Trademark

Trademark

What We Do

KASS: Expert Trademark Services in Southeast Asia

At KASS, we help businesses protect their brands by offering comprehensive trademark services across Southeast Asia. Our experienced team assists clients in trademark searches, applications, registrations, and enforcement, ensuring your brand is well-protected. Whether you are a local business or an international company entering the Southeast Asian market, we provide tailored advice on trademark infringement, opposition, and maintenance, keeping you updated on the latest developments in trademark law.

Frequently Asked Questions

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.

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.

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):

https://www.wipo.int/classifications/nice/nclpub/en/fr/?explanatory_notes=show&lang=en&menulang=en&notion=class_headings&version=20210101

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.

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:

  1. designing a new mark
  2. creating a new branding strategy, with new advertising and promotion material
  3. 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.

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.

Additional KASS Information

What are the factors to consider when selecting a trademark for use in Malaysia?

Malaysia is a multiracial, multicultural and multi-religious society that consists of significant population subgroups comprising of Malays, Chinese and Indians as well as various ethnic groups indigenous to Sabah and Sarawak. Islam, Christianity, Hinduism, Buddhism and other religions are practised in Malaysia with Islam being the official religion. Malay, Chinese, Tamil, English and a wide variety of other languages and dialects are widely used in the country. Thus extra caution has to be exercised to avoid the selection of a mark that may have an undesired meaning or can be deemed an offensive trademark in respect to certain cultures, religions or societies. We can advise on the appropriateness of a proposed mark with regard to such sensitivities.

Trademarks can be filed in any language and alphabet. However trademarks which are not in the English or Malay language and not in the Latin script need to be accompanied by a certified translation and transliteration of each of the characters in the English or Malay language. The language of the word(s) must also be given.

An important note to take into account is that Malaysia adopts a First-to-Use system for Trademarks. This means that the first applicant who uses a mark in trade is entitled to registration and has better rights, in the absence of any prior user of an identical or substantially similar trademark in Malaysia.

Intention to use the trademark is sufficient. However, a registered mark may be revoked if it has not been used in trade for a continuous period of 36 months without any valid legally acceptable reason.

What are the general requirements for filing a trademark application?

A filing date is accorded based on the date of receipt of the application if the application contains all the following information/documents:

  1. Name and address of the applicant;
  2. Representation of the trademark (if it is other than normal typescript);
  3. List of the goods or services to be covered by the trademark registration;
  4. The International Classification applicable to the goods or services
  5. Application form (TM5);
  6. Power of Attorney (TM1);
  7. Statutory Declaration declaring that the applicant is the lawful proprietor of the mark applied for;
  8. For a Convention application, priority details of the basic application must be disclosed. Convention applications must be filed within 6 months of the basic application from which priority is claimed;
  9. Where a trademark contains any word or words in a language or alphabets other than the Malay or English language/alphabets respectively, then a certified translation and transliteration of the mark applied for is required.

What is the procedure for trademark registration?

  1. The procedure to file and prosecute a trademark application in Malaysia is similar to the process in other common-law countries.
  2. Each application must be for a single mark in a single class. The application can include several goods or services all falling within the same international class without the payment of any additional fees.
  3. If the mark applied for is acceptable to the Trademark Office, i.e., the Intellectual Property Corporation of Malaysia (MyIPO), it is advertised in the Government Gazette for the public to oppose the application. A period of 2 months is given for the filing of any opposition. If no opposition is received, the mark proceeds to registration. Conversely, after any objections and/or oppositions are overcome, the mark proceeds to registration.
  4. Upon registration, the mark is valid for 10 years from date of filing of application and is renewable for every 10 years thereafter.
  5. If the application does not face any objections or oppositions, the trademark will be registered within 2 years.

How to obtain a trademark in Indonesia?

To obtain a Mark in Indonesia, an application must be filed online to be registered with the Directorate General of Intellectual Property (DGIP). To successfully register a Mark, it must:

  1. Be distinctive
  2. Not be prohibited/offensive
  3. Not be identical, or confusingly similar to another registered trademark.
  4. Not contain elements that may mislead the public.
  5. Not contain improper information related to the quality or efficacy of the goods/services.
  6. Be capable of being represented graphically
  7. Not be descriptive of the goods/services

What is the procedure for trademark registration?

