What Is Trade Marks?
A Trade Marks is a mark which distinguishes the goods and services of one trader from those of another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these. A Trade Marks is used as a marketing tool to enable customers in recognizing the product of a particular trader.
Functions Of Trade Marks
Origin Function - A trade marks helps to identify the source and those responsible for the products and services sold in the market.
Choice Function - A trade marks enables consumers to choose goods and services with ease while shopping.
Quality Function - Consumers choose a particular trade marks for its known quality.
Marketing Function - Trade Marks play an important role in advertising. Its normal for consumers to make purchases based on continuous influence of advertising.
Economic Function - Established trade mark is a valuable asset. Trade marks may be licensed or franchised.
Law Governing Trade Marks
- Trade Marks Act 1976
- Trade Marks Regulation 1997 (Amendment 2001)
Importance Of Trade Marks Registration
Trade Marks registration provides for:
Exclusive Rights - Registered trade marks owners have exclusive right to use their marks in trading. They also have the rights to take legal action for infringement under the Trade Marks Law against others who use their marks without consent. They can either take civil action or lodge complaints to Enforcement Division for appropriate actions under the Trade Description Act 1972.
Legal Evidence - Registration certificate issued by Registrar Office is a prima facie evidence of trade mark ownership. A certificate of registration serves as an important document to establish the ownership of goods exported to other countries.
Is Trade Marks Registration Compulsory?
In Malaysia, registration of trade marks is not compulsory unlike registration of companies and business. Unregistered trade marks may still obtain protection under Common Law by virtue of use and reputation."Passing off" action against an infringer can still be instituted.
However protection through usage is rather difficult and tedious. The trade marks owner must convince the court, firstly, the infringing act misleads the public, and secondly, the infringing goods and services may be mistaken from this own goods and services.
Are All Trade Marks Registrable?
For registration, trade marks for goods or services must be distinctive and may take the following form:-
- An invented word/words,
- Names of person/firm/company mentioned in a specific manner,
- Applicant's signature
- Words with no direct relation to goods or services, geographical name of surname.
- Any distinctive sign such logos, pictures, symbol etc.
- Not deceptive/confusing, or contrary to law and scandalous/offensive.
- Not identical or similar to earlier registered/application trade marks.
- Not identical or similar to well-known trade mark.
A trade mark is also not registrable if it contains words or representations prohibited under Section 15 Trade Marks Act and Regulations 13, 14 and 15 of Trade Mark Regulation 1997, such as:-
- Patent, Patented, By Royal Letters Patent, Registered, Registered Design and Copyright.
- His Majesty Yang di-Pertuan Agong, Her Majesty Raja Permaisuri Agong, The Royal Highness Sultans and Their Excellencies Yang di-Pertua Negeri.
- Royal or Imperial Crowns, Arms, Crest, Armorial bearings or insignia.
- The Royal Malaysian Army and Royal Malaysia Police.
- Red Crescent, Geneva Cross in red and Swiss Federal Cross in white or silver on red ground.
- Words or representation or ASEAN and National Flower.
Does Malaysian Registration Give Protection Abroad?
No. If protection of trade mark is required in other countries, it will be necessary to apply for registration separately in each countries. However, a Malaysian application can be used as a basis for claiming priority in countries which are party to the Paris Convention and WHO.
Every application will be examined to ensure the registrability of the trade marks. If there is an objection to the trade marks, applicants may submit submission in writing or apply for a hearing. Trade marks accepted for registration will be advertised in the Government Gazette to allow any party to forward their opposition on the registration of the trade mark. If there is no opposition, the mark will be registered and a Registration Certificate will be issued.
Duration Of Registration
Trade marks registration is valid for ten years from the date of application and may be renewed every ten years.
When Registration Can Be Made?
Application for trade marks registration may be made before actual use.