Workshop 1 – Trade Marks

Strategy of Trade Mark Protection

A Malaysian Perspective

Wong Jin Nee

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Challenges encountered
by SMEs
• Lack of awareness and ways in which trade marks
could be protected, commercialized/exploited and
enforced
• Lack of or limited resources within their
organisations for protection of “intangible”
property
– Focus is on “tangible” assets
• Perceived high costs of seeking protection
• Perceived complexity of issues relating to brand
building and brand protection
• Lack of accessibility to assistance

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

In order to compete globally
H
t ing in igh
rk e no - v
Ma va al
v e tiv ue
ec ti e -a
f pr dd
Ef od ed
uc ,
ts

SMEs

i at ion
IP S rent
trat d iffe
egie uct image
s o d
Pr and
r
& b

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 Cre
ate
IP Strategies valu
able
asse & fle
ts xibl
e
Not
pros just
ecut ro
ion a utine fi
nd m lin
aint g,
enan
ce
Create competitive
Trade Marks barriers

p ort
sup
e to s
c us ines
eg i us
at ’s b
Str pany Enhance company’s
com ls competitive & market position
goa

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 Functions of a brand
A strong brand acts
as a promise, leading
faithful customers Trust & Relationship

to pay a premium Shorthand symbols of Vital link

over competitors’ Feelings, lifestyle and images to source
Associated with products/services & origin
products/services

Benefits of strong
Brands Differentiation
brand image Powerful Marketing
From
•Premium prices & Promotion Competitors
•Customer satisfaction, Tool
trust & loyalty
•Credible Badge
•Recognisable Prevent
Of
Consumer
•Exploitation opportunities Quality &
Confusion
Assurance of Consistency

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 Legal Regime for protection of
Trade Marks in Malaysia
•MyIPO
•45 Classes of goods
& services •Reputation & goodwill
•Rights available •Misrepresentation
upon registration •Damage
•Covering same Trade Marks Act 1976 Common law rights
goods/services only USE, USE & USE
Registered &
Unregistered marks
[“trade dress/get-up”]

Criminal Remedies
Trade Descriptions Act 1972 Trade Marks
Consumer Protection Act 1999

Companies/Business
Domain Name
•SSM Names
•Registry of Companies •.com.my
•Registry of Businesses •First come first served
•No cross check •MYNIC
with MyIPO

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 The Process of Registration in Malaysia
Filing of
Application

Registry’s
Confirmation of
Application

Registrar’s Considered Hearing by

Examination
Report Issued Reply Registrar Rejection*

Reconsideration
by Registrar If
Registrar
accepts
application
after Application
Acceptance
hearing Lapses/
Abandoned
Advertisement in
Government Opposition
Gazette

Issuance of
Registration Hearing by Refusal of
Accept Registrar* Refuse Registration*
Certificate

Renewal

* An appeal may be made to the High Court against the decision of the Registrar
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)
From clearance to
registration
Screening/ Identification/
Clearance Selection

Searches at
MyIPO, SSM,
Internet, trade
Maintenance inquiries Filing

10 years
from filing
date,
renewable
every 10
years Registration Prosecution
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)
Why Register A Trade Mark?
• Is registration compulsory? NO
• Advantages:
– Cheaper and simpler to enforce
– Gives proprietor the exclusive right to use
mark on goods/services covered by
registration
– Entitles proprietor to prevent unauthorised
use of identical or confusingly similar mark
for same goods or services
– Easy proof of ownership
– Registration itself a property, even without
use
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)
What is a Trade Mark?

A mark includes “a device, brand, heading,
label, ticket, name, signature, word, letter,
numeral or any combination thereof”

A trade mark means a mark used or
proposed to be used in relation to goods
or services for the purpose of indicating a
connection in the course of trade between
the goods/services and the person having
the right to use the mark to be registered

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

How to devise a good Mark?
 Inherently distinctive  Avoid geographical name or
 Coined, fanciful, original or surname
invented words
•Distinctiveness  Avoid deceptive words
[capable of distinguishing] = (quality/GI)
inherent capability to distinguish  Do not adopt offensive and
+ factual distinctiveness scandalous marks
 positive connotations
 Avoid identical or similar marks  Avoid prohibited marks
 Memorable and endurable
 Know your customers  Do not contravene any legal
 Fit the products/services or restrictions – i.e. marks which
image of business are “contrary to law”
 Word with no or little relation to
goods or services
 Avoid descriptive or generic words

