Trade Mark

What is Trade Mark/Brand?

A trade mark is another legal device provided by the IPR regime that offers protection to the owner.  In relation to goods or services, trade marks are used to distinguish the source of the said goods or services from those of others.  The mark may take the form of a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. The word “brand” is derived from a root word which means “burning” and it is used to refer to a mark which is burnt on to goods. The word “brand” may be extended to marks which are stamped on to or woven into goods. Nowadays, the word “brand” is used more as a marketing concept to promote one’s goods or services and would normally include the use of a trade mark.

Benefits of a Registered Trade Mark

A trade mark can be protected on the basis of either proof of use or registration. 

In most countries, including Malaysia, a mark for use in a particular trade does not require registration. Such a mark may receive protection under the common law doctrine of passing-off, so long as the mark is in use. A party in establishing its rights to an unregistered mark has to prove that the mark used by a third party is associated in the public mind with its own product or service, and that the third party’s goods have been mistaken for its goods or services. This method of proof can be time-consuming and expensive.

Notwithstanding the aforesaid, it is advisable to register a trade mark with the relevant local, and if required, overseas Registry to enjoy federal protection. In a nutshell, registration offers a number of significant advantages aside from the fact that it creates a legal presumption of ownership of the mark. A registered trade mark holder has the ability to

  • prevent competitors from using the same mark, or a similar one;
  • prevent the importation of goods bearing the same mark, or a similar one;
  • sue for infringement under the trade mark laws; and
  • cause the business to increase in value.

Bear in mind that registration of a trade mark is necessary in each country where trade mark protection is sought

Functions of a Trade Mark

A trade mark serves to distinguish trade marked products originating from a particular trader or group of traders from the products of other traders.  Besides, a trade mark fulfils a quality or guarantee function in that when a consumer sees a trade mark, he will associate that trade mark with a particular quality expected from the owner of the trade mark.  Also, a trade mark is seen as fulfilling an advertising role. Therefore, it is important to take steps to protect the mark from being pirated for its commercial reputation to pass-off the products of unscrupulous merchants.    

Trade Mark FAQs

Can I trade mark my domain name?

Most businesses today advertise their domain names to signal a Web presence. With this method, domain names now perform an identifying function, as in the case of a trade mark.  You can register your domain name with the Trade Mark Registry as a trade mark, as long as it meets the requirements of the federal legislation.  Take note that when you register your domain name, you must be careful that it does not infringe on someone else’s trade mark. The World Intellectual Property Organization (WIPO) has published a trade mark database portal to facilitate preliminary trade mark searches for those wishing to register a domain name in a gTLD (generic top level domain means the three or more letters used by a particular class of organization eg “.com” for commercial, “.biz” for business use, “.gov” for governments use) or ccTLD. (country code top level domain means the two letters reserved to identify the country eg “uk” for United Kingdom, “my” for Malaysia).  It is always wise to first conduct a search to ensure that your proposed domain name does not infringe third party trade mark rights.

Are invented/coined words protected?

Invented words are simply words that have no meaning, for example, a fanciful name. However, case law has established that a party is entitled to protect and monopolise it, if they so wish.

What is the difference between an Industrial Design and a Trade Mark?

An industrial design is an article of manufacture or ornamental design, which must appeal to the eye, but need not necessarily be distinctive. A trade mark, on the other hand, may consist of different kinds of visible signs, which may or may not be ornamental. However, it must be capable of distinguishing the goods or services of one enterprise from another.

What is the difference between an unregistered and a registered Trade Mark?

An unregistered trade mark is protected under common law, while a registered trade mark is protected by federal legislation. It is easier to prevent other traders from using a registered trade mark than it is to prevent them using an unregistered trade mark.  Registering a mark with the Trade Mark Registry will give the owner the exclusive right to use it across the country where protection is conferred on the trade mark in relation to his goods or services for a period of 10 years from the date of filing the application. Thereafter, it can be kept in force indefinitely by renewal at intervals of 10 years.

What is the difference between passing-off and infringement?

Passing-off is the use of an unregistered mark, whilst infringement is the unauthorised use of a registered trade mark. A passing-off action is usually more difficult and expensive to prove, as opposed to an action for infringement under the trade mark law.

Why register a Trade Mark?

Although an unregistered trade mark may be recognised through common law as the property of the owner, registration provides proof of ownership.  Registration of a trade mark gives the registered owner exclusive use of the trade mark across the country where protection is conferred.

