A trademark is a word, design, sound or symbol an entrepreneur could use to distinguish his or her business from other competitors in the marketplace. To trademark a company name or tagline is common practice for entrepreneurs and this practice is for good reason: trademark registration prevents third parties from exploiting your unique mark for their own benefit.
As a trademark owner, you will have exclusive rights to your mark which entitles you to taking legal action against intellectual property infringement by third parties. However, as registration notice issued by the Registrar is conclusive evidence of trademark ownership in the court of law, you must register your trademark with MyIPO for local trademark protection, and through the Madrid System, or multiple individual applications in each country to gain international trademark protection.
Five Important Trademark Considerations For Entrepreneurs
1. Registering your business is not the same as registering your trademark.
A common belief held by entrepreneurs lies in the thought that the registration of a business, particularly in Malaysia with the Companies Commission of Malaysia (SSM), equates to the registration of their company name, or similar, as a trademark. This is false, as the registration of a business does not entitle the entrepreneur to full legal rights to his or her company name. As stated before, registration notice issued by the Registrar is absolutely necessary for certification of trademark ownership. Therefore, simply setting up a business, or registering your business with SSM alone, will not grant you any trademark rights to your company name, tagline or logo. It is essential to register your trademark with MyIPO to gain these rights.
2. Your trademark application can be refused based on the name of your business.
Not all trademark applications are approved or run smoothly. On many occasions, trademark application made by an entrepreneur has been refused, which leads to a complicated application process, or the applicant may drop their application entirely.
Entrepreneurs must recognize that the name of your business matters when it comes to trademark registration. Some reasons for refusal are:
- Similarly confusing marks. The proposed mark has strong similarities to a mark already registered in the Trademark Office
- Simple, generic, ‘common’ marks. The proposed mark is merely descriptive, or primarily geographically descriptive, or is merely a surname, or as a whole is functional.
- Morally subversive marks. The proposed mark has the association of immoral or scandalous qualities.
3. Naming your business? Conduct a trademark search beforehand.
To prevent the laborious and costly process of changing your company name and rebranding your business, entrepreneurs ought to conduct a trademark search before naming their business to avoid potential trademark infringements. Furthermore, trademark litigation is an expensive operation, undertaken at the expense of the time and money of both parties involved.
Avoiding such a trouble is simple. Trademark agents conduct trademark searches as a part of the trademark registration process. It is also an option to conduct a trademark search yourself to ensure you are not infringing the trademark of another business, however, a professional trademark search is strongly recommended to avoid any potential trademark conflict as there may be gaps in the entrepreneurs knowledge in conducting a thorough trademark search.
4. Trademark Classification is important.
Malaysia adopts the 10th edition of the Nice Classification of Goods and Services. Trademark classification is crucial as choosing a classification will determine the class of goods and/or services your trademark will protect upon registration. This means your trademark will only protect the goods, service and class you have chosen in your application and in that vein, it is vital to choose the correct classification as this choice cannot be amended at a later date post-registration.
Therefore, it is recommended to consult with a trademark agent to determine the accurate trademark classification for your goods and/or service as choosing the correct class can be complicated for the entrepreneur.
To learn more about the 45 classes of goods and services, please refer to our page for more information.
5. Entrepreneurs must actively enforce their trademarks.
It is a misconception that the body of which entrepreneurs register their trademarks with actively oversees registered trademarks to potential issues such as trademark infringements. This is not the case, as entrepreneurs must actively enforce and protect their trademarks, registered or unregistered. The organisation, particularly MyIPO in Malaysia, does not monitor nor maintain trademarks, as their sole responsibility is trademark registration.
There are several steps entrepreneurs can take to maximize the protection of their trademarks. These actions may include trademark monitoring on marks that may or may not infringe upon your mark, the use of trademark symbols ® and ™ to represent registered and unregistered marks respectively and maintaining their trademark portfolio consistently. Trademark agents can, and often do, assist entrepreneurs with matters relating to monitoring, maintaining and enforcing trademarks.
Trademarks protect your company and brand if and only if you take first and immediate measures to protect your mark. The primary step to such a protection is to register your trademark.
Quality Oracle has 28 years of experience in trademark registration. Our team guarantees a professional, streamlined and efficient trademark application and registration process. Get in touch to discuss how we can help you and your business thrive by protecting your trademark today.