Category: Malaysia

Posted on

Word Mark vs. Combination Trademark: Which is Better for Your Brand?

The choice of registering for a word or combination trademark is usually depends on your business goals. Both types of trademarks have pros and cons, and your choice will depend on your branding strategy and the products or services you offer.

A word mark is a brand that consists solely of words or letters, and without any design or logo. It is also known as a standard character trademark. A word mark provides broader protection and it prevents others from using the same word or any similar-sounding words in connection with products or services.

A combination trademark, on the other hand, is a trademark that contains both a word element and a design or logo element. This type of trademark is more visually appealing and is easier for consumers to recognize it and distinguish it from the products or services of another. However, a combination trademark does not provide flexibility because it must be used exactly as registered. If you intend to use the trademark in a flexible way, it is advisable to register the word mark and logo mark separately.

Trademark Application

Posted on

Myanmar New Trademark Law

Myanmar New Trademark Law is officially implemented.

Soft opening for trademark re-filing under the new law system is now starting in Myanmar. During the soft opening period (starting from October 1, 2020 until March 21, 2021 ), the Myanmar trademark office will only accept trademark applications that were already registered under the Myanmar old trademark filing system.

It is necessary for all existing trademark holders to re-register their trademark in Myanmar under the new trademark law to retain their protection under the new system. All existing trademark holders who have registered their rights under Myanmar’s old trademark system can re-file the new application starting from October 1, 2020.

Requirement of re-filing of trademarks:

To re-register the rights to a trademark under the new system, the following will be required:

  • A clear specimen of the trademark (in jpg format);
  • Trademark owner’s name and address;
  • Classes and list of goods or services shall be described in accordance with the Nice Classification (must be the same with those already recorded in the Declaration of Ownership. Any additional expansion of classification of goods or services will not be considered);
  • Description of color claims of the mark (if any); and
  • Translation and transliteration (if the trademark is not written in English or Myanmar language);
  • Declaration(s) of ownership as recorded with the Deeds and Documents Registration Office.

It is also possible to file an unregistered trademark that is already in use in the Market in Myanmar during the soft opening period with the evidence of use in Myanmar. Such evidence of use may include:

  • Published Trademark Cautionary Notice;
  • Actual use evidences on the market in the Union;
  • Proof of advertisement in a marketing or sales promotion context;
  • Tax receipt or other receipt for expenses;
  • Any other appropriate evidence.

The Official filing fees have yet to be announced in the soft opening period, and it will be announced before the grand opening period begins, and if the applicant re-files their trademark before the new fee is announced, they will be required to settle this fee at a later stage.

The trademark rights under the Myanmar new trademark registration system will generally be granted on the “ first-to-file basis.”. So ACT FAST and retain your trademark rights.

If you have an existing trademark registration in Myanmar and wish to re-file the trademark under the new system, please contact us for a special package for the re-filing of your trademarks.

Posted on

Why do you need to conduct a Trademark Search

trademark search

A trademark search is not required to register a trademark. However, it is recommended to conduct a search in order to understand if someone else has already registered the same or similar trademark.

Without conducting a trademark search, you run the risk of infringing on someone else’s trademark. Not only your application be rejected by the Trademark Registry, but it could also cost you thousands of dollars to defend your trademark if you are sued by a trademark owner for using their trademark. And eventually, you might be required to change your trademark.

Well think about it, with the amount of work, time, and money that’s been spent on creating and building your valuable brand, conducting research before using or applying a trademark is an ideal step for success.

Posted on

International Trademark Registration

If you are thinking about protecting your trademark in many foreign countries, then you may consider filing an international trademark registration via the Madrid System.

The Madrid System allows trademark owners in member countries to register their trademarks in multiple countries by filing a single application with its national trademark office.

international trademark registration
how to register an international trademark registration

An international application has to be filed with the International Bureau through the Office of origin.  It is necessary to have an application or a registration of the same trademark in the Office of origin.  The fees for international trademark registration depend on the contracting parties designated; the number of classes of goods and services; and whether the mark is produced in black and white or colors.

What are the advantages of filing an international registration compared to national registration?

Simplified filing system:  Through Madrid System, trademark registration can be simpler and cheaper than filing a separate national application in each country. It would be easier to manage the trademark renewal and modify or designate additional countries through one centralized system.

Cost-effective :  The cost for filing various national trademarks may be higher as compared to an international registration where one application may designate multiple countries with one set of fees.

Nonetheless, there are some drawbacks of an International Registration, and applicants should be carefully considered before filing an international registration.

For the first 5 years from the date of its registration, an international registration remains dependent on the basic national trademark on which it is based. This means if the basic mark is withdrawn, canceled, or invalidated, the International Registration will be canceled automatically, and will no longer be protected. If any 3rd party wishes to object to your international trademarks, they can oppose or invalidate your basic national trademark. This is called a central attack.

