What are registrable trademarks?


Registrable trademarks are any distinctive signs such as words, letters, numerals, drawings, pictures, shapes, colours, logo, labels or combinations thereof and even taglines or slogans. Non-traditional forms of trademarks such as sound, smell etc. may be registrable if it visually perceptible or can be represented graphically.


Does a Malaysian trade mark registration have international protection?

 

No. A Malaysian trade mark registration is effective only in  Malaysia. To seek protection in other countries, separate applications will have to be filed in those countries or via the Madrid Protocol System. There is no such thing as a single worldwide registration which covers all the countries in the world. 

 

I already have a registered business/company name or domain name, doesn't that mean I can automatically have it registered as a trade mark as well?

 

Registering a trade name as a business name, company name or domain name does not mean that you can automatically obtain registration of the trade name as a trade mark. This is a common misconception. You will still need to register your trade name as a trademark. A trade name is the full name of your business e.g. Goodmark Sdn Bhd or Goodmark Inc. A trademark on the other hand, is a a distinctive sign that distinguishes the goods or services of your company from that of another.


What is the difference between a trade mark and service mark?

 

A trade mark is used for goods or products whilst a service mark is used for services. The term "trade mark" commonly applies to both trade and service mark.

 

Should I apply my trade mark in colour or black and white?

 

Application in black and white covers all colours. Application in colour is limited to the colour(s) applied for. Thus, it is better to apply in black and white unless your mark is distinctively coloured and you want to additionally protect it in those distinctive colours.

 

What are classification of goods and services?


Goods and services are classified according to the NICE Classification of Goods & Services.The Nice Classification is created based on the Nice Agreement Concerning the International Classification of Goods and Services signed in 1957. The Nice Classification consists of a classification of goods and services which are required to be included in official and publication documents for the purposes of registering trade marks and services marks in member countries. The Nice Classification has 34 classes of goods and 11 classes of services and enables efficient filing of applications with a single classification system adopted and applied in the same way by all member countries. Non-member countries are also using the Nice Classification.

 

Is multi-class application available in  Malaysia?

 

No. It is necessary to file separate applications for each classification of goods or services.

 

Who can apply for a trade mark registration?


Only the owner of the trade mark whether individual or company can apply to register his trade mark. He may appoint a registered trade mark agent to make the application on his behalf. Where an applicant's ordinary residence or principal place of business is outside Malaysia, the applicant needs to appoint a registered trade mark agent to make the application on his behalf.

 

Must a trade mark be used prior to or after registration?

 

A trade mark need not be used prior to applying for registration. However a trade mark which has been registered must be used for a continuous period of 3 years. If not, an aggrieved party may file expungement proceedings in court to remove the mark from the Register for non-use.

 

Must an assignment of trade mark be with goodwill?


A registered mark may be assigned with or without goodwill of the business associated with the mark. However, an assignment of a pending application must be with the goodwill.

 

Please note that the information contained herein is for general information purposes only and not intended to be legal advice. If you have any specific questions, please contact us. We will be happy to assist you in any way we can.