As the new Trademarks Bill 2019 has been passed in our Parliament and come into force, here’s the quick read for all business owners on the 7 things they must know
1. Going global made easy
Local businesses can now protect their trademarks internationally, in a more cost-effective manner via the Madrid Protocol, which is an international registration system that provides for the registration and administration of trademarks in up to 106 contracting parties through a single procedure, with a single administration, in a single language.
2. Businesses should revisit their USP
It is time to revisit the USP in your business. Scent, sound, shape, colour, holograms, positioning and motion marks that are distinctive to your business can be protected now under the new Act, provided that these non-traditional marks can be graphically depicted.
Unsure of how these can be a trademark?
Think of the below – does it indicate the source of origin of the product / service?
- The colour purple for chocolates
- The triangular shape of a chocolate bar
- The sound of a lion roaring for a movie production company
- The ringtone of a mobile phone
- The shape of a bottle for a fizzy drink
3. Multi class trademark applications now made possible
Trademark registrations cannot be done for everything under the sun. One must identify what specific goods and services they are providing under their trademark.
With the new Trademarks Act introduced, business owners can now register their one mark in a few classes through one single trademark application, this resulting in cost savings.
4. Trademarks as financial instruments
Under the new Trademarks Act, a registered trademark can be used as a collateral to obtain financing from financial institutions. Although financial institutions may not yet be ready to finance a business based on a newly coined trademark, trademarks that have been around for years and those that have reputation and goodwill may be able to benefit from this treatment of trademarks as a bankable or moveable property.
5. Scope of protection is wider
Previously trademark infringement could be initiated when an identical trademark is used on identical goods and services. Moving forward, trademark owners can initiated action against those who use the identical trademark on goods and services that are not related as well.
6. Those receiving Groundless Threats will have remedies
Provision in the new Act allow for those who receive groundless threats to seek remedies from Court. One can apply for a declaration that the threats are unjustifiable, in injection against the continuance of the threats and claim damages in respect of any loss arising from the threats.
7. False representation as a Registered Trademark will get you fined!
Any person who falsely represents their trademark as a registered trademark, with the knowledge it is false, may be liable to a fine of up to RM10,000 under the new Trademarks Act.
If you are interested to apply for trademark protection or to learn more about protecting your intellectual property (IP) please visit our partner, KASS, a leading Southeast Asian IP boutique firm.
The view expressed in this article is intended to provide a general guide to the subject matter and does not constitute professional legal advice. You are advised to seek proper legal advice for your specific situation.