Trademark – FAQs

A trademark is a sign, such as a word, name, logo, slogan, colour, or combination thereof, that distinguishes the goods or services of one business from those of others. It serves as an indicator of commercial origin, so consumers know who stands behind a product or service.

A trademark protects brand identifiers (names, logos, slogans). Copyright protects original creative works (books, music, art, software code) automatically upon creation. A patent protects inventions and grants the owner exclusive rights to make, use, or sell that invention for a limited period, typically 20 years from the filing date.

Yes. The ™ symbol (or ℠ for services) is an unregistered trademark notice and can be used as soon as you start using the mark in commerce. The ® symbol, however, may only be used after the trademark is officially registered with the relevant national trademark office.

Almost any sign capable of distinguishing goods or services can be trademarked: words, personal names, logos, slogans, colours (in some jurisdictions), sounds, shapes, and even scents. The mark must be distinctive, generic or purely descriptive terms are generally not registrable without proof of acquired distinctiveness.

Yes. The Trademarks Act 2019 expanded the scope of registrable marks to include non-traditional marks such as colours, sounds, scents, holograms, and shapes, provided they are distinctive and capable of graphical representation. Non-traditional applications require careful evidence of distinctiveness and a clear graphical or specimen representation.

The registered proprietor has the exclusive right to use the trademark in relation to the goods or services for which it is registered. The proprietor may also: (1) authorise others to use the mark through a licence; (2) assign the mark to another person or entity; (3) take legal action for infringement against unauthorised use of an identical or confusingly similar mark; and (4) record the mark with Customs to intercept counterfeit imports.

Yes. A registered proprietor may grant exclusive, sole, or non-exclusive licences to third parties to use the mark in relation to specified goods or services. A licence should be in writing, signed by both parties, and recorded with the Registrar to be enforceable against third parties. Proper quality control over the licensee’s use is essential to preserve the validity of the mark.

Yes. A registered trademark is a transferable form of personal property and may be assigned with or without the goodwill of the business. The assignment must be in writing and signed by or on behalf of the assignor. To be enforceable against third parties, the assignment should be recorded with the Registrar of Trade Marks.

To qualify for registration, a mark must satisfy two principal requirements: (1) it must be a ‘sign’ capable of being represented in the register; and (2) it must be capable of distinguishing the goods or services of one trader from those of another. The mark must not fall foul of the absolute or relative grounds for refusal under the Trademarks Act 2019.

A mark will be refused registration on absolute grounds if it: is devoid of any distinctive character; consists exclusively of descriptive signs (kind, quality, quantity, intended purpose, etc.); has become customary in the current language or in the bona fide and established practices of the trade; is contrary to public policy or accepted principles of morality; is of such a nature as to deceive the public; or contains protected emblems, flags, or official signs.

A mark may be refused on relative grounds if it conflicts with an earlier trademark, for example, where it is identical or similar to an earlier registered or well-known mark in relation to identical or similar goods or services, and there exists a likelihood of confusion on the part of the public. The relative grounds protect prior rights holders from later conflicting registrations.

Registration gives you a legal presumption of ownership nationwide (or in the registered territory), the exclusive right to use the mark in connection with your goods/services, the ability to use the ® symbol, a public record deterring others from adopting a confusingly similar mark, and a basis for customs recordal to stop counterfeit imports.

Timelines vary by jurisdiction. In the United States, straightforward applications typically take 8–14 months. In the EU (EUIPO), the process averages around 4–7 months when there are no oppositions. Complex applications, office actions, or opposition proceedings can add months or years.

In most countries, an initial registration lasts 10 years and can be renewed indefinitely in 10-year increments, provided renewal fees are paid and the mark remains in use. Trademarks are therefore potentially perpetual, unlike patents or copyrights.

Trademarks are registered in classes of goods and services under the Nice Classification system, which has 45 classes (1–34 goods, 35–45 services). You must specify the class(es) relevant to your business. Each class typically incurs a separate fee, so registering in multiple classes increases cost.

Registration is handled by the Intellectual Property Corporation of Malaysia (MyIPO). The general process is: (1) conduct a clearance search; (2) file the application specifying the mark, the applicant, and the goods or services under the Nice Classification; (3) the application is examined for compliance with formal and substantive requirements; (4) if accepted, the application is published in the IP Official Journal for two months for opposition; (5) if unopposed or opposition is overcome, the mark proceeds to registration.

