Joshinae Wong explains the benefits of taking the all-important step to register your brand as a trade mark
Imagine that you have started a business selling water filters and have chosen to use the name “McQueen” to market your product. You print your marketing materials, you launch your website, you affix the “McQueen” name to your physical products – you invest substantial amount of money and time, and you start selling the products. Business is starting to take off, when all of a sudden you realise that a new competitor has entered the market – their product is almost identical to yours and is sold under the brand “MCQEEN”. What can you do? Well, if you have not registered “McQueen” as a trade mark, you may find yourself in a bit of a spot but if you have, you can be rest assured that there are legal avenues available to you.
Centuries ago, Shakespeare wrote, “What’s in a name? That which we call a rose, by any other name would smell as sweet.” Well, Shakespeare obviously had little inkling on the power of business brands. According to Forbes’ latest list, the world’s most valuable brand, Apple, has a value of USD154 billion. To put things into perspective, this figure is more than the Gross Domestic Product (GDP) of more than half the countries in the world. In today’s competitive world, there is no doubt that a strong brand and the goodwill residing in it, may be the key to your business success and thus, protecting it is of the utmost importance.
A. Registering your brand as a trade mark – what are the benefits?
The first step to developing, building and protecting your brand is to register your brand or trade name as a trade mark. If your brand or trade name is sufficiently distinctive and able to distinguish your products and services, it may be accepted for registration as a trade mark by the Malaysian Intellectual Property Office (MYIPO). A descriptive or generic mark however will not be registrable – you cannot register the mark “PHONE” to sell your brand of mobile phones, and you likely cannot register, say, “SPICY” for your brand of curry powder (descriptive).
Logos, names, symbols, images, tag lines or combinations of those are registrable. There have also been much interesting discussion as to the registration of non-conventional trade marks such as sound, color or smell or a combination of those, but that perhaps can be left for the subject of a later article.).
A trade mark may further not be accepted for registration if it is identical or so similar to a registered trade mark or an earlier application, such that it would be likely to deceive or cause confusion to the public. Registrations are made by the type or class of goods or services for which the mark is used or intended to be used. Thus, if you are using your trade mark in relation to goods and services in different classes (according to the NICE International Classification system), you may need to consider multiple registrations to enjoy full protection.
Now, what does it mean for you to have your trade mark registered? Quite simply, registration gives you the exclusive right to use the registered mark in relation to the goods and services specified. If another company uses an identical mark or one that resembles your registered mark in a manner that is likely to deceive or cause confusion, then they may then be liable for trade mark infringement under the Trade Marks Act 1976 (“TMA”). Hence, in the example above, you may be able to bring an action against your “MCQEEN” competitors for trade mark infringement, and to stop their use of that mark
B. Enforcing your registered rights
But protecting your brand does not stop at merely registering it. If your rights are threatened, taking prompt action against infringers or potential infringers is also a key component of a successful brand strategy. Be sure to keep an eye out for identical or similar names to your registered mark in your industry, and to act upon it (some businesses have a strategy that involves regular monitoring). Inaction or delay may be costly to your business in terms of lost sales, customer diversion and loss of brand value or strength. Your available actions may vary and range from taking opposition proceedings against a potentially conflicting application to initiating court action for infringement, and to claim damages or an injunction.
C. Some practical considerations
Now that you have an idea of how you may protect your brand, we would leave you with a few practical considerations.
1. Perform a trade mark search and consult your advisers, before settling on, and developing your brand name
As mentioned above, if an application is found to be identical or similar to an earlier application or registration, your application may be rejected or opposed to at a later stage. Not only would you have wasted costs and time, but if you use the mark in relation to goods or services specified for the earlier registration, you may be liable for trade mark infringement. So, taking again our “McQueen” and “MCQEEN” scenario, imagine now that you find out that your competitor’s “MCQEEN” mark is in fact a registered trade mark. Had you performed a trade mark search beforehand when deciding on your “McQueen” brand name, you would likely have come across this registration. However, because you had overlooked this, you find yourself now in the position where you are open to an infringement action by your competitor, and you would have to stop using your “McQueen” brand after having spent all that money and time on building up the brand.
Trade marks may also not be registrable due to other reasons such as it being generic, descriptive, laudatory or otherwise not distinctive. Therefore, it is important that you not skip the step of having a search of the existing register performed, and also of discussing registrability of your intended mark with your advisers.
2. Register… and use
Although an intention to use the trade mark is sufficient to apply for registration of a trade mark, non-use of a registered trade mark can be a ground for expungement i.e your registration can be cancelled for non-use. Note that use in this context, means use in the trade mark sense. Ideally as well, the mark used should not differ or vary too much from what is registered, as use of a substantially different variation may not be considered use of the actual registered mark.
3. Protect your rights in each jurisdiction where you conduct business
Trade marks rights are territorial in nature. A registration in Malaysia gives you the rights to exclusive use within the country only. If someone starts selling “McQueen” filters in Singapore, you would not be able to take action against them based on your Malaysian registration. Heed well the notorious story of Pinterest, who lost its right to use the trade mark in Europe as it had delayed in making the necessary applications, thus allowing another UK firm to file its application in the meantime for an identical mark. Thus, consider obtaining advice and registering your mark in all countries in which you are doing business. Expand your IP protection along with your business’s reach.
Adequately protecting your brand and enforcing your rights will ensure that your business has a reliable, valuable asset that can help keep you ahead of your competitors.
CCLC Intellectual Property advises and represents clients in various aspects of intellectual property (IP) rights protection including trade marks, copyright, industrial design and patent matters. Amongst other things, we handle the filing and prosecution of trade mark applications, advice clients on licensing and franchising transactions, and represent them in IP infringement/ enforcement proceedings.