Question 1

Is it necessary to register my trademark?

Accepted Answer

Of course! Registering your trademark has the following benefits:-
·         Once your mark is registered, you can use the symbol “®” in your trademark, thus indicating your mark is registered and increases brand trust amongst consumers
·         Gives you the rights to take legal action against anyone who uses your mark without your authorization
·         Ensures that no similar trademark is being registered, which could cause confusion amongst the public, leading to a potential loss in revenue if consumers support your competitor

Question 2

Is my trademark protected worldwide if it is only registered in Malaysia?

Accepted Answer

Trademark protection is territorial. Your trademark will be protected solely in Malaysia if it is registered in Malaysia.

Question 3

How long is a trademark valid for after registration?

Accepted Answer

A trademark is valid for 10 years from the date of registration and may be renewed every 10 years. A trademark may be valid in perpetuity.

Question 4

How long does it take for a trademark to be registered?

Accepted Answer

Based on our observation, it takes 12-15 months from the application date for a trademark to be registered, provided there are no enquiries or objections raised by the examiner, and no opposition raised by any third party.

Question 5

How do I protect my mark in other countries?

Accepted Answer

There are 2 ways to protect your mark in other countries:-
1)      Madrid System – brand owners are allowed to protect their marks across 100+countries which are member states of the Madrid System by filing one application in one language and paying one fee. 
2)      Filing of trademark application separately in country(s) of interest – brand owners engage IP attorneys/agents in country(s) of interest to assist in filing of the trademark application.

Question 6

After my mark is registered, if I use an amended version or a slightly different version of my mark, is it being protected?

Accepted Answer

You should use the mark as how it is when it is being registered. If your mark is being filed as a plain word mark, or a series of mark in colour and black and white, you mark will still be protected provided the same mark is being used but in a different colour. It is advisable to file a new trademark application to obtain registration for a different version of your mark.

Question 7

What should I do if I found counterfeit version of my product online or in a marketplace?

Accepted Answer

As a brand owner who has registered your mark, you can enforce your rights by issuing a cease & desist letter to order the unauthorized party to stop the sales of the counterfeit products. We have the expertise to assist you in this.

Question 8

What should I do if someone has copied my logo/mark?

Accepted Answer

Depending on how substantial are the similarities in the logos/marks, as a brand owner who has registered your mark, you can enforce your rights by issuing a cease & desist letter to order the unauthorized party to stop using the logo/mark.

Question 9

What should I do if I have found out that my logo/mark is similar (unintentionally) to another business which is already in operation?

Accepted Answer

Your mark might be acceptable if the nature of goods / services is unrelated to what is being offered by the other party. If your logo/mark is similar to your competitor or a business which offers similar goods/services to you, and if they have been in operation before you, it is advisable to amend your mark, if possible.

Question 10

Besides business name and logo, what else can be registered as a trademark?

Accepted Answer

In Malaysia, non-traditional mark such as scent, sound, colour, shape, 3-D marks, holograms, positioning, sequence of motion, shape of goods or their packaging or any combination thereof are registrable if they are signs that are capable of being represented graphically and capable of distinguishing goods or services of one undertaking from another.

FAQ

Frequently Asked Questions