On average, the entire registration process takes 18-24 months. The steps to have a trademark registered in Indonesia are as follows:

  1. Filing of Application: Includes details such as description of the mark (word, image, shape, etc.), identification of the owner, and specification of product/services it will be used for.
  2. Formality Examination: Assesses whether the mark meets the necessary criteria.
  3. Publication: If the formality examination is successful, the application will be made available to the public. Anyone may oppose the trademark within 2 months of publication.
  4. Registration: Once the application passes the formality and substantive examination, the applicant will receive exclusive rights to the trademark.

Length of Exclusive Rights to Trademark:

A trademark is valid for 10 years, plus a 6-month grace period, and may be renewed for subsequent 10-year periods once fees are paid.

How to obtain a trademark in Thailand?

To obtain a Trademark in Thailand, an application must be registered with the Department of Intellectual Property (DIP). To successfully register a trademark, it must:

  1. Be distinctive
  2. Not be prohibited/offensive
  3. Not be identical, or similar to another registered trademark.

What is the procedure for trademark registration in Thailand?

  1. Filing of Application: Includes details such as description of the trademark (word, image, shape, etc.), identification of the owner, and specification of product/services it will be used for.
  2. Examination: Carried out by the DIP to assess whether it meets the necessary criteria (Distinctive, Non-Offensive and not similar to other registered trademarks). This step takes 10-12 months.
  3. Publication: If the examination is successful, the application will be made available to the public. Anyone may oppose the trademark within 60 days.
  4. Registration: Once these steps are satisfied, the applicant will receive exclusive rights to the trademark.

Length of Exclusive Rights to Trademark:

A trademark is valid for 10 years and may be renewed for 10-year periods once fees are paid. Registered trademarks can be removed from the register if they are not used within 3 years of registration.

To obtain a Trademark in Vietnam, an application must be filed before the Intellectual Property Office of Vietnam (IP Viet Nam). To successfully register a trademark, it must:

  1. Be distinctive
  2. Not be prohibited/offensive
  3. Not be identical, or confusingly similar to another registered trademark.
  4. Be capable of being represented graphically (visible)
  5. Not be descriptive of the goods/services

What is the procedure for trademark registration?

On average, the entire registration process takes 13-18 months. The steps to have a trademark registered in Vietnam are as follows:

  1. Filing of Application: Includes details such as description of the trademark (word, image, shape, etc.), identification of the owner, and specification of product/services it will be used for.
  2. Formality Examination: This stage occurs within 1 month from the filing date and assesses whether the application meets formality requirements.
  3. Publication: If the examination is successful, the application will be published in the Industrial Property Gazette within 2 months from the date of decision on formality acceptance.
  4. Substantive Examination: This stage is carried out within 6 months from the publication date, during which any third party can file an opposition against the application. The opposition will be considered as a source of information for the substantive examination process. If no oppositions are lodged, the application will be examined on its merits.
  5. Registration: Once these steps are completed and satisfied, the applicant will receive exclusive rights to the trademark.

Length of Exclusive Rights to Trademark:

A trademark is valid for a term of 10 years from the filing date and is renewable indefinitely for subsequent 10-year periods once fees are paid.

How to obtain a trademark in Singapore?

To obtain a Trademark in Singapore, an application must be registered with the Intellectual Property Office of Singapore (IPOS). To successfully register a trademark in Singapore, it must:

  1. Be distinctive
  2. Not be prohibited/offensive
  3. Not be identical, or confusingly similar to another registered trademark.
  4. Be capable of being represented graphically
  5. Not be descriptive of the goods/services

What is the procedure for trademark registration?

  1. Filing of Application: Includes details such as description of the trademark (word, image, shape, etc.), identification of the owner, and specification of product/services it will be used for.
  2. Examination: Carried out by IPOS to assess whether the mark meets the necessary criteria.
  3. Publication: If the examination is successful, the application will be made available to the public. Anyone may oppose the trademark within 2 months of publication.
  4. Registration: Once these steps are satisfied, the applicant will receive exclusive rights to the trademark.

Length of Exclusive Rights to Trademark:

A trademark is valid for 10 years and may be renewed for subsequent 10-year periods once fees are paid.

How to obtain a Trademark in Myanmar?

Under the old system, trademarks are registered in Myanmar by filing a Declaration of Ownership at the Office of Registration of Deeds (ORD). Once the registration process is completed, a Cautionary Notice is published in newspapers to inform the public of the owner’s exclusive rights on the trademark.

The new Trademark Law follows a first-to-file system, which gives the first party to register a Trademark priority rights to its use. Under the new Trademark Law, trademarks previously registered at the ORD must be re-registered.

