importance of intellectual property registration ;...
TRANSCRIPT
Yusnieza Syarmila Yusoff
Perbadanan Harta Intelek Malaysia
Importance of Intellectual
Property Registration ;
Trademark
Definition of intellectual
property
Intellectual property (IP) refers to
creations of the mind, such as
inventions; literary and artistic works;
designs; and symbols, names and images
used in commerce.
IP Components
Intangible Property
1. Tangible property
Example : land, houses, estates,car
2. Intangible property
Example : Intellectual property
The value of IP is independent of its cost – low cost but can generate a very high income
IP IS A PROPERTY – HAS
VALUE!!
1. Can be sold
2. Can be bought
3. Can be licensed or rented
4. Can transferred through will
5. Can be assigned
6. Can be mortgaged to third
parties (in some jurisdictions)
Guidelines
Simple to spell
Easy to pronounce
Unusual and distinctive
Easy to recall
Protectable
Universally acceptable
Made to move……..
Legal Regime for Protection of Brand / Trade Marks
Criminal Remedies
Trade Descriptions Act 2011
Consumer Protection Act 1999 OR
MyIPO
45 Classes of Goods
& Services
Rights Available Upon
Covering Same
Goods & Services Only
Trade Marks Act 1976
Reputation & Goodwill
Misrepresentation
Damage
USE, USE & USE
Registered &
Unregistered Marks
Common Law Rights
.com.my
First Come First Served
MYNIC
Domain Name
SSM
Registry of Companies
Registry of Business
No Cross Check with MyIPO
Companies/Business Names
Registered Trade Marks - ®
Unregistered Trade Marks - TM
Service Marks - SM
Certification Marks
REGISTERED
TRADE MARK The President of Coca Cola stated that the corporation’s buildings, machinery, equipment, vehicles and physical property could all be destroyed, but that the business would have no trouble getting back on its feet, provided the trade mark survived. 2003 Brand Value (US$Billion)
70.45
2013 Brand Value (US$Billion)
79.21
“trade mark means used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and a person having the right either as proprietor or as registered user to use the mark ….”
IMPORTANT ELEMENT
REGISTRABLE TRADE MARKS
Sec. 10(1), TMA 1976 – shall contain/consist of at least one criteria below:
Name of an individual, company or firm represented in a special or particular manner The signature of the applicant for registration or of some predecessor in his business An invented word or words Word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname Any other distinctive mark
UNREGISTRABLE AND PROHIBITED TRADE MARKS
Marks identical or similar with registered trade mark
Marks likely to deceive or cause confusion
Conflict with earlier marks
intrinsic deception
Marks contrary to law
Scandalous and offensive marks
Marks prejudicial to the interest or security of the
nation
Marks which are identical or similar to a well-known
mark
Marks which contains false geographical indication
UNREGISTRABLE AND PROHIBITED TRADE MARKS
Marks Claiming Intellectual Property Rights
o Patent, Patented, By Royal Letters Patent, Registered,
Registered Design, Copyright
Protected Representations And Emblems
o Seri Paduka Baginda Yang Dipertuan Agong – The King
o States Ruler
o The word ASEAN and the representation
o National Flower – “Bunga Raya”
o Article 6ter of the Paris Convention
• any mark which consists of, or contains, the armorial
bearings, flags or other State emblems of countries which
are parties to the Convention
Others - Any mark, which is specifically declared by The Minister
Statutory Declaration
Filing Fees – RM 370.00
Trademark Registration Number: 201400100100
TM 5/5A Form – 5 copies
Manual
(RM)
Online
(RM)
Expedited
(RM)
TM5 Form [Applicant to File]
370.00 350.00 370.00
TM5A Form [Request for Approval for Expedited
Examination]
250.00
TM5B Form [Request expedited examination
applicant]
1200.00
TM31 Form [Request for advertisement]
650.00 650.00 650.00
Total 1020.00 1000.00 2470.00
ADVERTISEMENT
(GOVT. GAZETTE)
OVERCOME
OPPOSITION
TRADE MARK REGISTRATION PROCEDURE
APPLICATION
RECEIVED
FORMALITY
EXAMINATION
APPLICANT
SEARCH &
EXAMINATION
APPLICATION
OBJECTED
OVERCOME
OBJECTION
NO OPPOSITION OPPOSITION
APPLICATION
ACCEPTED
RENEWAL
REGISTRATION
HEARING
RENEWAL, REGISTERED USERS,
ASSIGNMENT, CHANGE OF NAME & ADDRESS
REGISTERED
VALIDITY DATE OF
PERPETUAL SUBJECT TO RENEWAL
EVERY 10 YEARS
TRADEMARK CERTIFICATE
Section 3 "trade mark" means, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and a person having the right either as proprietor or as registered user to use the mark…
Section 3 "registered trade mark" means a trade mark which is actually has been approved and certified to be granted registration.
Section 81. Falsely representing a trade mark as registered. (1) A person who makes a representation - (a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark;
is guilty of an offence and is liable, on conviction, to a fine not exceeding five hundred ringgit or to a term of imprisonment not exceeding two months or to both.
TRADE DESCRIPTION ACT
2011
Prohibition of False Trade Description in Relation to Trademark
Section 8 (1)
Notwithstanding section 5 and 6, a trade description shall include an indication, whether direct
or indirect, and by any means given, in respect of any goods or parts of goods relating to any
rights in respect of trade mark registered under the Trade Marks Act 1976 [Act 175].
Section 8 (2)
Any person who –
a) Applies a false trade description to any goods as if the goods were subject to any rights
relating to registered trade mark;
b) Supplies or offers to supply any goods to which a false trade description is applied as if the
goods were subject to any rights relating to registered trade mark; or
c) Exposes for supply or has in his possession, custody or control for supply any goods to
which a false trade description is applied,
CONTINUED…
ENFORCEMENT
TRADE DESCRIPTION ACT
2011
Prohibition of False Trade Description in Relation to Trademark
Commits an offense and shall, on conviction, be liable –
A. If that person is a body corporate, to a fine not exceeding RM 15,000 for each goods
bearing the false trade description, and for a second @ subsequent offense, to a fine not
exceeding RM 30,000 for each goods bearing the false trade description; or
A. If that person is not a body corporate, to a fine not exceeding RM 10,000 for each goods
bearing the false trade description @ to imprisonment for a term not exceeding 3 years @
to both, and for a second @ subsequent offence, to a fine not exceeding RM 20,000 for
each goods bearing the false trade description, or to imprisonment for a term not
exceeding 5 years @ to both.
Section 8 (3)
Any person who applies, supplies @ offers to supply, exposes for supply @ has in his
possession, custody or control for supply any goods bearing an identical mark with the
registered trade mark without the consent of the registered owner of the trade mark is
deemed to apply, supply or offer to supply goods bearing false trade description unless the
contrary is proved.
ENFORCEMENT
NEWS
NEWS
NEWS
News
Intellectual Property Corporation of Malaysia