We have all heard about “trademark” but some of us may have misunderstood how it works. Now, let’s dispel the cloud of mystery surrounding trademark.
Myth #1: Single Trademark Registration Worldwide Coverage
While we do wish to have such convenience, there is currently no unitary system that could register a trademark simultaneously in every country across the globe. Registration and protection of trademark is territorial-based and it is the authority and discretion of the government of a country (Trademark Office most of the time) to grant exclusive use onto a trademark. Therefore, it is necessary to register our trademark separately in each and every country that we wish to sell our products or services in.
However, there are some organizations that do provide regional trademark registration system, whereby one application could cover numerous countries within the same region, for example, the European Union Trade Mark (EUTM, 28 member states of EU), the African Intellectual Property Organization (OAPI, 17 member states), and the African Regional Intellectual Property Organization (ARIPO, 19 member states).
Myth #2: I’m Entitled to Exclusivity As Long As I Created The Mark
Not necessarily. In order to be registrable, a trade mark needs to fulfill certain legal requirements. Briefly, these would be (1) invented words, (2) having no direct reference to the goods / services, (3) it is distinctive, and (4) it is not confusingly or deceptively similar with other trademarks as stipulated the Malaysian Trade Marks Act 1976.
While the above are seen to be the principles applicable in many countries, every country has different requirements on registrable trademarks.
Therefore, it may not be sufficient to simply assert that “I am the creator (or designer) of the mark hence I’m entitled to the exclusivity”. – however true that may be.
Also, Malaysia is revamping the Trade Marks Act 1976 very soon and the new requirements are, among others, the trademark shall not fall under the absolute or relative grounds of refusal. We will share more information on the new Malaysian Trademarks Act 2019 shortly. Stay tuned!
Myth #3: Registration in One Class Means The Entire Class Is Covered
A trademark registration shall identify the relevant classifications of goods / services. However, it is often misunderstood that if a trademark is registered in that particular class, it means the entire goods / services of that class will be covered under the registration.
The truth is, the trademark will only be protected according to the goods and/or services identified in the registration details. Therefore, we should be both specific and comprehensive when preparing the registration documents in order to adequately guard our trademark as well as avoiding potential infringement.
Myth #4: Company Registration = Trademark Registration
It is not uncommon for the company’s name to be the same as the trademark name. Still, registration (or incorporation) of a company merely means the establishment of a legal entity to operate a business. It does not automatically grant any exclusive rights on the trademark.
Furthermore, registration and operation of a company is governed by company laws, whereas the registration and enforcement of trademark rights are governed by trademark laws. In other words, the qualifications for legal remedies are entirely different between company and trademark.
Hence, it is still necessary to register the trademark separately according to trademark laws.
Myth #5: TM = ®
Some companies use the signs TM and ® on their trademarks interchangeably--well, they really shouldn’t. The TM sign identifies a trademark, even if it is unregistered. Meanwhile, the use of the ® sign indicates that a trademark is already registered and the proprietor is entitled to exclusive use. In many countries (including Malaysia), the use of ® sign on an unregistered trademark is actually a prosecutable offence! And the new Malaysian Trademark Act 2019 may increase the penalty on the misuse of ® sign. Say yikes!
Myth #6: I Can Always Register Others’ Unregistered Trademark
There are those who might take advantage of a seemingly fool proof opportunity and register others’ trademarks as their own after realizing the earlier owners have omitted registration.
This is absolutely not advisable. Securing registration on a trademark does not guarantee the incontestability of ownership. There are still many legal remedies available to the legitimate owner to regain the ownership of the mark, including suing the trademark squatter for infringement, claiming the damages and legal costs.
Myth #7: Trademark means logo only
It certainly means more than just a logo!
According to the definition provided in the Malaysian Trade Marks Act 1976, in addition to logo, a trademark includes a brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof.
In fact, in the upcoming Malaysian Trademarks Act 2019 which is expected to come into force by the end of year 2019, the definition has been expanded to include non-traditional trademarks such as shape of goods or their packaging, colour, sound, scene, hologram, positioning sequence of motion or any combination thereof.
Myth #8: A Little Change = No Infringement
It is a misconception that we can get away from the legal liability of trademark infringement by making a minor changes on others’ trademark.
Every country implements their individual laws on determining what amounts to infringement. Most of the time, the similarity of trademarks is not solely determined by gauging the amount of changes made on a trademark. For instance, in Malaysia, it is an infringement if a counterfeit mark is so nearly resembling the registered mark so as to likely to deceive or cause confusion.
Therefore, it does not really matter whether the changes on the mark are minimal or substantial. As long as the counterfeit mark resembles the registered mark and is likely to deceive or cause confusion to others, the copycat may be liable for infringement.
Myth #9: Trademark Registration Needs To Be Renewed Annually
The majority countries require the renewal of a registered trademark every 10 years, instead of an annual renewal. Contrary to patent, a trademark registration can be valid perpetually as long as it is renewed promptly before the expiration date.
Myth #10: Registration of Trademark Is Expensive And Only Suitable for Big Corporations
As a matter of fact, if you can afford to buy a computer in your office, it means you can afford the cost of trademark registration. Yes, you are allowed to be surprised by this.
It is not uncommon to see big corporations go the extra mile by registering everything under the sun. However, this doesn’t mean that the SMEs need to follow suit. We can always formulate a filing strategy which suit the actual needs and budget of SMEs.
Of course, if you have any further doubts on the 10 myths above, you are very welcome to contact us today for a free consultation!
(1) Lawrence Tan
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)