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