The challenges in getting a trademark

Kevin Koo

7 years ago

Getting a trademark can be challenging.

If you are starting a business, it’s probably common to receive advice that you should register your trademark. Registering a trademark comes with benefits, such as proof of when you first registered it, and making it clear how you use the trademarks. Having a registered trademark is also an asset for your business as the trademark is seen as part of your company’s intangible assets.

Some of the world’s most valuable trademarks are shown above.

Trademarks also make it easier to challenge imitators and counterfeit producers. When a counterfeit item is detected in the market, the trademark owner can get a lawyer to demand that the counterfeiter stop selling and stop producing the counterfeit items. Subsequently, the counterfeiter can be sued in a court of law for damages, delivery up of sales, general damages, loss of profits, and the like. So, getting a trademark has its benefits for businesses, and businesses should not baulk at the upfront cost of applying for a trademark.

But there are challenges when applying for a trademark. Here are some of them.

Confusing Similarity

When you apply for a trademark, the trademark registrar will look through the trademark registry for similar trademarks. If there is a similar trademark, it is the trademark registrar’s right to challenge your trademark application on the grounds that it is too similar to a registered trademark.

Similarity of trademark challenges actually make sense because, when your trademark is too similar, you benefit from the goodwill in the registered trademark. You will get business that was never meant for you. People who were planning to buy the product under the original trademark will give you business instead.

Another reason for challenging your trademark application (if it is too similar) is because the members of the public may find your product inferior or just plain lousy. (New products tend to suffer from all kinds of deficiencies.) They then conclude that the registered trademark owner produces lousy , inferior , or unsatisfactory products. In actual fact, they had planned on buying his product, but confused your product with his. Due to the poor quality of your confusingly similar product, the registered trademark owner suffers a loss of confidence and reputation.

If you make an appeal and it goes through to the Gazette stage, registered trademark owners may object to your trademark application on the same grounds: Confusing similarity! This will lead to them filing an objection against your trademark.

Even if you get your trademark certificate, you’re never really safe. There is a procedure in which another trademark owner can sue to expunge your trademark from the registrar due to confusing similarity. All the reasons stated above apply.

The Trademark Cannot be Registered

This challenge will come from the trademarks registrar himself, on the grounds that the trademark cannot be registered. This is covered in section 14 of the Trade Marks Act 1976, which includes the following reasons for rejection:

Likely to deceive or cause confusion to public
Contrary to law
Contains scandalous or offensive matter.
Contains matters that are prejudicial to the interest or security of the nation.
Identical to, or resembles a well known trademark in Malaysia.
Contains a geographical indicator, but does not originate from there.

Items 1 and 5 (confusing similarity) are covered in the preceding paragraphs.

Scandalous or offensive trademarks are self-explanatory, i.e. the trademarks may offend a certain segment of society. I had previously discussed the application filed for “The Slants”, an Asian American rock band.

Geographical indicators are names which are used for products from certain places. A famous example is that “champagne” is allowed to be use for wines from a certain region in France only. If the same type of wine is produced elsewhere in the world, it cannot be described as “champagne”. Instead, it must be described as “sparkling wine”. Naturally, this gives rise to all sorts of interesting questions when it comes to the food industry in Malaysia. Restaurant operators and food stall operators alike tend to come up with names like “Penang Nasi Kandar” and “Penang Fried Kuey Teow” and “Ipoh Chicken Rice” and “Sarawak Kolok Mee”. Are those geographical indicators (and therefore not allowed to be used)?

Unlawful trademarks or trademarks prejudicial to the nation may relate to trademarks that encourage unlawful acts, such as the “Enjoy Cocaine” trademark that was a spoof on the “Enjoy Coca-Cola” trademark. It is not sufficient to say that it is a “spoof” when it clearly encourages members of the public to commit illegal activities, which infringing trademark law.

Thanks for reading

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Koo Chin Nam & Co., Advocates & Solicitors
Patent, Trademark & Industrial Design Registration
IP Litigation