So, depending on which and how many countries you wish to protect your trademark, if you only designate one or two countries, it may be cheaper and easier to file national trademark applications.

Posted on

What classes do you want to register your trademark

What classes do you want to register your trademark?

Trademark Classes – How to classify?

For purpose of trademark registration, goods, and services are organized in the prescribed manner according to specific categories or classes. If you wish to register a trademark, you will be required to state the exact class number and appropriate specification of goods or services according to the Nice Classification. There are a total of 45 trademark classes and it’s divided between goods and services. Class 1 to 34 refers to goods, while class 35 to 45 refers to services.

Trademark Classes , Trademark MalaysiaHow to Choose a Proper Class to Register your Trademark ?

Choosing an appropriate classification is important when applying for trademark registration. As trademark registration is granted to goods or services you claimed in your application and not all goods or services. You must pick at least one class when applying for registration of a trademark. It is possible to list as many classes as you want. But each trademark application fee is based on the number of classes being applied for. So if your trademark application has more classes, you will be required to pay more in official fees. For instance, if you are only selling clothing, you should choose class 25 for “clothing”. But if you are a retailer selling the goods of others, then you should file your application in class 35 for retail services instead of class 25. Well, if you sell clothing, cosmetics, and sunglasses, those goods fall under three different classes. Cosmetic is class 3, clothing is class 25 and sunglasses is class 9. In this case, you may have to register for all three different classes to protect your trademark.

Trademark Classes
 Class 1

Chemicals used in industry, science and photography, as well as in    agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

Class 8

Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12

Vehicles; apparatus for locomotion by land, air or water.

Class 13

Firearms; ammunition and projectiles; explosives; fireworks.

Class 14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 15

Musical instruments.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 19

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21

Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23

Yarns and threads, for textile use.

Class 24

Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25

Clothing, footwear, headgear.

Class 26

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 31

Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

Class 32

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33

Alcoholic beverages (except beers).

Class 34

Tobacco; smokers’ articles; matches.

Class 35

Advertising; business management; business administration; office functions.

Class 36

Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37

Building construction; repair; installation services.

Class 38

Telecommunications.

Class 39

Transport; packaging and storage of goods; travel arrangement.

Class 40

Treatment of materials.

Class 41

Education; providing of training; entertainment; sporting and cultural activities.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43

Services for providing food and drink; temporary accommodation.

Class 44

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

 
Posted on

What factors should you consider when choosing a brand?

what facts should you consider when choosing a brand

Choosing a brand name is an important step to a successful business. This is probably something that has caused you a lot of headaches. Not only you should choose a name that is different from your competitors but also needs to ensure it is a name that is protectable under trademark law. So, what factors should you consider when choosing a brand? When it comes to choosing a trademark, most people like to choose a brand name that is merely descriptive of their goods or services or even generic words. While these words may help the public to identify your products or services but they may not be protectable according to the trademark law. Imagine if you have spent so much time thinking, researching, and designing the brand and only realized that the brand chosen was not registrable, you

Here are 3 common mistakes you should avoid when choosing a brand:

1. Don’t choose a generic word
A generic word is a common name for a product or service. Generic marks may not be registered under trademark law. For example, the word “tobacco” cannot be a trademark for a cigarette because it is a common word for the type of product that anyone can use.

2. Don’t choose a descriptive word
Any words that describe the qualities, features, or characteristics of a product or service are not inherently distinctive. And therefore, it is difficult to register unless the mark has acquired distinctiveness through secondary meaning. For example, sweet for candy.

3. Don’t choose a word that is confusingly similar to another registered trademark
It is important to find out if there are any potentially conflicting trademarks in your marketplace before you apply to register your trademark. The Registry will reject your application if you are registering a trademark that is confusingly similar to another trademark. You might need to change a new brand if the Registry refuses to register your trademark because it is too similar to another registered trademark. At the end of the day, you may have to spend more to overcome the objection. We highly recommend you conduct a trademark search before applying this could help you to minimize the risk of infringement.

So how can you choose a name or a brand that is protectable ?

Here are 3 tips to consider:

1. Fanciful mark
A fanciful word is a word that has been invented and has no dictionary meaning other than just a mark. For example, KODAK for cameras, this type of mark is distinctive and easy to register.

2. Arbitrary mark
A word that has a dictionary meaning, but the meaning has no relation to the goods or services with which the mark is used. A good example of an arbitrary mark is APPLE for computers.

3. Suggestive mark
A mark that suggests, but does not describe the quality or characteristic of the goods and services. A suggestive mark is inherently distinctive and can be registered as it requires imagination, thought, and perception to conclude the exact nature of the goods. An example of a suggestive mark is COPPERTONE for suntan lotions.