“Do I need to register a trademark for my business??”
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“Would it be troublesome to register a trademark?? What would be the benefits if I register my trademark??”
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The above are the questions frequently asked by our clients in relation to trademark registration.
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Generally, we would advise our clients to register their trademarks in the following situations:-
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A) When our client has been continuously using the same trademark for more than 3 years
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B) When our client is manufacturer and the products manufactured are well known in the local market
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C) When our client has been appointed by a foreign entity as its exclusive distributor/ agent in Malaysia（*the trademark registration must be done with the prior consent of the foreign company）
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So, what are the benefits of registering a trademark?
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First, this can help to add additional commercial value to the brand name itself.
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According to Section 48 of the Trademarks Act 2019, a registered owner is entitled to transfer his rights in his trademark by way of license or assignment.
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Further, pursuant to Section 16 of the Trademarks Act 2019, a registered trademark shall be a property right obtained by way of registration.
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Therefore, it is extremely beneficial for an owner to register his own trademark because under the new trademarks act, the registered owner can legally sell or license his trademark to any interested third party. Further to that, the registered owner can also pass his trademark to his descendant by way of will. This definitely provides some flexibility and adds commercial values to the trademark itself.
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Second，registration can prevent the others from ‘stealing’ the trademark
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This is because according to Section 52 of the Trademarks Act 2019 , in all legal proceedings relating to a registered trademark, the Register shall be prima facie evidence of anything contained in the Register.
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Hence, the benefit of earlier registration is to prevent a third party from stealing the trademark.
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If a third party has registered the trademark earlier than the actual owner, then the actual owner may be prohibited by the third party to use the trademark or even have to spend money to buy over the trademark. The worst case scenario would be to spend substantial time and costs to challenge the validity of the registration in the Court.
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Third，a registered owner can further register his trademark in other countries through Madrid System
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Following Malaysia becoming the 106th member of the Madrid Protocol System on 27.9.2019, any person who has registered his trademark in Malaysia or who has filed the pending application can now through The Intellectual Property Corporation of Malaysia further register his trademark in other member countries.
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This increases the convenience for business expansion as the trademark owners in Malaysia now would not need to appoint a foreign trademark agent to register their trademarks for foreign markets. The relevant trademark application now can be filed at The Intellectual Property Corporation of Malaysia (MyIPO) as ‘the office of origin’.
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Would it be troublesome to register a trademark？
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Basically, after several years of reforms. The entire process of trademark registration has become relatively simple and the whole process can now be settled through an online filing system managed by MYIPO.
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However, it is still recommended for anyone who is interested to register a trademark to engage a validly registered trademark agent so as to get a proper analysis as to whether the trademark has complied with all the legal requirements for registration in Malaysia.
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This is because if the application is subsequently rejected by the Registry, there is no refund for any application fees spent.
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These are some information regarding trademark registration that we would want to share with you today. If you have any inquiries about it, please do contact us:：https://wa.link/q3kmv5
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For other FAQ in relation to trademark registration, you can read our article.
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