Thinking of registering a trademark in Malaysia? Before submitting your application, there are several important matters to consider.

Many business owners only recognise the importance of trademark protection when another party begins using a similar brand name. By that stage, protecting or recovering the brand may become more difficult and costly.

The following seven tips can help you avoid common mistakes when registering a trademark in Malaysia.

1. Choose a Strong Trademark

Not every name, word or logo can be registered as a trademark.

Strong trademarks are usually unique and distinctive. Generic or descriptive words are generally more difficult to register because they merely describe the relevant goods or services.

The more distinctive your trademark is, the easier it will usually be to protect and enforce against others.

2. Conduct a Trademark Search Before Filing

Before incurring the cost of filing an application, it is advisable to conduct a trademark search.

A search can help determine whether another party has already registered or applied to register an identical or similar trademark.

Although a trademark search cannot guarantee that your application will be approved, it can identify potential conflicts and registration risks at an early stage.

3. File Your Trademark Early

Malaysia generally follows a first-to-file system.

This means that the person who files a trademark application first will usually have priority over another party who files a similar trademark later.

Once your business has decided on a brand name or logo, you should consider filing the trademark application as early as possible. Do not wait until the brand becomes well known before seeking protection.

4. Select the Correct Classes

Trademark protection is limited to the goods and services stated in the application.

Selecting the wrong class or providing an incomplete description may leave important parts of your business unprotected, even if the trademark is successfully registered.

You should identify the classes that cover your current business activities and, where appropriate, any planned expansion of the business.

5. Check Whether the Trademark Is Registrable

Not every trademark is legally registrable.

A trademark may be refused if it is descriptive, misleading, offensive, contrary to law or too similar to an earlier trademark.

Reviewing the proposed trademark before filing can reduce the risk of objections, delays and unnecessary costs.

6. Monitor and Protect Your Trademark

Obtaining a trademark registration does not mean that no further action is required.

Trademark owners should continue monitoring new trademark applications and the marketplace for identical or confusingly similar trademarks.

Taking action at an early stage is generally more effective and less costly than addressing an infringement that has continued for a long period.

7. Renew Your Trademark on Time

A trademark registration in Malaysia is valid for 10 years and may be renewed for successive periods of 10 years.

Failure to renew the trademark within the required period may result in its removal from the Register. This may weaken your rights and potentially allow another party to apply for a similar trademark.

It is therefore important to maintain proper renewal records and reminders.

Final Thoughts

A trademark is more than a business name, logo or slogan. It is a valuable commercial asset that protects your brand identity, goodwill and reputation.

Obtaining proper advice before filing a trademark application can help you select an appropriate trademark, identify potential conflicts and reduce unnecessary objections, delays and costs.

Prepared by Sueann Tan

This article is intended for general information only and does not constitute legal advice. It should not be relied upon as a substitute for specific legal advice based on the facts and circumstances of any particular matter. Legal advice should be sought before taking, or refraining from taking, any action in reliance on the contents of this article.

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