KASS makes trademark protection easier by carrying out thorough trademark searches, advising clients on the selection of trademarks, handling the filing and prosecution of trademark applications, working hand-in-hand with our clients to come up with the most effective strategy for trademark protection, and providing professional and practical solutions to help manage and maintain their portfolio of trademarks, not only in the Southeast Asian region, but also worldwide.
What is a trademark?
A trademark is the face of your brand or company. Trademarks are used in trade to identify the source of products/services and distinguish it from competitors in the marketplace.
Registering your trademark gives you the exclusive right to use your mark for the goods and/or services that it covers in the country that your mark is registered in. A registered trademark also gives the owner the legal rights to license or sell the trademark.
If you have a registered trademark you can put the ® symbol next to it to warn others against using it. However, using this symbol for a trademark that is not registered is an offence.
What can be protected as a trademark?
A registrable trademark is one that can include a distinctive logo or symbol, image, name, signature, word, letter, numeral or any combination thereof.
Non-Traditional Marks (NTMs) such as smells, sounds, colours, shapes, moving images, tastes and textures are now also registrable in several ASEAN countries. Get in touch with us if you’d like to find out whether such marks are registrable in your intended jurisdiction.
How are trademarks classified?
In general, ASEAN countries follow the 11th ed. of the NICE International Classification of Goods and Services. There are 34 classes for goods and 11 classes for services.
The class headings for the 45 classes can be found on the website of the World Intellectual Property Organization (WIPO):
However, do note that class headings only serve as general indications of the type of goods or services and may not cover all the goods or services in the class. You should not list or claim the entire class heading of each class of goods or services in the application form.
Contact us for assistance in itemizing the specification of goods or services of your interest in the application as you may find that they fall under more than one class or that they are described erroneously.
Why conduct a trademark search?
Most business owners choose a trademark, then go on to spend a large sum of money on the marketing, advertisement and promotion of their brand. However, when they venture into a foreign market, they cannot be 100% certain that they can use the same brand they developed in Malaysia.
We have had people who come to us too late, unable to use their local marks overseas due to a substantially similar or identical mark existing in that particular foreign country, and thus had to spend more money, time and effort:
- designing a new mark
- creating a new branding strategy, with new advertising and promotion material
- developing new packaging
A trademark search allows you to check and determine whether the mark you intend to register is available for registration in all jurisdictions of interest under the relevant class of goods/services. This helps ensure that there are no other possible conflicting marks in the class.
With a search, you will be able to change your brand if there is a similar brand already on the register or pending registration in the various jurisdictions.
An availability search would also help you avoid infringement of a third party’s trademark, which would be a terrible start to venturing into overseas markets as it racks up legal fees to respond to the other party’s allegations and may cause negative publicity in the country where you are trying to secure market share.
How do I go about designing/redesigning my trademark?
We can help! We provide initial branding consultation, with our logo design service to help you come up with a trademark that will have a good chance of being accepted and registered by the trademark office.