The Do’s and Don’ts in Trademark

    Registering your Trademark is the first step toward legally protecting your brand, but it requires you to proactively use it and defend your Trademark in order to enforce your Trademark protection from infringement.

    However, before you proceed with a Trademark application, make sure you are in the know about what is necessary and what should be avoided. It can save you so much time in getting your Trademark to be registered in accordance with the right procedure.

    The following Do’s and Don’ts will help you to do so!

    Do’s

    • Select the right classifications

    Selecting the right classification in accordance with your business field and properly filing all the forms and documents can be tedious. There can be a lot of areas where you may have messed up if you’re not attentive. Holding a registration in the wrong classification may only be discovered when your application is challenged in court by a third party.

    • Choose the strongest mark

    Avoid combined marks. They seem great as you get your word and logo protected in a single application. The protection of combined marks is often very weak and when you change your logo, the combined mark automatically expires. Go for a wordmark. Wordmark offers the highest level of protection as it deters others from using the word, regardless of how it’s written or styled.

    • Keep your Trademark alive

    Treat your Trademark renewal date as important as your wedding anniversary. As long as you continue renewing your trademark every 10 years, it will be with you forever. However, if you missed the grace period of 6 months, your trademark shall be deemed removed. The last thing you can do is request restoration which will then incur additional costs. An unused Trademark for a period of 3 years can be cancelled by any third party on the ground of non-use.

    • Keep tabs on new Trademark filings

    Although you already did a clearance search, don’t stop there. Keep monitoring new Trademark filings and lodge an opposition if any suspicious Trademark potentially infringes yours.  Refer to our IP advisor to assist you in conducting the monitoring and determining the next IP strategies.

    Don’ts

    • Do not delay

    It is essential for people to understand that trademark registration is a first-come, first-serve sort of situation. When you spent for your marketing, you definitely hope it elevates your brand because who doesn’t. This means that you don’t want to risk your famous logos and other IP assets publicly until you have your registration approved.

    Nevertheless, the Malaysia Common Law observe ‘the first-to-use’ policy, where a non-registered Trademark that has been used earlier than the filed mark, has better rights against the newly filed mark. However, it is cost and time consuming to raise such legal action and acquired the Trademark rights back.

    • But don’t rush

    Never rush to register for Trademark protection if you have never conducted diligent research into your name, logo, and other marks. It’s possible for anyone to be registering a similar name or logo to yours. If you are confused, we are here to assist you with professional advice, as well as drafting, filing, prosecuting trademark applications, and many more.

    • Do not incorporate prohibited elements

    Elements that cannot be registered as a Trademark :

    1. Similar/Identical to any other registered trademark.
    2. Immoral/scandalous words or symbols.
    3. Marks that are well-known.
    4. National emblem and other state emblems; official signs or hallmarks; flags and country names.
    • Don’t: Ignore the market

    Keep your focus on the larger marketplace for anyone that might be using your Trademark name, or one that resembles yours. To monitor not only limited to new filers, but it is a great start for you to look after the potential infringers and many more. For IP owners that currently facing invalidity claims, infringement, or to claim the invalidation, fret not, we may offer a hand to assist you in every stretch of your intellectual property and many more.

    FYA : Not enforcing your legal rights not only confuses the public and causes the marketplace to become crowded with identical brands, but it also resulted in your exclusive rights being dissolved. Even if you have a strong registered mark that grants you exclusive rights, if it’s not enforced against counterfeiters, infringers, or even commoners who simply misused a Trademark as a verb, then the solid mark will be genericized.

    This article is brought to you by Exy IP PTE. LTD.

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