How Should Makcik Kiah Protect Her Trademark Amidst COVID-19 Crisis?
The COVID-19 crisis has impacted businesses of all levels, be it airline like AirAsia or pisang goreng (fried banana fritter) seller like Makcik Kiah.
On 27 March 2020, the Prime Minister of Malaysia has announced an economic stimulus package totaling RM250 billion to help Malaysians. Under the said package, Makcik Kiah could expect to receive cash and saving of RM7,864.00. The Government’s effort should be appreciated. But the hard truth is, how long could the said saving last?
Unlike big corporates, most of the SMEs have limited resources. And frankly, they might have overlooked their intellectual property at this point of difficult time, which they should not! Even though business survival is important in the short term, it is always imperative for entrepreneurs to look at long term and sustainability. If intellectual property is not properly taken care of, it will be a time bomb for a business in the long run. Loss of trademark right, trademark hijacking, expungement of registration, you name it.
Protecting a Trademark During COVID-19 Crisis
Due to the implementation of the Movement Control Order, Makcik Kiah is not able to sell pisang goreng at her usual hawker stall. Upon much learning and hard work, she managed to transform her business started selling her pisang goreng through e-commerce and leveraging on third e-hailing services. Now her income and cash flow begin to stabilize. She learned the necessity to protect her business now, in case another crisis strikes again.
We believe nobody would object that pisang goreng is one of the most favored snacks by fellow Malaysians. Therefore, all necessary steps should be taken to protect the good name of pisang goreng from being tarnished.
Now, the question is, how should SMEs like Makcik Kiah protect her trademark during this COVID-19 crisis?
Assuming her trademark is “Makcik Kiah Pisang Goreng”. First, we have to look at the exact products or services sold by Makcik Kiah, and assuming that she’s selling pisang goreng, the following are the relevant classes for the purpose trademark registration.
1. Fried Banana Fritters, banana pie – Class 30
2. Banana based snack food product – Class 29
3. Restaurant services, services for providing food and drink – Class 43
4. Retail services for selling banana related products – Class 35
5. Teaching services for providing classes on making fried banana fritters
– Class 41
6. Cookbooks on making fried banana fritters – Class 16
7. Banana as fresh fruit – Class 31
8. Banana smoothies – Class 32
The above are the possible classifications that involve bananas which Makcik Kiah should consider. Although ideally, they should be registered at once, it may not be feasible for her to register all the classes at the same time at this stage due to budget constraint. Besides, her current business may not cover that much of goods and services. Even if Makcik Kiah is keen to register all the above classes, she may consider registering the essential classes first, keep the rest to later stage so that she could use the fund to develop her current business. This is to take a balance between IP protection and business development.
Due to the implementation of Movement Control Order, Makcik Kiah cannot sell her pisang goreng at her usual hawker stall, Makcik Kiah could still sell her products using her trademark via e-commerce. Online promotion, e-hailing delivery, all these could help Makcik Kiah’s business to operate.
Choosing the Trademark Classification According to Priority
When we can’t cover all the potential classes at the beginning, the game plan should be registering the classes that cover the goods or services that we are providing now, then slowly expand as we go.
As a start, Makcik Kiah should register her trademark in Classes 29 and 30, which cover the pisang goreng and banana-based snack food which she is selling now. As her business grows, she might expand her product varieties by adding banana smoothies, fresh bananas into her menu. For instance, Makcik Kiah should add in Classes 31 and 32 into her trademark registrations.
The COVID-19 crisis would change our way of life. Even if the Movement Control Order is lifted subsequently, many people may not head out to the street as usual. Makcik Kiah may wish to broaden her business spectrum by publishing educational video online and cookbooks teaching the public how to make a good pisang goreng at home. This is when Classes 41 and 16 registrations become relevant.
Post COVID-19, when the crowd on the street started to build up, Makcik Kiah wishes to open a café serving signature pisang coffee with authentic Malaysian Kopi-O and retail shop selling a variety brands of pisang goreng snacks for the tourists to bring home as souvenir. She may expand her registrations with Classes 43 and 35, respectively.
Application Filed Does Not Mean Registered
It should be pointed out that a trademark application filed does not mean it is already registered. A trademark application, upon filing, may take about 6 to 12 months for examination by the Registrar of Trademarks.
If Makcik Kiah’s trademark applications have been filed before this and pending examinations, she should check out the status of the application with the Registry of Trademarks or the Trademark Agent she appointed. This is to ensure that the application status is still alive. If the status shows that the Registrar of Trademarks has raised any office action on the application, make sure the office action is responded promptly to avoid the application being abandoned.
While pending registration, Makcik Kiah should not use the ® sign on her trademark to represent it is registered. Otherwise, it is an offence and, upon conviction, shall be liable to a fine not exceeding RM10,000.00. But she can use the “TM” sign on “Makcik Kiah Pisang Goreng” to represent that this is her trademark.
Managing Registered Trademarks During COVID-19 Crisis
Assuming Makcik Kiah has already registered her trademark before the COVID-19 crisis, she should quickly check the status of her registration. If it is due for renewal, quickly renew the trademark registration.
Besides, Makcik Kiah has to make sure there is continued use on the trademark. Section 46 (1)(b) of the Malaysian Trademarks Act 2019 provides that the registration of a trademark may be revoked on application by an aggrieved person on the ground that the use of the goods or services has been suspended for an uninterrupted period of 3 years, and there are no proper reasons for the said non-use.
There is no requirement in the Trademarks Act on how much sales to make in order to constitute use. Therefore, as long as there is continued use on the mark, Makcik Kiah’s trademark can be considered solid.
Post COVID-19 Crisis
Thanks to the diversification, Makcik Kiah’s business flourished and achieved RM8 million of revenue a year by selling pisang goreng! She is now considering to export her business overseas. It should be clarified that her registrations in Malaysia only confer protections in Malaysia. She will have to register her trademark in other countries which she desires one by one.
The reality is the costs for international trademark registration is not low for a SME. Therefore, Makcik Kiah should exercise prudent consideration and not being over ambitious, identify the countries and file the trademark applications according to priority.
Now let us protect your trademark like how Makcik Kiah did! Contact us today for free preliminary consultant. You work hard on your business like Makcik Kiah and you can leave your intellectual property with us.
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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