•Name, represented in special or particular manner

•Signature
•Invented words
•Words having no direct reference to character or quality of goods/services,
not being, according to ordinary meaning, a geographical name or surname
•Any other distinctive mark
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)
Examples of
Trade Marks
• Words (e.g. Coca-Cola, • Slogans (“it’s the real
Kodak, Cialis, thing”, “don’t leave
Marrybrown, home without it”)
Timberland) • Signatures (Pierre
• Numbers (e.g. 4711, Cardin)
555) • Combination (Levi’s
• Letters (AT&T) 501, McDonald’s
• Logos, Devices, golden arches & I’m
Symbols Lovin’ it)
• Labels • Colours

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Non-Conventional Trade
Marks
• Colour
• Product shape (3Ds)
• Packaging
• Label

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)
Smell & Sound

Unlike countries like US, Australia or
UK, sound and smell are NOT
registrable mark in Malaysia

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Ralph & Friends
• Ralph Lifshitz, a New • Cosmetic industry
York designer chose goes for soft, invisible
to change unpleasant message (ETERNITY,
sounding name to ROMANCE) or a solid
RALPH LAUREN weight (OPIUM,
• SONY, SHARP, FAHRENHEIT)
PANASONIC, clear, • PADINI, not of
distinct English names Italian origin. Founded
to penetrate American by Yong Pang Chaun, a
market Malaysian

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 “Maintaining the FedEx
reputation and its brand
image is a top priority for
me, since it is one of the
most valuable things the
company has”
Fred Smith, founder and
chairman of FedEX

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 2005 TOP 10 BRANDS
• Coca-Cola = • Nokia = US$26.5
US$67.5b • Disney =
• Microsoft = US$26.4b
US$59.9b McDonald’s =
• IBM = US$53.4b US$26b
• GE = US$47b • Toyota =
• Intel = US$39b US$24.8b
• Marlboro =
US$21.2b

• Source: Business Week/Interbrand

• Brand value
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)
Proper Symbols
• ® = registered
– Offence to use
® if mark is
pending

• ™ = trade mark
right is claimed,
pending mark

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 Guidelines on proper TM use
• Use TM consistently & properly
– Use only specific font, colour or size
– Do not modify or change the representation of TM
– Do not vary the spelling, crop it, superimpose, use as
background/wallpaper etc
• Use TM as adjective, not as noun
– A can of Coca-cola beverage
– A pair of Levi’s jeans
• Distinguish TM from the rest of text
– PLAYSTATION game software
– “Timberland” shoes
• Do not use TM in possessive form
– Coca-cola’s taste – X
– Taste of “Coca-cola” beverage - √
• Do not use TM as a verb
– It is easier to “xerox” your document – X
– It is easier to photocopy your work using a XEROX machine - √

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 The Power of Branding
BRAND GENERICIDE
• Escalator
• Downside of famous brand
• Elevator becoming “household word” - risk
• Nylon of losing rights to the trade mark
• Zipper • Generic mark - becomes
• Thermos synonymous with all products of a
given kind
• Aspirin
• Xerox runs aggressive campaigns
• Yo-yo to inform trade & public that its
• Tupperware brands are valuable, indicating its
products and not those of any
• Xerox other company

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 When you use “Xerox
Xerox””
the way you use “aspirin
aspirin””
we get a headache
Boy, what a headache! And all because
some of you may be using our name in a
generic manner. Which could cause it to
lose its trade mark status the way the
name “aspirin” did years ago.
THE DOCUMENT COMPANY
XEROX

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

A holistic approach

Commercialization

Protection

Policing/
Management/ Enforcement/
Audit Dispute Resolution

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Main Ways to Exploit Trade
Marks
• Using trade marks to gain competitive edge
• Sharing them with others
– Licensing & Franchising
– JV/Strategic Alliance
– Outsourcing
• Selling trade marks
– Disposing off separately from other corporate assets
• Using trade marks belonging to others
– Licensing & Franchising
– Co-branding
– Knowing what to avoid to prevent disputes

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Corporate Policy
IP Awareness & Culture
• Establish, adopt and implement corporate policies
for Creation, Protection, Maintenance,
Commercialisation and Enforcement of IP assets
– Awareness amongst Management & Staff
– Integration of IP goals into overall business plans and
strategic directions of SMEs
– Periodic audits and strategic analysis
• Are the trade marks being protected and maintained?
• Are they fully and optimally exploited?
• Are any redundant brands which could be utilised or
further exploited?

