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  • The Gordian Team

Recently, Marks & Spencer initiated legal action against Aldi claiming that Aldi's Cuthbert the Caterpillar cake infringes M&S's Colin the Caterpillar trademark.

As the owner of 3 registered trademarks relating to its caterpillar cake, M&S is demanding that Aldi removes its Cuthbert the Caterpillar cake from sale.

It is important to note that the Malaysian Trademarks Act 2019 allows the registration of shapes as trademarks, including shapes of confectionary and baked goods (see below).

Bakers and makers should also be careful when selling products with cartoon/comic characters, as aside from being copyright protected, many cartoon/comic characters are registered trademarks , e.g.:-

Like Aldi, you may very well get into trouble for selling a product whose shape has been registered as a trademark by someone else. You may also be liable for copyright/trademark infringement if the product you're selling includes a copyright/trademark protected character, especially if you are doing so without a license from the right owner.

Talk to us if you're worried that someone may be copying your masterpiece or if you're worried that your products could be infringing someone else's trademark or copyright.

You may also like to read about how re-posting someone else's recipe online could land you in hot water here.

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  • Joel Cheong

Updated: Apr 9

MSCHF is an art collective that makes provocative stuff, such as a laptop deliberately infected with six different types of malware. Their latest offering is a batch of customised Nike Air Max 97 sneakers that were designed in collaboration with singer Lil Nas X. Dubbed the 'Satan Shoes', these very tame sneakers feature an inverted cross on the tongue, a pentagram pendant hung from the shoelace and an air cushion base filled with red dye mixed with a drop of actual human blood!

Unsurprisingly, the release of these sneakers raised hell especially amongst the god-fearing folks. And with digital torches and pitchforks in hand, they threatened to boycott NIKE under the mistaken assumption that the sports apparel giant has made a Faustian bargain and sold its soles to the Devil by selling these satanic themed footwear. NIKE responded by filing a lawsuit against the diabolically mischievous masterminds claiming that the sneakers cause trade mark confusion, dilution and create an erroneous association between NIKE and MSCHF.

At present, a court order has been issued to stop MSCHF from fulfilling any more orders for the campy footwear. Will NIKE win the suit? We won’t know until the matter has been tried at court.

Nevertheless, this incident raises a couple of interesting questions:-

  • Can someone be at risk of infringing a trade mark by buying genuine goods and re-selling them?

Generally, reselling genuine goods doesn’t amount to trade mark infringement as the product being sold is genuine. This is known as the exhaustion doctrine or first sale doctrine, where after a product covered by an IP right has been sold by the IP right owner the right is said to be exhausted and it can no longer be exercised by the owner.

  • What if the goods are altered and sold as customised products? And what about upcycling where pre- or unloved goods are altered or repurposed so as to give them brand new life?

This is where the law becomes less clear-cut and much depends on the extent of the alteration/customisation. Minor and superficial customisations such as adding embellishments or painting the product over with an unusual colour are unlikely to be considered infringement, e.g. a Volvo with new tyres and paint job is still essentially a Volvo.

Major modifications however may affect the quality of the product and change it so much that it cannot be called an original anymore. This is where you may run afoul of the law as technically you're not selling an 'original' product. So if you're selling up-cycled products, an easy fix would be to remove the branding from the final product but this can be difficult if the brand/logo is deeply embedded into the material or is otherwise indelible.

So are you free to sell branded products that have been remade according to your creative vision, or are you at risk of being sued if your ‘art’ is not consistent with the brand’s ethos? Well, it depends...the devil really is in the details!

However, on the flip side, if you're a brand owner, this whole kerfuffle should be a good reminder that trade mark registration is very important. As the registered owner of their trade mark, NIKE was able to easily get a restraining order from the court to stop MSCHF from selling the Satan Shoes. On the other hand, owners of unregistered trade marks have very few options to prevent someone from misusing their brands.

If you're curious to know more about the issues discussed here, or you're currently facing similar issues yourself, come have a chat with us.

