Imagine this, your accountant just emailed you and tells you that your software company Alpha Go Sdn. Bhd. has been accepted for registration in the Companies Commission of Malaysia (“CCM”). You can finally breath and start your business venture. 8 months down the road,your business is booming, you get a call from a customer, asking why has the accounting software he bought corrupted his company’s databases. He sends you a photo of the CD he bought, which states “Alpha Go Accounting Solutions”, you realise then that the CD he bought was not one of your products, it was produced by another company. You call your lawyer, and asked him what can be done? He asked if you had filed for registration of the trade mark “Alpha Go”. You tell him hat you’ve filed the papers with CCM. Unfortunately, they are not the same. Now, you can only do one of two things: rebrand, OR get stuck in a legal quagmire.
It is important for business owners, especially those starting a new business to know the difference between a Trade Name and a Trademark.
What is a trade name?
A trade name is the official legal name of your business entity, it is more commonly known as a “doing business as” name, for example “Alpha Go Software Sdn. Bhd”. In simple terms, a trade name is the name you use when you register and incorporate your company with the Companies Commission of Malaysia (“CCM”) . On 31 January 2017, the CCM issued the “Guidelines on Company Names” as a guidance in relation to the registration of nam for incorporation of a company or a change of corporate name (read the guideline). Registering your trade name with CCM is an important first step for your company however the mere registration is not sufficient to offer any protection towards your chosen trade name from misuse by a third party.
Once you have decided on your company’s name, you may also want to run a quick check if there are existing registered trade mark that may resemble your company’s name.
What is a trade mark?
A trade mark on the other hand, provides for a wider scope of protection and is a more significant step in terms of establishing a brand recognition in the marketplace. Upon registration of a trade mark, protection is conferred upon the trade mark registered against misuse by any third parties and wills stop third parties from trading with that name. A trade mark can be associated with part of your trade name and can also be used to provide legal protection to the use of names, logos, symbols or company slogans for example “Alpha Go-Solutions on the Go”. Trade marks are protected under the Trade Marks Act 1976 and are registered with the Intellectual Property Corporation of Malaysia (“MyIPO”).
In addition, registration of a trade mark provides you with a guarantee on the exclusive use of the trade mark and legally established that the trade mark was not already being used by any other business entity prior to your registration. As Malaysia practices a “first to file” rule when it comes to the application to register your trade mark, in the event along the lines a third party who had failed to previously register their trade mark brings up a claim that you are infringing their mark or brand name, you will be legally protected by law as you have registered your trade mark first before the other third party.It is important to note here however that this may work the other way as well, which is why it is essential to always register your brand name or trade mark once established.
The process of selecting and registering trade names and trade marks should be contemplated carefully when establishing a brand presence and recognition in the marketplace for a company and its products. It is always important to keep in mind that the successful registration of your company’s name with CCM does not ensure that your proposed trade mark can too be registered with MyIPO. CCM regulates the registration of company’s name, whereas MyIPO regulates the registration of trade marks. Each agency regulates over different subject matters.
If you wish to set up a new company and register trade mark, please get in touch with us at firstname.lastname@example.org.