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Proper retention of records
• Crucial to adopt a proper record retention policy
• To be effective, such policy has to be implemented and practiced by the
top management
• Important to SMEs for various reasons:
• Evidence of ownership & subsistence of rights
• Overcoming office actions, objections or oppositions
• When licensing/franchising trade marks to others with extensive
indemnities and warranties
• When acquiring licenses from third parties to make, use, sell or
distribute products with indemnities and warranties provided;
• When entering into a joint venture/strategic alliances with another
entities, co-branding relationship
• As a sword or shield
• face possible litigation involving their IPR, whether as claimants or
respondents;
• When seeking investment or financing in their businesses based on
their trade marks;
• When accepting security interests in intangible assets;
• As a tool in valuation process
• Consider listing in the near future

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 Types &
Nature of
data to be
retained
Creation,
Third parties’
Clearance &
rights
Adoption

Record
Retention
Policy
Protection
Exploitation Transactions
Enforcement Extent of use
A&P

Ownership
Parent,
Subsidiary

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Heading off Infringers
• Danger of doing nothing
– No interim relief
– Loss of rights
– Encourage others to infringe
• Prevention is better than cure
– Discourage infringement or unauthorised use of trade marks
• Education
– Internal – employees
– External – agents, distributors
• Warning Notices
– Local dailies/industry newsletters
• Other forms of publicity
– TM Notices & markings on goods/packaging/collaterals
– Successful enforcement actions
• Alternative Dispute Resolution
– Issuance of Cease and Desist letters
– Mediation/Arbitration/Settlement

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Going to War
• Sword • Shield
– Is litigation necessary? – Any way to avoid litigation
• Infringer refuses to comply • Settlement on a without
with C&D admission of liability basis?
• To avoid an image of “paper • Licensing/acquisition?
tiger” – Challenge validity of TM?
– Right to sue – Investigate defences
• Recordal of Assignment? available
• Registered User? – Can someone else pay?
– Check your weapons • Source of supply
• Any flaws – e.g. non-use for 3 • Warranties/Indemnity
years provided by suppliers
• Ability to substantiate claims – Do not discount out of court
based on records?
settlement at any stage
– Aggressive but not reckless
– Aim for quick result and
adopt pragmatic approach
• Summary judgment

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Marketing globally

Business Goals,
Plans &
Directions Export Strategy
& Potential
export markets
Clearance & Protection
before launching products
overseas

Marketing Strategy
•Local distributor
•Licensing

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Issues for consideration
• Territorial nature of trade mark rights
– Registration in Malaysia does not offer automatic protection
overseas
• Laws and procedures differ from country to country
• Consider regional or international protection
– Community Trade Marks (CTM) with OHIM, African Regional
Industrial Property Office (ARIPO)
– Madrid Protocol
• “Real & Effective industrial or commercial establishment”
• Deadline for filing application overseas based on Paris Convention
– 6 months from filing in Malaysia
• Costs for protection vary from country to country and the system
adopted
• Use
– Clearance in potential markets
– A&P - adapting to the new market – brand, packaging, labeling
– Standard agreements for appointment of
distributors/licensees overseas

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

 THANK YOU
Wong Jin Nee
Wong Jin Nee & Teo
13A-
13A-5, Level 13A, Menara Milenium
Damansara Heights
Tel: 03-
03-2092 3322
Fax: 03-
03-2092 3366
Email: wjn@wjnt-
wjn@wjnt-law.com

Trade Marks of third parties in this presentation belong to the respective owners and are used
solely for non-
non-commercial purposes

 Wong Jin Nee & Teo

 Wong Rights
EC-ASEAN Intellectual Property Jin NeeCo-operation
& Teo Programme (ECAP II)