Use Of Registered ®-Sysbol In Malaysia

Question 1
Is the use of the ®-symbol to indicate that a trademark in Malaysia is still optional?

Answer 1
Yes. There is no provisions in the Trade Mark Act or any other related laws that requires the mandatory use of the ®-symbol in use of a registered trade mark. By using the ®-symbol with the registered mark, the competitors should be on notice of the registered trademark to respect the registered Intellectual Property.

Question 2
I also wonder if using the ®-symbol or not using the ®-symbol to indicate if the trademark is registered, if there are any legal consequences or benefits. For example in some countries, by lack of using the ®-symbol to indicate that a trademark is registered can prevent damage claim compensation.

Answer 2
The benefit of depicting the ®-symbol in a registered mark is the infringer cannot argue that he was not aware of the fact that the mark is registered. Other than that, the ®-symbol does not bring any direct legal consequences in a trade mark related matters.

Question 3
Whether there are any (other) criminal consequences when you use ®-symbol for trademarks that are not registered.

Answer 3
As you are aware, it is illegal in Malaysia to use the registered trademark ®-symbol, unless the proprietor have received the certificate of registration and is liable on conviction to a fine not exceeding RM 500 or a term of imprisonment not exceeding two months, or both. Besides that, the person may also be taken legal action for misrepresentation under the laws of contracts.