Trademark

Trade Mark is a sign which distinguishes the goods and services of one trader from those of another, which includes words, logos, pictures, names, letters, numbers or a combination of these. Usually, trade mark is used as a marketing tool to enable customers in recognizing the product of a particular trader. It is governed by Trade Marks Act 1976 and Trade Marks Regulation 1997 in Malaysia.

A registered trade mark’s owner will have exclusive right to use their trade mark in business trading. In accordance to the Trade Mark Law, they will have rights to take legal action for infringement 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.

The Certificate of Trade Mark Registration issued by the Registrar (MyIPO) is a prima facie evidence of ownership of the trade mark and acceptable to the Malaysian Court as valid proof of ownership. A Registered trade mark is a valuable asset that can be traded through licensing and franchising for commercialization.

Malaysian application can be used as a basis for claiming priority in countries which are party to the Paris Convention and World Trade Organization (WTO).

A trade mark registration is valid for 10 (ten) years from the date of application and may be renewed every 10 (ten) years.

Common Misconceptions - Patent

If I get a patent, I have a right to use and sell the product.

A patent excludes others from making, using, or selling the patented product. It does not give you the right to use, make, or sell a product.

What Does This Mean?

You can stop others from making, using, and selling your patented product so that others can be excluded from competing with you.

If I have a patent here it is then protected anywhere in the world.

Patent is only enforceable after it is granted, and only in the jurisdiction where it is granted.

Why?

Patent protection is territorial in nature although Patent filing can be done internationally via international treaties such as Patent Corporation Treaty (PCT) or Paris Convention.

I can always reapply if my patent lapses.

A patent application is only valid if filed before any public disclosure of the invention is made. Any subsequent patent applications can be filed in other countries within 12 months from the filing date. After that 12 months, subsequent patent applications to protect the same invention would be considered invalid because the invention is deemed publicly disclosed.

How Else Can I Protect My Patent?

It depends on that particular national law that allows reinstatement of lapsed patents.

Common Misconceptions - Copyright

I can simply post a copy to myself as proof of copyright.

Your own evidence is not acceptable in Court as it can be faked and the contents be swapped.

What Can I Do?

Ensure proof of copyright meet the respective countries’ law and requirements. For example, execute a Statutory Declaration etc.

Everything on the Internet is ‘public domain’ and free to use

Work published on the internet may be ‘Publicly Accessible’, but it may not mean that the work falls under ‘Public Domain’ category.

How Is It Not Free?

Only copyright that expires with many years after the death of the author will be considered ‘Public Domain’ and entitle you to free use.

I can claim someone’s work as my own if I change it

Any adaptation is legally considered as ‘derived work’ and it will still be considered as their work.

What can Happen?

You may be sued for copyright infringement as it is not your original work but a derivative work from copying or modifying without the owner’s permission.

Common Misconceptions - Trademark

My logo/brand is already mine if it is recognised by everyone.

You do not own the logo/brand by law if you do not register them.

What Can Happen?

You will be sued for using other people’s mark.
You cannot use your own brand anymore.
You are marketing for other people’s brand similar with yours.

I don’t plan to go big. Who would copy ?

If you don’t register, you will never own your own brand.

Who would copy?

Your competitor or rival who likes your logo.
Foreign companies will copy your mark by registering it locally.

My business is still small. There’s no need to register.

Your trademark is actually your asset and your business that can make money.

How?

You can license and franchise your mark only after registration.
You can expand your business only if you have a legitimate brand through registration.

I have already registered my company name and business. No one can use my business name.

Your business brand name will not be protected under Trademark Act even if your company name is registered under Companies Act.

Why?

Other companies can ride on your goodwill and make use of your brand name even though they don’t have company name.

A TM mark on a logo is already good protection and recognition.

TM marks are subject to opposition and not protected fully.

How?

You may lose your mark during opposition.
You only own your mark with the ® logo and
can sue others upon registration.

The logo/brand is already registered overseas, why should I do the same here?

There is no one registration fit to all countries, but only on that country you register.

What can I do?

We can have one international filing and later register separately in several countries for protection.