What is the “Soft Opening” period?

The soft opening period, which began on 1 October 2020, is the period in which existing trademark owners who have previously recorded their trademark(s) at the ORD may re-register their trademarks and obtain a filing date priority right in order to maintain the protection of their trademarks under the new law.

What is the “Grand Opening”?

The grand opening is the official filing date and the official acceptance date of the applications filed under the soft opening. All trademarks henceforth will be filed according to the first-to-file rule, in accordance with the new Trademark Law.

[APPROACH 1] Trademarks that have not yet been filed at the ORD

The cut-off date for recording your trademark at the ORD to take advantage of the filing date priority right is at the end of the soft opening period (yet to be determined).

For the filing of new marks under the previous practice, the following documents are required:

  1. Power of Attorney (Notarized by a Notary Public and legalized by the Myanmar Embassy).
  2. Declaration of Ownership (Notarized by a Notary Public).

[APPROACH 2] Trademarks that have already been filed at the ORD

The required documents for us to assist you with the re-registration under the new Trademark Law are as follows:

Scanned copies* of:

  1. Notarized TM2 form (Appointment of Representative form). We will provide you this form once it is available.
  2. Trademark Certificate (Declaration of Ownership endorsed by the Office of Registration of Deeds).
  3. Evidence of change of name/address and/or Deed of Assignment (if details are not the same or the applicant is not the trademark owner mentioned in the old trademark certificate).
  4. Cautionary notice (if available).

* Original hard copies are required in case the registrar requests for it.

The TM2 form has not yet been issued by the Myanmar IP Department (IPD). Therefore, instead of a Notarized TM2 form, we are currently required to submit the applicant’s information and the trademark details, as follow

  1. Clear presentation of the trademarks.
  2. Appropriate class(es) under the Nice Classification.
  3. Description of goods and/or services.
  4. Applicant’s name and address.
  5. Company Registration Number (if the client files as a legal entity).
  6. NRC/Passport number (if the client files as a natural person).
  7. Domicile country.
  8. Registered Office/ Business Country.

If there is no Trademark Certificate (no registration under the old practise), what are the documents required for soft opening?

Scanned copies* of:

  1. Notarized TM2 form (Appointment of Representative form). We will provide you this form once it is available.
  2. Evidence of use.
  3. Cautionary notice (if available).

* Original hard copies may be requested by the registrar

What is the procedure for trademark registration after the Grand Opening?

  1. Filing of Application: Includes details such as description of the trademark (word, image, shape, etc.), identification of the owner, and specification of product/services it will be used for.
  2. Formality Examination: Carried out by the IPD to assess whether the trademark meets the necessary criteria.
  3. Publication: If the examination is successful, the application will be made available to the public. Anyone may oppose the trademark within 60 days of publication.
  4. Substantive Examination: Any third-party opposition filed against the application during the publication period will be considered as a source of information for the substantive examination process.
  5. Registration: Once these steps are completed and satisfied, the applicant will receive exclusive rights to the trademark.

Length of Exclusive Rights to Trademark:

A trademark is valid for a term of 10 years from the filing date and is renewable indefinitely for subsequent 10-year periods once fees are paid.

How to Obtain a Trademark in the Philippines?

To obtain a trademark in the Philippines, an application must be filed before the Intellectual Property Office of the Philippines (IPOPHL). To successfully register a trademark, it must meet the following criteria:

  • Be distinctive
  • Not be prohibited or offensive
  • Not be identical or confusingly similar to another registered trademark
  • Be capable of being represented graphically visible
  • Not be descriptive of the goods/services

 

What is the procedure for trademark registration?

On average, the entire registration process takes around 4 months. The steps to register a trademark in the Philippines are as follows:

  1. Filing of Application: This includes details such as a description of the trademark (word, image, shape, color, translation and/or transliteration of special characters, etc.), identification of the owner, and specification of the products/services it will be used for.
  2. Formal and Substantive Examination: This stage occurs within 1 month from the filing date to assess whether the application meets formal requirements.  The application is also examined on its merits.    
  3. Publication: If the examination is successful, the application will be published in the Intellectual Property Office Gazette. This allows third parties to oppose the registration within 30 days from the date of publication.
  4. Registration: Once all requirements are satisfied, the applicant will receive a Certificate of Registration, granting him exclusive rights to the trademark.

 

A trademark is valid for a term of 10 years from the registration date and renewable every 10 years upon payment of necessary fees.