In the world of professional financial planners, trademarks play a significant role as a unique identity for Certified Financial Planners (CFPs). Whether you are a seasoned CFP or just starting out, safeguarding your trademark is always the key to building a strong and credible brand that clients can trust.
In this article, we will delve into why trademark is essential for CFPs and how to protect this valuable asset.
This article is also featured in 4E Journazine published by
Financial Planning Association of Malaysia (FPAM)
What is a Trademark for CFPs?
Besides the conventional understanding that a trademark means brand name or logo, the new Malaysian Trademarks Act 2019 (“TMA”) has introduced non-traditional trademarks, which now includes letter, word, name signature, number, device, brand, heading label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof.
Whether you are running an agency, providing advisory services, or offering training, chances are you already use one of the above elements as your trademark, so that your clients could remember you and set you apart from competition.
But here’s the kicker: having a cool trademark is not enough. The real game-changer is protecting it.
Why Protect Your Trademark?
Imaging you have been (or will be) investing a great amount of time and money in promoting your brand, and throughout years of hard work, you have accumulated substantial goodwill and reputation in the market. Then, you find out someone is using your name providing sub-standard services at much lower price. Not cool, right? In fact, leaving it unprotected, you risk more than just your reputation. In the financial planning sphere, your trademark is a bridge of trust between you and your clients. It represents your quality and credibility. Your clients may be misled by imposters and your hard-earned brand identity will be diluted.
Considering the above, it is imperative to protect your trademark by all means.
How to Register Your Trademark?
Registration of trademark should be at the early stage of business, even before you reach out to the public with your brand. However, many are deterred by the procedural complexities. Actually, it is not as daunting as it sounds, and we have simplified the following step-by-step guide.
1. Trademark Search: Start by searching the Government Trademark Office Database to see if there is any mark that is same or similar to yours. You might need to be creative here, try tweaking your trademark visually or phonetically when doing the searches.
2. File the Trademark Application: Before you file the application, prepare the following basic important information:-
a) Owner’s Name and Address. Trademark is an asset, you should decide strategically whether you wish it to be owned by your company or personally.
b) List of Products or Services. Take a moment to list down the products or services under your trademark. It could be your books, financial planning or training services. This is important because it determines the scope of protection of your trademark.
c) Softcopy of the Trademark
3. Examination by Trademark Office (TMO). Upon submission, the TMO will take about 6 to 12 months to examine your application. During this stage, you may use the TM sign on your trademark. There’s no guarantee that your application will be approved. Sometimes TMO might refuse your application due to similarity with earlier marks or not complying with other provisions in the TMA.
4. Publication. If your trademark application is approved by the TMO, it will be published in the official IP journal. The public will be given 2 months to oppose if they are aggrieved by your registration.
5. Registration. If nobody oppose to your trademark, Congratulations! The registration is complete and your trademark is protected. From this point, you may use your trademark with the ® symbol!
Points to Note While Creating a Brand
It is not good enough if you couldn’t find a trademark similar to yours. Sometimes, the inherent design of a trademark could fall foul of the laws too. For example, your trademark should not directly refer to your goods or services. The best approach is to invent a new word that never existed before.
Post Registration Maintenance
The efforts to protect your trademark do not stop at registration. There are much more to be done.
Protection Territory. Registration of trademark is territorial based. For example, registration in Malaysia only confers protection in Malaysia. If you are expanding to other countries, the registration should catch-up with the expansion too!
Reviewing Registration. You might have expanded your scope of services throughout the years. Therefore, you should expand your registration by including those new services too.
Renewal and Declaration of Use. Keep an eye on the expiry dates. You can keep the registration forever, provided it is renewed every 10 years. However, in some countries, like Philippines and USA, may require you to file declaration of use in between to prove the mark is in active use.
Trademark Ownership. Corporate restructuring is not unusual in business journey. If there is change in the name of your company or you have moved to a new company, it is important to always update the new name or transfer the ownership of the trademark. Otherwise, it might pose an obstacle when you wish to exercise your legal rights.
As illustrated above, your trademark is more than just a catchy phrase. It is the heart of your business. By following the above steps, you are not just protecting a symbol, but rather you are protecting your business’s future. So, do the necessary, and remember that your trademark is your beacon!
Written by,
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 professionals.
© 2024 by IP Gennesis Sdn Bhd.
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