Intellectual Property

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Your idea is not yours until you protect it. Don't let someone else steal your intellectual property.
The Firm conducts searches, offers advice and handles applications for assignment and / or registration in Malaysia and in other countries.

 We also have a close working relationship with members of SIRIM, as well as with trademark / patent agents located overseas. We are also a member of Perbadanan Harta Intelek Malaysia (Myipo).

OUR SERVICES :-
  • Trademark
  • Copyright
  • Patent
  • Industrial design
  • Trade description and labeling requirements
  • E-commerce website disclaimers, notices
WHAT IS A TRADEMARK?

A Trade Mark consists of word, device, numeral, symbols or combination of one or more. A Trade Mark is used to define the goods and services of your trading nature which can distinguish your goods and services from those of others.

TM Stands for “Trade Mark” while SM stands for “Service Mark” The symbol TM can be used for both goods and service while SM can only be used for services.
Trade Mark is governed by Trade Marks Act 1976 and Trade Marks Regulation 1997 (Amendment 2001)

 

TYPES OF TRADE MARKS THAT CANNOT BE REGISTERED
  • Words referring to “Seri Paduka Baginda”, “Yang Di Pertua Negeri”
  • Patent, Patented, By Royal Letters Patent
  • National Flower
  • Representations of, or mottoes of or words referring to, the royal or imperial crowns, or any of the royal, imperial or national flags;
  • Logo and word referring “ASEAN”
  • Words referring to the crests, armorial bearings or insignia of the Malaysian Army, Royal Malaysian Navy, Royal Malaysian Air Force and of the Royal Malaysia Police
  • Red Crescents, Geneva Cross and other representations of the Red Cresent, the Geneva and other crosses in red
  • Swiss Federal Cross in white or silver on a red ground or such presentations in similar colours or colours
  • Scandalous and offensive words (Section 14(b)

 

EXCLUSIVE RIGHTS FOR REGISTERED TRADE MARKS
  • Rights to use the symbol ®
  • Rights to take legal action for infringement of Trade Mark
  • Registered/legal owner of own Trade Mark
  • Has the authority to appoint third party to use the registered mark for business purposes

 

DURATION OF REGISTRATION

Duration for the registered Trade Mark or Service Mark is available for ten (10) years and is renewable every ten (10) years. (Section 32)

 

PROTECTION FOR TRADE MARKS

Protection in Malaysia is only given to the Trade Marks registered in Malaysia. If you seek for protection elsewhere, you will need to apply for registration separately in each country.

GENERAL OVERVIEW

We append hereunder a general overview of the registration procedure for trademark in Malaysia: -

  1. The Registry is open to the public to conduct searches prior to the filing of application for registration on payment of the requisite fees. An unofficial search (which, due to the state of the public records cannot be taken as conclusive) normally takes 1-2 weeks depending on the volume of the trademark applications filed or registered in a particular class;
  2. After filing, the application will have to wait for its turn to be examined by the officers of the Registry of Trademarks. It takes about 2-3 years for applications for the mark to be examined;
  3. If the Registrar does not raise any objections against the application it will then proceed to advertisement in the Government Gazette. However if objections/queries are raised by the Registrar during examination stage submission should be filed to overcome the objection and/or to answer the queries raised, before the mark is allowed to proceed to advertisement;
  4. If the third part opposes the mark during the two month after it is advertised, the mark will be registered whereby the applicant is required to pay the final registration fees; and
  5. The Certificate of Registration will then be issued by the Registrar in about 3-4 months after payment of registration fees.

Can you protect the colours in your trademarks?

Apply the following criteria:

  1. Is the colour functional ?
    e.g use of blue  in frozen products-

    Abrit vs Kraft
    US courts ruled that ‘Royal Blue’ is a cool colour and could not be monopolized . It was suggestive of coldness and used by an array of frozen foods.

    Campbell Soup vs Armour
    Courts held that Campbell could not protect their red as that means some other company could protect say orange. Campbell could not claim rights over half red and half white label.  The red and white of Campbell was different from Armour’s and Armour’s Carnation had a different colour scheme use of red and white.

  2. Is there a secondary meaning attached to the colour of the product?
    Dap’s red bucket for ceramic- US courts held that red was identifiable with the concrete business and was not functional. It was purely used to identify Dap’s brand. 
    Any competitor using red was relying on the secondary meaning that is in existence and exploiting the identity of Dap’s product and thus causing the public to be confused.
  3. Is it descriptive?  Is it general practice of the trade?
    e.g multi coloured candy packaging with stripes

    Life-Savers vs Curtiss Candy Company
    Life Savers could not claim infringement of its striped multi-coloured packaging.  Colour packaging for candy often indicated the flavour.

 

WHAT ARE SOME ELEMENTS IN A FUNCTIONALITY TEST?

  1. The colour’s associations relate to the product in a literal or abstract way.
    E.g green for eco productsAesthetic effect-  attractive combination of colours that are pleasing to the eye
    E.g. green and yellow are harmonious.
  2. Colours which could affect the eye’s perception of size – black objects are smaller then white objects.
  3. Visual effects –e.g optical ilusions  or eye catching or use of text that are legible while others can’t be read easily.  Some colours “pop” out .

 

HOW TO PROTECT YOUR MARK WHEN YOU USE DIFFERENT COLOURS FOR YOUR PRODUCTS

Even if you use the mark in different colours, you may submit the application with a DRAWING IN BLACK AND WHITE as it covers the use of the mark in any colour.

If you wish your customer to associate your product with a specific colour then you may limit your mark to the specific colours and submit a drawing with those colours.  
Such colours must NOT be functional or descriptive.

E.g. green is associated with eco or organic products.  Blue is functional – e.g for frozen foods.

So your colours chosen should not be in normal business practice associated with your goods or services.

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