A clearance search identifies any earlier identical or confusingly similar marks already on the register or in pending applications. Filing without a search exposes you to (1) refusal by the Registrar on relative grounds; (2) opposition by an earlier rights holder; and (3) infringement risk if you launch your brand on the strength of an unsearchable mark. Investing in a professional search at the outset is significantly cheaper than dealing with a refusal or infringement action later.

It is generally advisable to file them separately. A wordmark protects the name regardless of styling, while a logo mark protects the specific visual design. Filing them separately gives broader and more flexible protection, since either element can be re-styled or evolved without weakening the registered scope of the other.

MyIPO will issue an examination report citing the grounds, such as descriptiveness, non-distinctiveness, or conflict with an earlier mark. You will be given a period to respond with written submissions, evidence of use, or amendments. If the objection is maintained, you may request an ex-parte hearing or escalate to the High Court. Engaging an IP agent at this stage significantly improves the prospects of overcoming the objection — see our registration flowchart for the full route.

Likelihood of confusion is the primary test for trademark infringement. It asks whether an average consumer would be confused about the source or affiliation of goods/services when encountering two marks. Factors include the similarity of the marks in appearance, sound, and meaning; the relatedness of the goods/services; and the channels of trade.

No. Trademark rights are territorial. A registration in one country does not grant rights in another country. To protect your mark in multiple countries, you must file separately in each jurisdiction or use international systems such as the Madrid Protocol (administered by WIPO) to file in multiple member countries from a single application.

Distinctiveness is the ability of a mark to identify and distinguish the source of goods/services. Marks are classified on a spectrum: fanciful (invented words like KODAK, strongest), arbitrary (real words applied in an unrelated context like APPLE for computers), suggestive, descriptive (weaker, often not registrable without secondary meaning), and generic (not registrable at all).

A well-known trademark is one recognised by the relevant sector of the public as belonging to a specific proprietor. Well-known marks enjoy enhanced protection under the Trademarks Act 2019 and the Paris Convention, including protection against use of identical or similar marks in relation to dissimilar goods or services where such use would indicate a connection with the well-known mark proprietor or damage their interests, even if the mark is not registered locally.

Yes. A registered trademark is vulnerable to revocation if it has not been put to genuine use in Malaysia in relation to the registered goods or services for a continuous period of three years from the date of registration, without proper reasons for non-use. Token or sporadic use will generally not be sufficient, genuine commercial use is required.

The Madrid Protocol is an international treaty allowing trademark owners to file a single ‘international application’ through their home trademark office, designating any of 116+ member countries covering 132+ countries. WIPO administers the system. While it simplifies filing logistics and can reduce costs for multi-country filings, each designated country still examines the mark under its own national law.

An EU Trade Mark (EUTM) filed with the European Union Intellectual Property Office (EUIPO) covers all 27 EU member states with a single registration. It is cost-effective for businesses operating across the EU. However, a successful opposition or cancellation based on rights in one member state can invalidate the entire EUTM.

First, document the infringement. Then consider sending a cease-and-desist letter, often the fastest resolution. If the infringement continues, you may pursue civil litigation seeking an injunction and damages. For online infringement, platforms like Amazon, eBay, Meta, and Google offer brand protection programs. Consult a trademark attorney to assess the strength of your position and the most cost-effective response.

Yes. A trademark can be cancelled or become unenforceable if: (1) you abandon it by stopping use without intent to resume; (2) it becomes generic (e.g., ‘escalator’ and ‘aspirin’ were once trademarks); (3) it is not renewed; or (4) it is successfully challenged as registered in bad faith or as deceptively similar to a prior mark.

Dilution applies to famous marks and protects against uses that blur the distinctiveness of the mark or tarnish its reputation, even when there is no likelihood of consumer confusion. Famous-mark owners can pursue dilution claims against uses in unrelated industries that weaken the unique association consumers have with the mark.

Infringement occurs when a person, without the proprietor’s consent, uses in the course of trade a sign that is: (1) identical to the registered mark in relation to identical goods or services; (2) identical or similar to the registered mark in relation to identical or similar goods or services, where there exists a likelihood of confusion on the part of the public; or (3) identical or similar to a well-known mark in relation to any goods or services, where such use takes unfair advantage of or is detrimental to the distinctive character or repute of the mark.

Available civil remedies include: injunctions (interim and permanent) to restrain further infringement; damages or an account of profits; delivery up or destruction of infringing goods, packaging and materials; and costs of proceedings. Criminal sanctions are available for counterfeit goods under the Trade Descriptions Act 2011, and infringing imports may be seized by Customs upon recordal of the mark.