It is always prudent to conduct a trade mark search before a particular trade mark is adopted and used in commerce. The main purpose of conducting a search is to ensure that the mark of interest is not visually, phonetically or conceptually similar to any earlier mark for the same or similar goods or services in that country.
A trade mark search involves a comprehensive review of all the marks that have been entered in the trade mark register. For historical reasons, there are four trade mark registers in Malaysia. These are the Malaya, Sabah, Sarawak and Malaysia Registers. It is advisable to search in all of the four registers for the existence of conflicting trade marks. A manual and computerized search can be conducted in the Malaysian trade mark register.
Searches are usually conducted according to the relevant class under which a client wants to apply for a mark. However, most of the time when an application is being searched to discover if there are earlier marks that may conflict with the mark being applied for, we need to identify which other classes of goods or services may also contain similar goods or services to those for which registration is being sought. This is where cross searches have to be carried out.
For example, for an application that is to be filed under Class 31 for fresh fruits and vegetables, it will be also advisable to cross search in Class 29, which covers goods such as preserved, dried or cooked fruits and vegetables.
For an application to be filed under a service class under Class 38 for telecommunication services, it will be advisable to cross search under Class 9 (the class covering telecommunication equipment such as telephones).
When searching for a mark to be applied for retail services under Class 35 where the retail store in question specializes in clothing, it will also be advisable to conduct a trade mark search under Class 25 for clothing.
Before 1997, there was no provision to register service marks in Malaysia. Therefore, applicants wishing to register their services (for example restaurant services) usually registered their mark under Class 16 for stationery items, which includes such items as menu cards and napkins. Applicants who now wish to register service marks for restaurant services under Class 43 are advised to cross search under Class 16 as well.
Apart from searching in the local trade mark registers, a search should also be carried out in all the countries of interest where the IP owner proposes to use the goods or services.
It is not always the case that a trade mark will be available for use in all the countries of interest. If the search results are not in the applicant's favour, they will have to abandon the preferred mark or adopt an alternative mark.
In many countries, trade mark rights are established by the first to use system as opposed to the first to file system. In these countries it is also advisable to carry out commercial searches and searches in the market place. These should include searches in trade journals and telephone directories, domain name searches, company searches, internet searches and searches in retail outlets.
Conducting a trade mark search is always advisable prior to filing a trade mark application so as to avoid unnecessary filing expenditure only to find that the mark of interest to you is already taken.
Jyeshta Mahendran
