What's News

  • The Gordian Team

1. What is Trademark?

Commonly known as a brand (yes and no, we’ll get into that later). A trademark is an indication of origin - a sign that points you to the maker of a product or the provider of a service. The sign can be lots of things (e.g. words, logos, shapes, sounds, scents, etc.), as long as the consumers can tell who is responsible for the products or services, it can be a trademark. Common examples includes :-

2. Is a Trademark a Brand?

Trademarks are brands, but not all brands are trademarks. A brand is anything that a consumer recognises as being part of the identity of a business, e.g. - interior design (the interior design of McDonald’s is virtually the same everywhere in the world), the way things are done (the phrase “Welcome to Uniqlo” chanted and echoed by the shop assistants as you enter), or colours/styles of products (e.g. Muji Style). Trademark (at least in the legal sense) is a narrower concept. Only brands that are capable of being represented on paper can be considered as trademarks. Therefore, if a brand can be written or printed on a piece of paper, chances are it is also a trademark.

Still confused? See if this venn-diagram helps:-

3. How can I protect my Trademark?

The most common (usually also the most effective) way of protecting a trademark is through registration. Registration is an official recognition of your ownership of your trademark (much like a business registration certificate, title deed, etc.). With this official recognition, you can enforce your exclusive rights to use the trademark either in court or with the help of other official bodies (e.g. customs, police etc.).

Aside from registration, there are other ways of protecting your trademark by relying on other areas of the law e.g. contract law, the tort of passing-off, copyright, anti-trust, anti-competition, etc.

4. If I register my Trademark locally will I get protection internationally?

Usually no. Trademark Rights are territorial. If you register in country A, you get trademark protection only in country A and nowhere else. There are a few regional registrations available e.g. an EUTM registration which covers the whole of the EU, ARIPO registration in the mostly English-speaking countries of Africa, OAPI registration in the mostly French-speaking countries of Africa.

5. What about the International Registration or the Madrid System?

The International Registration or Madrid System makes it easier for you to register your trademark in over 120 countries. For example, you have applied to register your trademark in Malaysia, and you now would like to do the same in the US, EU, China, Australia, and Japan. Via the Madrid system, all you need is to make one application designating the aforesaid countries, wait for the individual trademark bodies there to give you the greenlight, and after which, you’ll have your International Registration. This can be a simpler and cost-effective way to extend your trademark registration worldwide. And what’s more, you can transfer or renew your International Registration by submitting just one application, instead of having to repeat the same process in all 5 countries.

6. Can I register just about anything as a Trademark?

As we’ve mentioned above, if your brand is capable of being represented on a piece of paper, chances are they can be a trademark. However, whether you can register that trademark is another matter. A trademark may not be registered if:-

(i) it is generic;

(ii) it is offensive/illegal/obscene; and

(iii) someone else has already used/filed/registered it.

7. Why can’t I register a generic/descriptive sign?

Generally, you can’t register a generic/descriptive word, logo, symbol, or design as a trademark. 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.

Useful tip: In general, if a sign is needed by your competitors to describe or represent their products/services, it is probably generic/descriptive, and you can’t have it registered as a trademark.

8. How long does my registration last?

Usually 10 years, but you can renew the registration for as long as you are still using the trademark. One of the oldest registered trademark is 144 years old and it’s still going strong. See below:-

Trademark No. 1 in the UK’s Trademark Register (filed on 1 January 1876)

9. TM or R ?

You can’t use the R symbol unless your trademark is registered. The TM symbol stands for “Trademark” and is used to notify the public that a sign is used as such. Sometimes, you’ll see the SM symbol, which stands for “Service Mark”, and it means a trademark is used in relation to a service instead of a product. The use of either of these three symbols is not legally required and serves no purpose other than as a notice/reminder.

Got a question about your brand or trademark? Why not give us a holler?

Updated: Aug 27

After the Government announced that the Movement Conditional Order is entering the recovery phase, hotels at popular getaway destinations saw a surge in the number of reservations. Clearly, most of us wanted to seize the opportunity to break free from the prisons we call home. With so many online hotel reservation sites such as Hotels.com, Trivago, and Agoda, the average holidaymaker is spoilt for choice on where to get the best rates for a room with a 100MB/s broadband Wi-Fi, USB charging ports, and an Insta-worthy balcony view.

