Top 5 Reasons Your Trademark is Rejected
Yes, not all trademarks can be registered. But there are tips that you can look into to improve your chances of success.
We have summarised the top 5 reasons causing a trademark application being rejected.
There are many reasons that you need to register your trademark. But the primary one is always 𝐭𝐨 𝐞𝐧𝐬𝐮𝐫𝐞 𝐲𝐨𝐮 𝐚𝐫𝐞 𝐭𝐡𝐞 𝐨𝐧𝐥𝐲 𝐨𝐧𝐞 𝐮𝐬𝐢𝐧𝐠 𝐭𝐡𝐚𝐭 𝐦𝐚𝐫𝐤. What if there is someone infringes your trademark? 𝐉𝐮𝐬𝐭 𝐬𝐮𝐞 𝐭𝐡𝐞𝐦! But, before you get here, you need to get your trademark registered first.
However, we hate to say this, but it is not guaranteed that your trademark application will always get registered. In order to be registrable, your trademark has to fulfil all the legal requirements. In other words, there are chances that your trademark will be refused by the Registry, if it does not meet the requirements.
But why?
There can be many reasons why your trademark application did not make the cut.
To make things easier, we have summarised the 5 most common reasons that the Registrar rejects a trademark application under the new Malaysian Trademarks Act 2019 (“TM Act”).
𝐍𝐨. 𝟏: 𝐈𝐝𝐞𝐧𝐭𝐢𝐜𝐚𝐥 𝐨𝐫 𝐒𝐢𝐦𝐢𝐥𝐚𝐫 𝐰𝐢𝐭𝐡 𝐚𝐧 𝐄𝐚𝐫𝐥𝐢𝐞𝐫 𝐌𝐚𝐫𝐤
This is part of the relative grounds for refusal of registration under Section 24 of the TM Act. Under this section, the grounds for refusal are termed ‘relative’ because your mark may be refused registration if it is identical or similar with an earlier mark. The new TM Act provides a wider scope in comparison of the marks.
Your mark will be refused if its goods or services are the same OR similar with the earlier mark.
If you are thinking of taking advantage of an international well-known brand which is not registered in Malaysia and making minor tweaks to it, please think twice.
Section 24(3) of TM Act has got this covered and specifically provided that the Registrar shall refuse to register a trademark if it is identical with or similar to a well-known trademark which is not registered in Malaysia and it is to be registered for the same goods or services of the proprietor of the well-known trademark.
𝐍𝐨.𝟐: 𝐃𝐞𝐯𝐨𝐢𝐝 𝐨𝐟 𝐀𝐧𝐲 𝐃𝐢𝐬𝐭𝐢𝐧𝐜𝐭𝐢𝐯𝐞 𝐂𝐡𝐚𝐫𝐚𝐜𝐭𝐞𝐫
Your trademark may be refused for registration if it is devoid of any distinctive character. This is part of the Absolute Grounds for Refusal of Registration under Section 23(b) of the TM Act.
This is quite a common ground of refusal faced by many trademark applicants.
Section 2 of the TM Act defined “distinctive character” as a trademark shall be capable of distinguishing goods or services which the proprietor of the trademark is connected to in the course of trademark.
In simple terms, your trademarks must be unique enough and capable of distinguish your goods and services from others. Admittedly, whether a trademark is distinctive or not could be quite subjective based on the examiner’s personal view.
To improve your chances of success, try to coin a new word, or use a word which is not commonly used or referred in your industry. For example, Starbucks and Google!
𝐍𝐨.𝟑: 𝐃𝐞𝐬𝐜𝐫𝐢𝐛𝐢𝐧𝐠 𝐭𝐡𝐞 𝐂𝐡𝐚𝐫𝐚𝐜𝐭𝐞𝐫𝐢𝐬𝐭𝐢𝐜𝐬 𝐨𝐟 𝐆𝐨𝐨𝐝𝐬 𝐚𝐧𝐝 𝐒𝐞𝐫𝐯𝐢𝐜𝐞𝐬
There are some marks that may be overtly descriptive of goods and services, that deem the mark unregistrable. This is another Absolute Grounds for Refusal of Registration provided under Section 23(c) of the new TM Act. The Registrar shall refuse to register a trademark if it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristic of goods or services or time of production of goods or of rendering the services.
