Business owners would usually begin by creating a logo, slogan, or certain design to represent the identity of their business before starting the business. These logos, slogans, and designs are in fact a form of intellectual property known as a Trademark.
In Malaysia, trademarks are governed under the Trademarks Act 2019, where Section 16 of the Act provides that a trademark will only belong exclusively to one party once it has been lawfully registered.
What is a Trademark?
Based on Section 3(1) of the Trademarks Act 2019, a trademark is defined as:
“...any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”
A “sign” may consist of letters, logos, words, colours, numbers, sequences, or any combination capable of representing the identity of a business.
For example, a company selling products under the name “ABC” and using a unique book-shaped logo for those products may have two trademarks capable of protection, namely the trademark over the name “ABC” and the trademark over the book-shaped logo itself.
How to protect your business Trademark?
In Malaysia, trademarks are required to be registered with Intellectual Property Corporation of Malaysia (MyIPO) in order to establish ownership over the trademark. Section 16 of the Trademarks Act 2019 stipulates that a trademark will only be recognised as the exclusive property of one party once it has been validly registered.
The trademark registration process may appear straightforward but there are several important aspects that should be considered before filing any application. These include;
a) whether the trademark fulfils the legal requirements under the Act;
b) the appropriate classes to be applied for; and
c) the potential risks of objections or refusal by MyIPO.
As such, the registration process can be handled more effectively and smoothly with proper legal guidance and experience.
We, Azreen Azmi & Associates, have extensive experience assisting various types of businesses in trademark registration matters. We provide preliminary advice on the registrability of trademarks based on our experience, assist in managing the registration process with MyIPO, and consistently provide prompt and clear updates for our clients’ reference and convenience.
We are also experienced in handling overseas trademark registration matters, including local trademark registrations in countries such as Brunei, Indonesia, Thailand and Singapurato help businesses protect their brands in foreign markets.
Why is registering a Trademark important?
Once a trademark has been successfully registered, the trademark owner will receive a Certificate of Registration as proof of exclusive ownership over the trademark. Registration not only provides legal recognition but also grants the owner the right to prevent other parties from using identical or confusingly similar trademarks.
We advise that registering a trademark at an early stage is crucial to avoid future disputes as, based on legal precedent, the Court will generally recognise the party who first registered the trademark as having stronger legal rights.
This can be seen in the case of Tanti Rahayu bt Abdul Halim & Anor v Nurhayati Hashima bt Muhammad (trading as Flexi Biz Enterprise) & Ors [2024] MLJU 1451, where both the Plaintiffs and the Defendants were registered proprietors of highly similar “Tati” logos. After examining the differences between the logos and considering several legal principles, including the factor of prior use of the brand and logo, the Court allowed the Plaintiffs’ claims. The Court declared that the Defendant’s trademark registration had been obtained through fraud and misrepresentation and had been wrongfully registered without sufficient cause. As a result, the trademark was ordered to be removed from the Malaysian Register of Trademarks.
Conclusion
Trademark registration grants exclusive rights to the registered proprietor to use the trademark and to prevent other parties from using identical or confusingly similar marks without consent. However, it is also important to note that even where a trademark has been successfully registered, the Court still retains the power under Section 47 of the Trademarks Act 2019 to declare such registration invalid if the trademark is found not to fulfil the legal requirements and elements prescribed under the law.
Therefore, it is advised that conducting proper preliminary assessment before filing a trademark application is essential in reducing the risk of objections, disputes, or cancellation of the registration in the future for more secure protection of the brand in the long term.