Trademarks are one of the most important assets of a business. A good trademark helps the business stands out in a crowd and from the competition. A poor trademark on the other hand will hamper marketing efforts (at its least harmful) and give rise to litigation (at its worst).
Yet in Malaysia many businesses fail to choose a good trademark. Selecting a good trademark (from a legal stand point) is as simple as following these simple guidelines.
1. Use invented words.
Invented words are a good choice because they are unique being words which do not exist in any language, apart from your trademark. You can create an invented word by simply combining parts of other words. For example, Microsoft is a combination of “Micro computer” and “software.” Closer at home, PETRONAS is a combination of the Malay words “Petroliam” and “Nasional”.
2. Avoid surnames.
Surnames usually cannot be registered as trademarks. The mark “Tan Kopitiam” for restaurant, for instance, is a bad choice for a trademark because the word “Tan” is a common surname in Malaysia and the rest of the mark is descriptive.
3. Avoid geographical names.
Geographical names are usually difficult to be registered as trademarks. The law will not let anyone monopolized “Seremban” for baked snacks.
4. Avoid purely descriptive words.
Words which describe the nature or quality of the goods or services are not permitted to be registered as trade mark for such goods or services. Hence, the mark “Silk” cannot be registered for clothing because it describes the actual product being sold. If registered, it would prevent anyone from using the
term “Silk” to describe their clothing malt beverage. But such mark is registrable for cigarettes.
5. Avoid confusing trademarks.
A trademark which is confusingly similar to a registered trademark cannot be registered. Hence, “New Ayam Brand” cannot be registered for canned food because the trademark “Ayam Brand” has already been registered for a similar type of product. Worst you may be sued.
Conclusion
There is no point investing in a trademark that you can’t register. Registering the mark protects it from
competitors, ensures your ownership rights in the mark and makes it easier to enforce your rights
against copy cats.