In simple term, 𝐝𝐨𝐧’𝐭 𝐭𝐞𝐥𝐥 𝐩𝐞𝐨𝐩𝐥𝐞 𝐰𝐡𝐚𝐭 𝐲𝐨𝐮 𝐬𝐞𝐥𝐥 𝐨𝐧 𝐲𝐨𝐮𝐫 𝐭𝐫𝐚𝐝𝐞𝐦𝐚𝐫𝐤! We like to use this simple example, you may use Apple as your trademark to sell computers and phones, but you shouldn’t use Apple as your trademark to sell apples.
As long as your trademark does not in any way describing the products and services, you should be safe from this ground of refusal.
The rationale behind this is allowing wholly descriptive marks to be registered is against public interest because they will deprive the public’s right to use a descriptive word. Designing a logo that has your product element or description may be better for marketing purposes, but sometimes you will have to take a balance. However, there is a chance that descriptive marks may be registered if it is satisfied that they acquire distinctiveness through use, ie. throughout extensive use, promotion and marketing, the public has recognized your trademark is distinctive to you only.
𝐍𝐨. 𝟒: 𝐂𝐨𝐧𝐬𝐢𝐬𝐭 𝐄𝐱𝐜𝐥𝐮𝐬𝐢𝐯𝐞𝐥𝐲 𝐨𝐟 𝐂𝐨𝐮𝐧𝐭𝐫𝐲 𝐍𝐚𝐦𝐞𝐬 𝐨𝐫 𝐑𝐞𝐜𝐨𝐠𝐧𝐢𝐬𝐞𝐝 𝐆𝐞𝐨𝐠𝐫𝐚𝐩𝐡𝐢𝐜𝐚𝐥 𝐈𝐧𝐝𝐢𝐜𝐚𝐭𝐢𝐨𝐧𝐬
Sometimes you might include a geographical / place name into your trademark, but there is risk in that. It is mentioned in Section 23 of the TM Act that the Registrar shall refuse to register a trademark if a trademark consists exclusively of signs which may serve in trade to designate the geographical origin, recognized geographical indications or the nature of the mark may deceive or mislead the public as to the geographical origin of the goods or services.
Based on this, it is not surprising that the Registrar would refuse an application at the first instance if a trademark contains a geographical name or country name.
However, it does not mean a trademark is automatically unregistrable merely because it has a geographical name. It is arguable that a trademark containing geographical name is registrable provided the goods and services do not originate or not connected from that place. For example, using ‘North Pole’ as trademark for bananas.
𝐍𝐨. 𝟓: 𝐂𝐨𝐧𝐭𝐫𝐚𝐫𝐲 𝐰𝐢𝐭𝐡 𝐭𝐡𝐞 𝐋𝐚𝐰, 𝐏𝐮𝐛𝐥𝐢𝐜 𝐈𝐧𝐭𝐞𝐫𝐞𝐬𝐭 𝐨𝐫 𝐌𝐨𝐫𝐚𝐥𝐢𝐭𝐲
The Absolute Grounds of Refusal for Registration of the TM Act also prohibits trademarks which are contrary to law, public interest or morality.
For example, taking some images designed by others and claim them as your trademark without the owners’ consent. This is considered infringement of copyright hence against the law.
It is certainly not advisable to trademark something which is offensive towards a religion, culture or race. This could be seemed contrary to public interest or morality hence should not be registered as a trademark. However, this could be determined from the perspective of the public from country to country. Something offensive to one society may not be so in another society.
Refusal of Trademark is Not End of The World
Of course, all of us want a smooth and problem-free trademark registration process. However, even if your trademark application is refused, it is not something unusual and certainly it is definitely not the end of story for your trademark registration.
So, if your trademark application is refused by the Registry, don’t feel deflated!
For refusal of trademark, the Applicant is always given a chance to respond or appeal within the deadline.
P/S: Be prudent with your response / appeal so that your right is not unnecessarily limited or given up.
Anyhow, try to avoid all the issues mentioned above in designing your trademark so that all the unnecessary complication can be prevent and increase the chances of success for your trademark application!
Not sure how whether your trademark fulfil all the legal requirements?
Talk to us now! Let us take care of your trademark so that you can concentrate on your business development during this challenging time!
Written by,
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.
Copyright reserved 2020 © IP Gennesis Sdn Bhd