Crying Tiger • Hidden Lesson
The recent incident of trademark application for “Harimau Menangis” filed by a Malaysian celebrity has sparked a major uproar on social media. It was reported that “Harimau Menangis” is a name of a Thai dish which has been commonly used, leading many netizens questioned and opposed to the registration of “Harimau Menangis” as a trademark, some even lodged complaints with Intellectual Property Corporation of Malaysia (MYIPO), the statutory body governing trademark registrations in Malaysia.
The story has gone so viral to the extent that MYIPO issued a media statement clarifying the said application was only recently filed and it was still under examination. With the applicant finally agreed to withdraw the trademark application, the matter considered come to an end.
Nevertheless, there are a few pointers which we could learn about trademark registration from this incident.
Filing A Trademark Doesn’t Mean Registered
It was reported that the applicant claimed that she has registered the “Harimau Menangis” as trademark and nobody could use it. In fact, this is a misleading and dangerous claim. Filing a trademark application does not mean the trademark is registered. Pursuant to Section 104 of the Malaysian Trademarks Act 2019, falsely claiming an unregistered trademark as registered is actually an offence, and shall, upon conviction, be liable to a fine not exceeding RM10,000.00.
All trademark applications have to go through the examination process by the Registrar of Trademarks. The Registrar will examine the registrability of the trademark according to the requirements in the Trademarks Act 2019. For example, whether the trademark is identical or similar with earlier marks. In general, the examination process takes around 6 to 12 months. However, if there are complications like objection or opposition during the registration process, it is not uncommon to take up to a few years to complete the registration process.
Even if the trademark is accepted by the Registrar, it is still not the end of story. The trademark application will proceed to advertisement in the Malaysian IP Official Journal for a period of 2 months. Within 2 months from the date of advertisement, the public is given the opportunity to oppose the trademark registration.
If no opposition is filed, the trademark will be registered in respect of the goods or services. The trademark proprietor is granted with exclusive use of the trademark forever, provided it is renewed every 10 years.
Not All Trademarks Are Registrable
A trademark is only registrable provided it fulfills all the requirements under the Trademarks Act 2019. For instance, trademarks which are descriptive towards its intended goods or services, contrary to morality or public interest, or devoid of any distinctive character are not registrable. The simple rationale behind these grounds is, if one is allowed to register a widely used name, he will secure the exclusive right to use the name. This will be very unfair to other business owners, especially those who has long used the name before the registration.
For instance, “Harimau Menangis” is a name of a dish commonly used by many traders, and it is also available in the dictionary. Based on these, the name is arguably not distinctive hence fall foul of relative grounds of refusal, hence may not be registrable eventually.
As mentioned earlier, even if the Registrar approves an application, it still has to go through publication process for public opposition. The application will be refused if the opposition is successful.
Anyhow, the above procedures seem academic for this matter. Considering the applicant will now withdraw the application after all the dramas, it’s probably most effective public opposition without going through the actual opposition!
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
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