Who may register a Trade Mark?

Only the owner of a trade mark may apply for registration.  An owner may be an individual, several persons, trade unions, lawful associations, or even a company.

What is the duration of the protection given?

Beginning from the date of filing, protection is for an initial 10-year term. It may be renewed indefinitely for a further period of 10 years each, upon payment of the prescribed fees. 

Do I need to use the trade mark symbol or mark ‘TM’ on my work?

Although not necessary, a trade ark symbol puts other traders on notice that you claim ownership of that trade mark.

What do the notations ‘TM’ and ’R’ mean?

The symbol TM (trade ark) is used to alert the public of a party’s claim in a mark, whether or not a formal application for registration of the same has been filed.  The use of the symbol ‘R’ (registered trade mark), on the other hand, is permitted after a trade mark has been successfully registered with the relevant Trade Mark registries. Once again, this is to alert the public of a party’s claim to the mark in relation to the goods/services listed with the Registries.

Can I still keep my registered Trade Mark if I fail to renew it?

A trade ark which has not been renewed will be removed from the Register.  However, you are given 12 months from the date of its expiration to apply for its restoration. An application for restoration must be accompanied by the restoration fees.

Can my registered Trade Mark be challenged if I do not use it?

Yes. Your registered trade mark may be removed by Court Order if you have not used your trade mark in good faith for a continuous period of usually three years, ending one month before the day of which the court application for its removal is filed.

Who may sue for Trade Mark infringement?

A registered proprietor of a trade mark or its registered user may sue for an infringement of a trade mark.

What is temporary protection of a Trade Mark?

Temporary protection is granted to a trade mark that acts as the subject matter of an exhibition at an official/officially recognised international exhibition in any convention country, or a prescribed foreign country. Protection commences from the date the goods are introduced into the exhibition.

What do I need to file an application for a Trade Mark?

An application for a trade mark should consist of

  • the application form;
  • a representation of the trade mark; and
  • the prescribed fee. 

Each application shall be in respect of goods or services in one particular class.

Do I need to do a search of existing Trade Marks?

Yes. This is to avoid infringement of other people’s trade marks. 

How can I exploit my Trade Marks?

You may sell, donate or otherwise transfer your rights to a trade mark through an assignment and reap profits at that juncture. You may also license rights to your trade mark on specific terms.

Do I need to inform the Registrar if I assign my rights to my Trade Mark? 

Either by assignment or transmission, the person entitled to a registered trade mark must register his rights to that trade mark with the Registrar.

Do I need to inform the Registrar if I license my rights to my Trade Mark?

Registration is not mandatory, but it is advisable. A registered licensee will be protected by federal legislation.

Is it possible to have two registered proprietors for two identical/ nearly identical Trade Marks?

Generally, the rights applied for cannot be the same as or similar to rights already granted to another trade mark owner. However, in the event that two or more proprietors unknowingly use an identical trade mark at the same time, it may be allowed.

The Registrar or Court will take the following factors into consideration:

  • The degree of likelihood of confusion
  • The extent, period or area within which there had been concurrent use
  • Whether there had been confusion in facts
  • The degree of hardship of refusing registration, compared with the hardship incurred if it was allowed
  • Public interest

Trade marks that may be Registered

Almost all countries allow the registration of trade marks so as to give the owners federal protection. There is a generally standardised set of criteria for protection eligibility around the world.  Most systems recognise a trade mark as being any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound, scent, or a combination of any of these. In other words, virtually any mark that can serve to distinguish goods or services from those of others is capable of constituting a trade mark

Trade marks that may not be Registered

Not all trade marks may be registered.  For example, marks that are likely to deceive/confuse the public, or those that would be contrary to law, or those that have direct reference to the character or quality of the goods or services are not eligible for registration.  Other marks not eligible for registration are those that

  • contain or consist of a prohibited sign;
  • cannot be represented graphically;
  • are not capable of distinguishing the applicant’s specified goods or services from those of other persons in the trade;
  • contain scandalous matter, or if their use would be contrary to the law, or if they violate public order or morality
  • contain a misleading character and would likely deceive or cause confusion if used in relation to the specified goods or services; and
  • are substantially identical with, or deceptively similar to a pending or registered trade mark in the name of another person, in relation to similar goods or closely related services.
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