If you own a hotel reservation website, you may be interested in protecting your domain name as a trade mark, especially when that domain name has become a world famous brand. But what happens when you try to register your domain name which comprises a generic word such as ‘Booking’ combined with a top-level domain such as ‘.com’ as a trade mark at the US Patent & Trademark Office (USPTO)? A case which escalated all the way to the US Supreme Court, as it turned out.

The road to registration was not smooth for Booking.com. First, the US Patent and Trademark Office (USPTO) refused registration of the trade mark ‘Booking.com’ on the grounds that the trade mark was generic. Then, Booking.com tried to appeal at the US Trademark Trial and Appeals Board (TTAB) but was unsuccessful. Undeterred, they appealed again to the US District Court for the Eastern District of Virginia for a review. This time, the District Court found that ‘Booking.com’ is not generic and therefore registrable. However, the matter didn’t end there. The USPTO, disagreeing with the District Court’s decision, filed an appeal (unsuccessful) at the US Court of Appeal for the Fourth Circuit and finally at the US Supreme Court (SCOTUS). At last, after 8 years of legal tussles, the SCOTUS (in an 8-1 decision) affirmed the appellate court’s decision and allowed the registration of the trade mark.

At the heart of the issue is whether the combination a generic word such as ‘booking’ with a generic top-level domain such as ‘.com’, would be considered generic and therefore be ineligible for trade mark registration. Generally, trade mark offices do not allow registration of generic terms as trade marks because these generic terms aren’t really helpful in enabling consumers to identify the person making the product or providing the service, nor can they help consumers distinguish a product or service of one company from another.

Consider a bar of soap wrapped in a packaging that says ‘SOAP’ and another bar of soap which is wrapped in a packaging that says ‘PAPER STREET SOAP CO.’. One would readily identify the second bar of soap as soap produced by a company named PAPER STREET SOAP CO., but absent any other indication one would have some difficulty arriving at the conclusion that ‘SOAP’ was supposed to be name of the company that produced the first bar of soap. Most would presumably regard the word ‘SOAP’ on the packaging as indicating the type of product as opposed to being the name of the company which produced it, or, in short, generic.

Secondly, if one gained the right to exclude others from using the word ‘SOAP’ for their soaps, what are other soap sellers going to name their soaps as? Slippery Cleaning Solids? Potty Mouth Busters? Marine Recruit Cleaning and Motivational Aid? Granting the exclusive right of using a generic word to a single owner would place other businesses at a severe disadvantage and prevent fair competition among businesses.

While it’s clear that generic words do not make for registrable trade marks, will adding a ‘.com’ to a generic word make any difference?

The USPTO takes the view that adding a top-level domain such as ‘.com’ is like adding a corporate designation( e.g. the word ‘Company’) to a trade mark – it only results in a generic composite and does not make the trade mark any more registrable. However, the Supreme Court disagreed, and held that a trade mark is only generic if consumers saw it that way. As consumers recognise ‘Booking.com’ as a brand and not a generic word, ‘Booking.com’ is therefore not generic. Additionally, a ‘generic.com’, unlike a generic term, can serve as an indicator of source due to the fact that domain names are unique. If one were to type ‘Booking.com’ into their browser’s address bar, they would be taken to Booking.com B.V.’s website and nowhere else. As such, consumers would be able to associate ‘Booking.com’ with Booking.com B.V. and its website.

Further, allowing registration of a ‘generic.com’ trade mark such as ‘Booking.com’ does not create an unfair monopoly as feared by the USPTO. A trade mark can only be infringed if a competitor’s trade mark is so similar that an average user would be tricked into thinking it’s the real thing. Other companies can have the word ‘booking’ in their trade marks and coexist with the ‘Booking.com’ trade mark so long as they don’t appear to be confusingly similar.

While the US Supreme Court’s decision is a big win for owners of ‘generic.com’ trade marks, the fact remains that ‘generic.com’ domain names need to be recognised as brands before owners have a chance of registering them as trade marks. If you managed to acquire a catchy and memorable ‘generic.com’ domain name, it will take a while and probably an inordinate amount of TikTok videos to make your brand viral and gain sufficient notoriety before you can register your ‘generic.com’ at the trade mark office.

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. So if you have not owned and operated a website selling OEM eccentric rotating mass vibration motors named ‘vibratormotors.com’ for over 10 years, it would be easier on you to attempt registration of brands of the above nature instead of a ‘generic.com’ as a trade mark.

