Today I’m going to lift the veil of the trade mark registration procedure to show you what is actually happening behind the scene between us and the Registry (MyIPO). Most people may have been aware, especially the modern generation, to protect their brand name by registering. The awareness may be there but not all are familiar with the registration process where you may have to deal with considerable amount of paper work just to kick start the process, and that is just for the smoother process. Imagine when a disapproval from the Registry occur where it has objected to the registration of your mark. This would also require a considerable amount of attention and effort from your side to provide a full respond the office action.

For better understanding, kindly look at the trade mark process flowchart below prepared by us based on years of experience dealing with the Registry.

The left most flow from top to bottom is the process for a smooth registration where the entire process takes about 10 to 15 months to obtain your registration certificate. The right side of the flowchart will be discussed another time, let us focus on the smooth process for now since everyone would want their trade mark to fall in the left category.

TRADE MARK SEARCH

Although it is not compulsory to conduct a trade mark search, but it is always our recommendation to go for a full availability search as assurance before stepping into formal registration. By all means, you may skip this part if you are sufficiently confident that no one would come up with the same name or signs AND it fulfilled the registrability criteria. The search will be conducted by a professional personnel with sufficient knowledge and experience in IP law. The charges would of course vary depending on where and who you find to conduct such a search. Law firms would obviously charge a higher rate when compared to private IP firms. In our case, the search will be completed in 3 working days, and within the report you will see citing of prior identical marks (if any) and various other similar marks. These marks may or may not affect your application depending on the level of “similarities”.

Towards the last page of the report, you will see a summary of the search results along with our professional advice and opinion on your trade mark along with the Initial Acceptance Probability percentage (IAP). The IAP estimates the chance of acceptance by the first stage examiner who will be examining your trade mark in accordance with the local trade mark laws and regulations. Have no fear if you are unable to understand the report fully as our representative would be happy to explain it to you free of charge as long as it does not involve substantial legal advice.

TRADE MARK APPLICATION

This will be your first in contact with the Registry by submitting all relevant documentation for formality check and full examination. This step takes up majority of the registration processing time as it involves detailed examination on the documents submitted and trade mark examination. Individual application filed on their own generally, but not all, failed the formality check due to non-fulfilment of the documents required by the Registry. As such, it is always best to appoint a trade mark agent to represent you when dealing with such sophisticated process.

The only thing you have to do is to provide us all the necessary documents we required, sip a cup of tea by the side and let us deal with the Registry on your behalf. For obvious reasons, you have to pay for the services we provide *Smiley Face*. Most individual applied on their own generally would failed to respond to the Registry’s office action on time and lead to abandonment or withdrawal of their trade mark. This will not come into play if you have delegated the task to a qualified trade mark attorney or agent as we will constantly monitor and be notified in regards to the status of your application on your behalf. Upon filing your trade mark, the use of the “TM” symbol on the upper right hand corner is now permissible.

I will not go into deeply on how the examiner is going to examine your trade mark in full details here as it would takes up most part of this article. All I could say now is that the examiner will conduct another search on their own through their database and make sure that your trade mark complies with the local trade mark laws and regulations. Assuming that your trade mark fulfilled all the necessary requirements, the Registry would then issue their ACCEPTANCE and a separate notification will be sent to you or your corresponding trade mark attorney or agent.

ACCEPTANCE AND PUBLICATION / REGISTRATION

Congratulation! Your trade mark is officially accepted by the Registry and is due for publication! BUT! This is not the end of the road yet, no~ Within two months from the date of acceptance, you would need to pay the prescribed publication and registration fees to the Registry to arrange for the subsequent PUBLICATION where your trade mark will be published to the government trade mark journal or gazette for two months and is now open for third party opposition. Meaning, the public is now able to view your trade mark in full and is able to oppose to your mark if they have valid grounds! We will talk about opposition at a later time, let us now return to our happy smooth application where the two months publication period has ended without any notice of opposition lodged.

CONGRATULATION! Your trade mark had successfully overcome all examinations and public view and is now officially REGISTERED and valid for 10 years! The use of the “R” symbol on the upper right hand corner is now permissible. Do note that the use of “R” symbol prior to official registration is prohibited by laws. Upon conviction of such offence shall be liable to a fine not exceeding RM500 or to a term of imprisonment not exceeding 2 months or to both. Other than that, you are safe to use the R symbol anywhere you like as long as you are sure that your trade mark is REGISTERED! Stay tuned to my next updates on IP!

If you need to know more about the trademark registration process or questions,
Please Contact Us: 03-58914846
Or Email Us: [email protected]
Website: www.nbs.com.my

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