When running a business in Malaysia, one of the critical steps to ensuring your brand stands out and remains protected is registering a trademark. This makes it crucial to understanding the requirements for trademark registration.
This friendly yet professional guide will summarise the top 5 requirements to register trademark in Malaysia, what you need to know about trademarks and how to successfully register them, according to the Malaysian Trademarks Act 2019 (TMA 2019).
Following these points will greatly increase the chances of success in registering your trademark in Malaysia!
What is a Trademark?
First things first: to register a trademark, you need to have one! A trademark isn't just a fancy name or logo; it represents your brand and differentiates your goods and services from those of others.
The Malaysian Trademarks Act 2019 (TMA 2019) has defined trademark as any sign capable of being represented graphically. This includes:
Letters, words, names, or signatures
Numerals or devices
Brands, headings, labels, or tickets
Shapes of goods or their packaging
Colors, sounds, or scents
Holograms, positioning, sequences of motion,
or any combination of the above
But having a trademark idea isn't enough. It must meet specific legal criteria to be registered successfully. Let's explore and see what those requirements are!
No. 1: A Trademark Must Be Distinctive
A fundamental requirement for a trademark is that it must be distinctive. This means your trademark should be unique enough to be easily distinguished from others in the same field. A distinctive trademark helps prevent confusion among consumers and ensures that your brand identity is clear.
An invented or newly coined name would be great. Also, it is important to ensure the name is not some words which are commonly used by other players in the same industry.
No. 2: A Trademark Must Have No Reference to Goods and Services
Your trademark should not directly describe your goods or services. For example, using the word "Apple" as a trademark for selling apples would be too descriptive and unlikely to be registrable. On the contrary, it is completely fine to use “Apple” as trademark for selling computers and phones!
Another example is, a trademark must not directly describe the qualities, characteristics, or geographical origin of the goods and services. For instance, you cannot trademark generic terms like "Cold Beer" for a beer brand because it directly describes the product and its qualities and characters. However, “Blue Moon” may not be invented words, but it is registrable because it has not relevance to beers!
No. 3: A Trademark Must Not Prejudicial To National Interests
This means your trademark should not include or imply anything offensive or contrary to public order and morality. It's important to consider this when brainstorming your brand's trademark to avoid legal issues and public backlash.
Marks with controversial, offensive, or politically sensitive connotations may face rejection on grounds of public interest._
To achieve this, it is important to make substantive effort in researching and understanding the local customs and culture. There is no straightforward formula in achieving this as a concept that is welcomed in one country may not be equally acceptable in another.
This requirement underscores the government's commitment to maintaining harmony, stability, and integrity within the nation's socio-political landscape.
No. 4: Avoid Using Place Names, Initials or Flags in Your Trademark
Trademarks that contain official names or initials of places, particularly those known for specific goods or services, can be rejected (For example, Sabah Tea). It also ensures that geographical names remain accessible for common use and do not become subject to proprietary rights. However, it is possible to register it as Geographical Indication.
Additionally, using flags or other national symbols, or emblems in your trademark without proper authorization can lead to your registration being denied. This rule ensures respect for national, international symbols and institutions.
The above are known as Absolute Grounds for Refusal of Registration, and they are only some of the requirements laid down in Section 23 of the Malaysian Trademarks Act 2019.
As we can see, absolute grounds for refusal mainly deals with inherent design or concept of the trademark itself, not so much about similarity with other trademarks.
The issue of similarity with other trademarks falls under the purview of Relative Grounds for Refusal of Registration, which will be explained below.
No. 5: Avoid Confusion With Earlier Marks
To protect your brand and the interests of other businesses, your trademark should not closely resemble or be identical to existing trademarks. In summary, pursuant to Section 24 of the Trademarks Act 2019, the Registrar shall refuse to register your trademark if there exists a likelihood of confusion on the part of the public if it is identical or confusingly similar with an earlier trademark.
It is worth pointing out that many have thought that it is an infringement if two trademarks are similar. However, the reality is similarity per se is acceptable, so long as it does not lead to a likelihood of confusion or deception. This principle has been laid down by the Court of Appeal in the Malaysian case Bata Ltd v Sim Ah Ba @ Sim Teng Khor & Ors (trading as Kheng Aik Trading) (2006] 6 MLJ 445.
In determining whether two trademarks are confusingly similar, we do not dissect and compare the words part by part. We must consider all the surrounding circumstances, including:
a. The idea conveyed by both trademarks must be compared;
b. The marks as a whole must be compared;
c. The 1st syllable of the trademarks is of importance;
d. The visual as well as the phonetic aspects must be considered;
e. The imperfect recollection of customers/potential customers must be considered;
f. The trade channel of the goods and services;
g. The essential features of the trademarks;
In light of this, a thorough searches and due diligence in the Government Trademark Office prior to applying for trademark registration, businesses can mitigate the risk of potential conflicts and legal disputes, thus fortifying your brand protection strategies.
In Summary
Registering a trademark in Malaysia involves careful planning and consideration of the legal requirements outlined in the TMA 2019. By ensuring that your trademark is distinctive, not overly descriptive or offensive, and doesn’t infringe on existing marks, you can safeguard your brand and build a strong identity in the marketplace
For entrepreneurs, taking the time to understand and navigate the complexities of trademark registration is a worthwhile investment in your brand’s future. Protecting your intellectual property helps establish trust and loyalty with customers, ultimately contributing to your business’s long-term success.
Contact us today for free consultation to plan a roadmap for your IP protection!
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above are meant for general information purposes and do not constitute legal advice. Please do not hesitate to contact us if we could be of assistance!
© 2024 by IP Gennesis Sdn Bhd.
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