Thinking of registering a trade mark? Why not give us a holler? After all, we’re here to help.

  • Vincent Lim-Teh

Updated: Aug 20

Recently, a comedian from the UK legally changed his name to Hugo Boss as a protest against the trademark enforcement practices of the designer fashion house. Apparently, the comedian was miffed about the cease & desist letters that Hugo Boss (not the comedian, obviously…) has sent to small businesses and charities who use the word 'BOSS'. Sorry “Bossku”. Can I advise you something…?

If you’re thinking to yourself, “shut the front door! That’s Impossible! Can they do that?!”. Well, the short answer is “impossible is nothing” …sorry Adidas! Don’t sue k…

Generally, a word (regardless of whether it is common or completely made-up) is capable of being registered as a trademark, as long as it is “Distinctive”. For a common word to be Distinctive, the consumers must see it as a brand (a.k.a. “indication of origin” in legalese) and not merely a common word. Think “Shell™”, “Apple™” or “Proton™”.

So, with only 171,476 English words currently in use (according to The Oxford English Dictionary) and with the average speaker having only approximately 20,000 in her repertoire, are we not running the risk of drying up the common pool by allowing anyone to monopolise any word he pleases?

Well, there are 3 things you need to remember about trademark registration. Firstly, almost all trademark registrations are for specific products/services. So far, no one has been able to register a trademark for everything under the sun! Secondly, having a registered trademark doesn’t mean you can stop everyone from using it. People are still allowed to use a registered trademark for non-commercial purposes (e.g. for products comparisons, service reviews, parody, etc.). Thirdly, remember we said that a word can only be registered if it is Distinctive? As it turns out, that’s not always an easy hurdle to overcome, especially for a common word.

Most trademark regimes (including Malaysia’s) have an in-built mechanism to prevent someone from monopolising a common, generic word (e.g. registering the word “Coffee” for coffee products). This mechanism is the called the Distinctiveness Test, and a word that is exclusively descriptive is almost always going to fail the test. For example, when we see the word “café” on the signboard of a F&B outlet, we will see it only as a description of the type of business found within the premise, we won’t think of it as a brand or a trademark. This is why the word “café” cannot be registered as a trademark for F&B outlets because it lacks distinctiveness.

Nevertheless, the Distinctiveness test is not fool proof. There is still a way for common, descriptive words to be registered as trademarks. Shockingly, this “back-door” approach is, apparently, entirely legal (like something else Malaysians have recently come to realise is apparently also legal). Trademarks such as “The Body Shop”, “Sharp” and “Simple” are allowed registration because they are not 100% descriptive, and most importantly, they have “Acquired” Distinctiveness.

Acquired Distinctiveness is actually not a new concept. We’ve already said that a common word can be registered if the consumers see it as a brand and not just a word. So, a common, somewhat descriptive word can gain (hence “Acquired”) Distinctiveness if the business using the word as a trademark has used it extensively and for a long time. The effect of such long and extensive use is that consumers see it as a brand of the business. However, the more descriptive a word is, the longer and more expensive the process of acquiring distinctiveness will be. Even the owner of Booking.com™, one of the biggest booking sites in the world, is fighting in the US Supreme Court to get its trademark registered in the country.

So, where does that leave us? If you ever receive a cease and desist letter from the alleged owner of a certain word, telling you to stop using it or be prepared to face a multi-gazillion lawsuit, just stop and think for a while. Have you been using the word commercially? Are you using the word for a business that is related to the alleged owner’s? Is the word 100% descriptive of your products or services?

These questions will give you a clearer picture of whether you’re screwed, or whether you can tell the sender to go fly a kite (keeping in mind that sending a baseless threat is illegal according to our new Trademarks Act). For example, calling the anna/anne at your favourite mamak "Boss" is fine; calling yourself "Bossku" is absolutely douchey but still legal; using the word "Boss" on a T-shirt that you are selling is touch and go (incidentally, using the term "touch and go" in an article is fine); selling your bungah kantan and pandan perfume under the brand "Boss" is a lawsuit waiting to happen. Confused? Talk to an IP Professional just to be sure.

#IPlitigation #InternationalTrademark #Trademark


© 2020 Gordian IP

Gordian Consultancy Sdn Bhd (1220464-W)