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Recently, the decision of the UK Intelectual Property Office to allow the registration of the word "Cariad" (Welsh for "love") as a trademark for candles has been widely criticised as this may prevent other businesses from using a relatively generic term on their products. Across the pond, the Ohio State University successfully registered the word “THE” in the United States for t-shirts, baseball caps and hats. In 2020, the US Supreme Court decided that a relatively generic domain name - "Booking.com" can be trademarked. And in Malaysia, local celebrity Neelofa's mum landed in hot soup when she attempted to register "Harimau Menangis" (a common Thai dish) as a trademark.

With businesses hellbent on registering every available word in our lexicon as a trademark, are we not in danger of running out of words to use?

Well, while the above examples are somewhat worrying, cases like this are relatively rare. In fact, numerous attempts to register generic words/phrases as trademarks have failed, e.g. Subway's failed attempts to trademark the word "footlong"; the former POTUS's attempt to trademark the phrase "you're fired".

Generally, you can’t register a generic/descriptive word as a trademark. That is unless you have used your trademark so extensively that when consumers only associate the said generic/descriptive word with your brand (e.g. Body Shop, Kentucky Fried Chicken, The Weather Channel). The reason is simple. Registration gives you exclusive right (monopoly) to use the trademark, and if you are allowed to register a generic/descriptive sign, no one else can use it! Imagine if I register the word “restaurant” as a trademark for restaurant services, no one can use that word to describe their f&b outlet without infringing my trademark rights. Accordingly, the more generic/descriptive a trademark, the harder it is to register.

For example, it took Booking.com 8 years and numerous appeals to get their trademark registered. Ohio State University's registration of the word "THE" took close to 4 years, and Neelofa's mum had to withdraw her trademark application following public outcry.

On the other hand, brands which are invented, arbitrary, or fanciful are comparatively easier to register as trade marks and don’t rely so much on consumer recognition in order to be registrable.

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In a recent judgement, the General Court of the EU ruled that Apple’s trademark registration in the EU for the slogan “THINK DIFFERENT” shall be revoked as the tech giant hasn’t been using the slogan on its products.

The judgement follows applications by Swatch in 2016 at the European Union Intellectual Property Office (EUIPO) to revoke Apple’s trademark registration for the slogan on the grounds that Apple had not been genuinely using the trademark for an uninterrupted period of five years.

Swatch’s applications were accepted and Apple’s trademark was revoked by the Cancellation Division of EUIPO revoked Apple’s trademark registration. Unhappy with EUIPO’s decision Apple brought three actions before the General Court of the EU.

Unfortunately for Apple, the General Court agreed with the EUIPO that Apple has not put to genuine use its “THINK DIFFERENT” slogan on its products. The General Court’s decision may mean that any businesses in the EU may now use the slogan on their own products.

This case shows that trademark owners must use their trademarks after they are registered, otherwise, the trademark registrations can be revoked for non-use. In Malaysia, any trademark registration can be revoked by the court if it is not use in good faith for 3 years after it is registered.

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  • Vincent Lim-Teh

The world is once again at the precipice of yet another financial crisis, brought on by an overachieving virus and an overreaching Russia. We’re being reminded daily that the global economy could very well descent into the chaos of the 2007 – 2008 global financial crisis where even the mightiest of banks were dropping like radioactive lead zeppelins, including the international investment bank - Lehman Brothers.

After several years of having its name dragged through the mud (quite justifiably), the poster boy of the subprime mortgage crisis seemed to have risen from the ashes, in the guise of a whiskey brand by TIGER LILY VENTURES LTD., a London based company who’s decided that the name Lehman Brothers shall ne’er be too far from the lips of those who’d caused us so much misery in the first place. The resurrection of the name did not sit well with Barclays Bank, which bought over Lehman’s North American operations along with the latter’s trademarks right. Unfortunately, Barclays had allowed all of Lehman Brothers’ US trademark registrations to expire.

In 2013, Tiger Lily filed to register the trademark “LEHMAN BROTHERS” in the States for beer, spirits and F&B services. And in the same year, Barclays filed to re-register the same trademark for various financial services. Both parties then decided to oppose the trademark applications of the other at the United States Patent and Trademark Office (USTPO).

Barclays claimed that Tiger Lily’s use of the Lehman Brothers trademark will cause confusion as the public might think that Tiger Lily’s products and services are somehow related to Barclays. On the other hand, Tiger Lily claimed that Barclays had abandoned the Lehman Brothers trademark and have no genuine intention to ever use it.

The USPTO allowed Barclays opposition, as it was convinced that the use of the Lehman Brothers trademark by Tiger Lily would actually cause confusion. Tiger Lily’s opposition was however rejected as the USPTO found that Barclays had not abandoned the Lehman Brothers trademark and it has intention to use the trademark eventually. Unhappy with the USPTO’s decisions, Tiger Lily decided to appeal at the Federal Circuit.

Unfortunately, the appeal court agreed with USPTO’s decisions. The court found that Tiger Lily’s use of the Lehman Brothers trademark is likely to cause confusion as banks have been known to use their trademarks on merchandises (including food and alcohol) to promote their business. The court also found that Barclays had not abandoned the Lehman Brothers trademark (even though it had not renewed its trademark registrations) as it had continued to use the trademark in various capacity, including in the ongoing bankruptcy proceedings.

This case shows the difficulties that a business may face in using an unrelated legacy brand, especially if the brand is famous. So, for anyone who is banking on a seemingly disused brand, perhaps it’s worth doing a bit of due diligence before you take out that second mortgage.

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