What's News

  • Vincent Lim-Teh

"We know 2020 will bring with it more challenges but we are adamant that we will be part of the solution and not part of the problem. After all, we are here to help..." That's the last sentence of my end of the year message for 2019. This is probably one of those times when I hate to be right about something!

Like most of you, 2020 hasn't been a bed of roses for us. But it didn't seem that way in the beginning. It was to be the year of our expansion. The road ahead looked brilliant in the first month of the year. Well, yes there were some dark clouds in the horizon. The Aussie bush fires, the Influenza A outbreak, and maybe that little pneumonia thingy in Wuhan...but everything seemed to be coming together swimmingly. Boy were we wrong! Because in the following months, 2020 descended into an orgy of catastrophes taken straight from Lovecraft's wet dreams. Our plans for INTA 2020 were completely scuppered, during the lockdown hardly any work came in, we've been living/working in isolation for the past couple of months, and receivables are at an all time high as many clients struggled to stay afloat.

And now, as the annus horribilis draws to a close, we really hope we can finally flush 2020 down the toilet, maybe together with some of our hard-fought toilet paper. However, looking back, now with a little benefit of hindsight, 2020 hasn't been all bad. In fact, if we can look past the cacophony of doom and gloom, there are actually plenty of silver linings to be found. Instead of meeting at INTA, we had virtual meetings with many of our associates. And instead of talking about our business, clients or the IP Office, we spoke about our families, our home, our worries, the recipes we've tried and the redundancy of trousers in a Zoom meeting. During the months where work wasn't coming in, we were able to shift our attention to fundraising and managing the delivery of weekly humanitarian aids to the refugee communities in KL who've lost their livelihood during the lockdown. At its peak we were able to deliver food and other necessities to almost 600 individuals every week, and we couldn't have done it without the help of our clients, associates and partners who've so graciously given their time, money and effort. We've also provided discounts and relaxed our credit terms for clients who were facing financial difficulties and we're thankful that most of them have survived and are on the road to recovery.

Looking around, we find the same pattern cropping up everywhere. Whenever catastrophes hit, we see people rising to the occasion, coming and working together altruistically. In fact, most often our actions are what make the silver linings possible.

All in all 2020 has been a timely reminder of why we started Gordian. Next year, we will continue to increase the social impact of our company. Aside from working with the Chin refugee community under our Lametna Project, we will be working with St Nicholas' Home Penang on a project to provide entrepreneurial training to their trainees who are blind or visually impaired. We will also continue to assist local start-ups through our Start-up Assistance.

And finally, we know that 2021 may bring with it more challenges but we are adamant that we will continue to be part of the solution and not part of the problem. After all, we are here to help! Let's hope I'm wrong (at least about the challenges) this time round.

Happy 2021 everyone!

21 views0 comments
  • Vincent Lim-Teh

2020 has thus far proven to be an annus horribilis of biblical proportions where on any given day, reading the news is like reading a Stephen King novel replete with death, doom, gloom, and more death! However, since it’s Halloween, it would be remiss of us if we do not regale you folks with a few ghoulish tales of branding disasters taken from real life cases found deep in Gordian’s vault of horrors.

The names of the parties involved have been changed to protect the identity of the victims of these heinous crimes…

The Body Snatcher

Toil and Trouble was a lovely family-run neighbourhood restaurant that’s been around for a few years. However, their idyllic existence came crashing down one day when they were sent a Cease and Desist letter. The sender, attorneys of an international hotel chain, demanded the restaurant to immediately cease using their trademark which was very similar to the trademark of one of the hotel’s restaurants.

Even though T&T's trademark was not registered, being the first to use the trademark in Malaysia meant that they had the rights to prevent the use of their trademark (or any confusingly similar ones). However, unknown to the restaurant, the hotel had already registered the trademark a year prior, meaning the hotel is now its legal owner. The only recourse for T&T was to bring the hotel to court in order to regain ownership and use of the trademark. Unfortunately, after weighing the financial and emotional costs that would surely follow the lawsuit, they decided to simply throw in the towel and ditched their decade-old brand. They were just not ready to take on the body snatcher and their attorneys.

The Squatting Troll

Weyland Solutions is a local software company who provides business solutions to customers all over Asia. Weyland had registered their trademark in several countries not long after they started their business. However, unbeknownst to them, they had actually registered their trademark in the wrong International Class and had neglected to claim their software products in their previous registration.

After realising their mistakes, Weyland applied to register their trademark in the right Class and claiming their software products throughout Asia. Unfortunately, it is found that other businesses have already registered Weyland's trademark or a near identical trademark in several countries causing Weyland’s trademark applications to be rejected there.

