for consumers to make purchases based on continuous influence of advertising.

Economic Function – Established trade mark is a valuable asset. Trade marks may be licensed or franchised.

IMPORTANCE OF TRADE MARK REGISTRATION

Trade marks registration provides for:

Exclusive Rights – Registered trade marks owners have exclusive right to use their marks in trading. They also have the rights to take legal action for infringement under the Trade Mark Law against others who use their marks without consent. They can either take civil action or lodge complaints to Enforcement Division for appropriate actions under the Trade Description Act 1972.

Legal Evidence – Registration certificate issued by Registrar Office is a prima facie evidence of trade mark ownership. A certificate of registration serves as an important document to establish the ownership of goods exported to other countries.

DOES MALAYSIAN REGISTRATION GIVE PROTECTION ABROAD?

No, if protection of trade mark is required in other countries, it will be necessary to apply for registration separately in each countries. However, a Malaysian application can be used a basis for claiming priority in countries which are party to the Paris Convention and World Trade Organization (WTO).

DURATION OF REGISTRATION

Trade mark registration is valid for ten years from the date of application and may be renewed every ten years.

WHO MAY APPLY?

Any person, whether Malaysian citizen or not, who is the owner of the trade mark used, or proposed to be used, by him in the Malaysia, may apply for the registration of a trademark in this country.

HOW TO APPLY?

Before Applying – Applicants are advised to make search before submitting applications to avoid applying for identical or similar to trade marks filed earlier. All searches can be done at Public Search Room, MyIPO. A fee rate of RM20 per hour will be charged.

Application Form (TM5) – All applications must be made in Form TM5. Five copies of the completed TM5 must be submitted together with the prescribed fee. For different marks, separate applications must be filed.