Trademark infringement

“Infringement may occur when one party, 

the infringer, uses a trademark which is 

identical or confusingly similar to a 

trademark owned by another party”

One of the main functions of a trademark is to prevent consumer confusion. For example, a consumer knows that he or she can get the same quality food in a McDonalds in Malaysia as he or she can from a McDonalds in Singapore. Trademark law is designed to prevent competitors from confusing customers into thinking that they are buying products or services from a well-known and trusted source, when in reality, this is not the case.

Infringement of your Trademark is a violation of the exclusive rights attached to your trademark. However, the infringement only applies when there is no permission given by the trademark owner or any of its licensees. Infringement may occur when one party, the infringer, uses a trademark which is identical or confusingly similar to a trademark owned by another party. This only applies if the trademark is in relation to products or services which are identical or similar to the products or services which the registration covers and in the same classification of goods.

“If you have not registered

your trademark, you have no right

to proceed with infringement proceedings.”

When the marks, products or services are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner. The violation based on likelihood of confusion arises when two trademarks are exactly alike or so strikingly similar that the consumer can’t see the difference. The main reason behind such confusion is that firms are usually dealing with ordinary customers with imperfect memory of goods that they find in the market. In such a case, a trademark infringement can cause commercial damage to the firm that owns the genuine trademark.

Trademark protection to certain words or logos does not only make sure that the customers are not confused by fake products but also allow the trademark owner to take legal action against fraudulent persons or companies.

If you have not registered you trademark, you have no right to proceed with infringement proceedings. In view of the above, we at Eurogain wishes to emphasise the importance of registering your trademark.

For any questions about Trademark and infringement please do not hesitate to contact us:

                                                                        

EUROGAIN Group

Call: 603-9100 1050

Email:  info@eurogain.com.my

Contact: Kevin Kiew, Dennis De Witt or Felicia Lee

How to register a trademark?

Last week Eurogain explained the importance of good trademark.  So what if you are aware of the importance and you want to register your trademark? How do you start?

There are five steps for the registration of a trademark. The steps are as follows:

·         The availability search

·         The application

·         The examination process

·         Publication for opposition

·         Issuance of registration certificate

The availability search

When you want to register a trademark, the first step in the trademark registration process is to determine if there are other parties using a trademark similar to yours. A trademark is only registerable if it is not similar in the eye to another trademark; also your trademark should be distinctive. The search will tell you whether your selected mark is available or if it potentially infringes a third party’s mark. The search will also tell you your chances of successfully registering your selected mark.

The application

After your trademark search is completed, you are ready for the application. Trademark registration application provides you with the broadest possible protection. When applying, you will need to report the exact name of the individual, corporation or other entity that owns the trademark, the date when it was first used and the nature of goods or services sold under the trademark.

The examination process

Assuming the application is properly prepared, the MyIPO (Intellectual Property Corporation of Malaysia) will assign a filling date as of the date the application received. The examiner at the MyIPO will review the application and determine whether the mark may be registered.

The examiner may refuse to register the trademark for a number of reasons; if there is a likelihood of confusion between the applicant’s mark and a registered mark, marks which are merely descriptive in relation to the applicant’s good or services or marks consisting of geographic terms.

Publication for opposition

If there are no objections or after all objections are overcome, the Examiner will approve the mark for publication in the Official Gazette. When the mark is published in the Official Gazette, any party who believes it may damage their trade reputation may file an opposition to the said registration. If there is no opposition, the application enters the next stage.

Issuance of registration certificate

The MyIPO will register the mark and issue a registration certificate in about 3 months after the mark was published.  The period of protection is for 10 years, renewable for a period of every 10 years thereafter.

The above process can be somewhat complicated and time consuming. Therefore, this is one of the reasons why you should consider having a professional to handle your trademark registration. For more information contact us at:

EUROGAIN Group

Call: 603-9100 1050

Email:  info@eurogain.com.my

Contact: Kevin Kiew, Dennis De Witt or Felicia Lee

The importance of good trademark

Imagine you have recently formed a company and through all your hard work and contacts, you have eventually managed to not only make it profitable, but also developed a good reputation with your customers. However, because you were so busy in developing your business, you have forgotten to register your company’s logo as a trademark.

Somebody else notices the success of you new company brand and he start his own company offering the same service. Your competitor designs his corporate logo that looks very similar to yours and he begins to contact your customers with the intention of using your reputation to convince your customers to deal with him. Unfortunately, because your trademark is not protected, you receive no legal protection from such unscrupulous competitors.

The above illustrates only one of the many cases on why it is so important for businesses to remember to register their company’s trademark.

The other important thing that business owners need to know is what actually makes a “good” trademark.

Trademarks are symbols, designs or any form of identification that helps people recognize a brand or a product. A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment.

The possibilities to register a trademark are almost limitless. A trademark may be one or a combination of words, letters and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, colors or audible signs as music or even vocal sounds.

A good trademark is registrable, which means that the name or logo is not yet taken. It is not similar in the eye to another trademark and it should be distinctive. A well-known brand name can be very valuable to a company. Therefore, a trademark is eventually considered as part of an intangible asset of the company.

If you are still not convinced of the importance of registering your trademark, just think of this - if trademarks did not matter, then mega brands such Coca Cola, Nike, Facebook and Apple would not bother to register their trademarks. As a result, there would be rampant misrepresentation and the consumers would never know if they are ensured of the quality when purchasing their products.

Registration of your trademark ensure for the legal protection and exclusiveness of your company’s brand name. Unlike other forms of Intellectual Property, the protection received for trademarks is perpetual in nature. This means there is no end to the legal protection that the owner will enjoy.

The cost of registering a trademark is very small, especially compared to the risks of losing protection of your products and serves to one of your potential competitors. Therefore, we strongly advise all business owners to register your company’s logo or brand name so as to obtain full protection for it.

If you or any of your associates need any advice on trademark registration, please do not hesitate to contact us at:

EUROGAIN Group

Call: 603-9100 1050

Email:  info@eurogain.com.my

Contact: Kevin Kiew, Dennis De Witt or Felicia Lee

Eurogain Consulting Group,  2011, all rights reserved
 copyright © 

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