Worse still, Weyland could not use their own trademark in 2 of the countries as it had been registered by squatting trolls who threatened to sue them for trademark infringement! Weyland was eventually forced to take the squatters to court to reclaim its trademark. However, even after spending close to 6 figures in legal fees, there is no guarantee that they would be successful as the 2 countries have a first-to-file rule where the first person to register the trademark will have an almost unassailable advantage in a cancellation suit. If Weyland fails to reclaim their trademark from the squatting trolls, they will have to use a different trademark in those 2 countries.

The Doppelganger

Jekyll is a 3rd generation medicinal oil maker. A few years ago other traders around him started to ride on his coattails by using trademarks that are very similar to his. This put Jekyll in a right old pickle as the customers are confused and some even started to think they are the counterfeiter!

As Jekyll did not register his family trademark, he would have to engage each of the doppelganger in a costly passing-off suit. Even if he had the means to take legal action, success was not guaranteed as much of the documentary evidence that Jekyll had of his 3rd generation business was destroyed in a flood, leaving Jekyll with nothing to prove that his business have used the trademark for decades. Sadly, Jekyll had to give up his decade old brand in order to differentiate his business from his neighbours.

We hope the bone-chilling tales above have given you something to think about. No? Then we shall leave you to ponder the lamentations of this ancient prose…

Murderous screams the silence broke,

The foulest thief and conniving rogue.

Cursed fiend and devious enchantress,

Closing in to steal your very likeness.

And though you fight to save your heart and soul,

Your stomach weakens and your bones grow cold.

Alas, you should have listened to your IP attorney,

And have your trademarks registered early.

For the Snatcher, the Troll, and the Doppelganger,

Are now free to possess, pillage, and plunder!

If you too are affected by problems that are similar to what these victims had faced, or if you would like to prevent such calamity from happening to you, you know who you gonna call!

37 views0 comments
  • Joel Cheong

Popular graffiti artist Banksy recently suffered the ignominy of having his registered trademark cancelled in the EU. In a David vs Goliath showdown, greeting card company, Full Colour Black, managed to cancel a trademark registered by Pest Control Office Limited, an entity which holds the reclusive artist’s trademarks.

While trademark cancellations are not uncommon occurrences, what is interesting to note is that the trademark happened to be the famous stencil and spray paint mural, ‘Rage, Flower Thrower’.

Rage, flower thrower, 2005 painted on a wall in Palestine, Jerusalem

Wait, trademark protection for wall paintings?! Those familiar with intellectual property rights protection would be quick to point out that copyright protection rather than trademark registration would be more appropriate to protect artistic works.

However, there is a method in this madness. When it comes to the enforcement of one’s copyright, one can’t do so behind the veil of anonymity as the author of the copyright work must be identified. On the other hand, any distinctive image can be registered by any person as a trademark. Considering the artist’s well-known proclivity for anonymity, registering his artwork as a trademark would seemingly appear to be a masterstroke worthy of applause as he can still prohibit any unauthorised use of his trademark protected artwork through a special purpose vehicle, hence, retaining his anonymity.

The Achilles heel in this seemingly well thought out plan is that a trademark registration can be cancelled if there is no intention to use it in good faith. And this lack of honest use was exactly what Full Colour Black relied on to apply for a cancellation of the trademark at the EU IP Office. Attempting to remedy the oversight, the mysterious artist set up a storefront in London to sell his artwork in an attempt to meet the trademark use requirement to prevent the cancellation of his trademark. In a classic case of ‘too little, too late’, this token, after-the-event usage of the trademark was not enough to prevent the cancellation of his registration as the IP Office took the view that the artist had not used the trademark in good faith. It didn’t help that the artist had shot himself in the foot by publicly announcing that the storefront and sale were merely an attempt to stave off the cancellation attempt.

While it may appear that a great injustice has been committed against the art world, or at least, an artist, the EUIPO’s decision is correct because the primary function of a trade mark is to serve as a sign to enable members of a public to identify the maker of goods or provider of service based on that sign and trademark registration is to grant owners the right to exclusive use of that trademark. To register a trademark with no intention to use it and to deny others the ability to use that trademark is considered an act done in bad faith.

Do you make artsy stuff and/or sell them on e-commerce sites? Unsure about which IPR protection to get? Why not drop us a holler? After all, we’re here to help!

40 views0 comments

© 2021 Gordian IP

Gordian Consultancy Sdn Bhd (1220464-W)