Update: Nike and MSCHF have decided to settle the lawsuit instead of fighting it out in court. As part of the settlement, MSCHF has offered to fully refund anyone who has purchased the 'Satan Shoes'. Does this mean that artists should be cautious against provoking big brand owners? We can't say for sure. But one thing is for certain: trade mark registration gives you the power to protect your brand.

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  • Joel Cheong

It was recently reported that a restaurant chain in Taiwan offered free sushi to those who had the name ‘Gui Yu’, meaning ‘salmon’ in their identification card. As is usually the case, appetites and ichthyophilia prevailed over good sense and dignity and no small amount of people turned up at government offices to have their names changed so that they could take advantage of the offer. This, in turn, prompted an announcement from the government to remind the people that there are only so many times one could change her name before being stuck forever with ‘Ms Salmon Nella’ and that people shouldn’t change their names over such trivial reasons.

What’s in a name? Do names, or brands, really matter? You may think that your product/service can speak for itself and be tempted to go brand-less. Don’t. In the absence of a brand, your customers may come up with a less-than-ideal moniker for you. And that would probably be just as bad as being stuck with ‘Ms Salmon Nella’ for the rest of your life.

In this article, we will explore some of the names which you may pick as a brand and possibly register as a trade mark.

1. Business/Company name

Your business/company name is probably the first thing that comes to mind when thinking of what your brand should be as it is likely that you have spent quite some time to come up with a winning business/company name. Of course, if your business/company name is a mouthful, like ‘Goh Kim Tiam Hardware Supplies Sdn Bhd’, you might want to consider if something else which rolls off the tongue more easily would be more suitable. Also, if your business/company name lacks distinctiveness you will find difficulty registering it as a trade mark unless it has somehow acquired distinctiveness over time.

2. Personal name

Personal names can function as brands and you don’t need to be a celebrity to be able to register your personal name as a trade mark. Bear in mind, though, that you cannot register another person’s name or likeness, be it living or dead, as a trade mark unless permission has been obtained from that other person. For example, you may wish to use the name P. Ramlee as a brand for your tongkat ali-infused colognes, but unless you have obtained consent from the late actor’s representative, you would not be allowed to use his name as a trade mark.

3. Fictional Name

Don’t fancy being a household name spoken highly of by housewives and working mums everywhere? No worries. A fictional name can also be registered as a trade mark so long as it doesn’t coincidentally refer to a real person. For example, the name Ah Huat is a registered trade mark for powdered beverages and Julie’s for baked goods. Just like the P. Ramlee example, registering the name of a character in copyrighted works or someone’s pen or stage name is not permitted even though those names are made up.

4. Domain Name

If you have an online shop, you may be interested to know that domain names like amazon.com, booking.com, mynews.com can and have been registered as trade marks. So, if you do not have a brand in mind, you may consider using your domain name as your trade mark.

Of course, one may question whether trade mark registration is necessary since the domain name is yours and anyone who keys in your domain name into their web browser would be directed to your web site and nowhere else. That’s true, but trade mark registration grants greater power in stopping others from exploiting your domain name, for example, getting a third party to stop misusing your domain name on their web site or taking down a deceptively similar domain name that has been registered by a cybersquatter.

5. Username/Social media handle

Are you an insipid corporate drone by day and a vivacious social media butterfly by night? No? Well, neither is this writer. But if you are someone who is planning to promote or sell merchandise via your social media account, or just an ordinary content creator otherwise, you can use your username or social media handle as a brand and register it a trade mark. Not that it needs mentioning, but you would want to sign up with major social media platforms also so that your username is not taken up by someone else, unless you don’t mind using different usernames for each platform.

And that’s not all. Consider that there are other things that you can register as a trade mark, like invented words, arbitrary words, signs, numerals, colours, motions and sounds. So don’t be a nondescript nasi lemak seller obscured by a web of anonymity (unless your aim is to be a local hidden treasure). Put your best foot, nay, brand forward and be noticed!

Can’t think of a good brand for your product/service? Let us do the thinking for you! We can assist you with designing, searching and registering your trade mark for you. Just give us a holler. After all, we’re here to help.

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