Owning a registered trademark gives the owner exclusive rights to do the following:
- to use the mark on its goods and services; and
- to exclude others from using the same or very similar mark on same or related goods and services.
However, this monopoly of rights is given, by Trademark Offices worldwide, only to owners who own trademarks which are distinctive (or unique) per se or marks which have become distinctive through use (where long use of the mark in the market has educated the market to view the non-distinctive mark as a trademark).
From the brief explanation above, you can see that it is easier to obtain trademark rights if you have a distinctive trademark per se as you do not have to prove to the Trademark Office that you have used your mark for a long period of time in the relevant market and thus, have acquired distinctiveness through use.
The question now arises, what is a distinctive mark? And does your mark qualify as a distinctive mark?
The easiest way to describe a distinctive mark would be as follows:
A MARK WHICH IS NOT DESCRIPTIVE AND NOT GENERIC
Descriptive marks are marks which directly identify the characteristic, type, quality or nature of the goods or services. The terms used in descriptive marks are usually adjectives. Examples of descriptive marks are as follows:
EUROJOBS for employment agency service awarding temporary and fixed posts in Europe.
BEAUTIFUL SKIN for cosmetics and skin care products
JUICY for fruit juices
CLEAN & SHINY for wine glasses
Generic marks are names of the goods or services themselves. It is typically a noun. Examples of these kinds of marks are as follows:
SUMMER ALE for light-coloured beer which was batch-brewed for summer.
M4 for rifles
DRESSES for womenswear including dresses
SANDWICH SHOP for a café or bakery selling sandwiches
Descriptive and generic marks will generally be objected to by the Registrar of Trademarks in most countries, on the basis that words which are descriptive and generic in the particular industry, should not be given monopoly to one trader, as other traders in the same course of trade may wish to use the same words or phrases to describe their goods or services.
Therefore, in the event an application for registration of a descriptive or generic mark is filed, chances of the Registrar of Trademarks raising an objection to this mark is extremely high, not only in Malaysia but in every country you intend to venture into.
In the event the mark is refused registration, your business plans and strategy would have to be reconstructed and the branding and marketing process begins all over again.
Alternatively, you can choose to continue to use the mark and apply for registration once you view that the mark has acquired distinctiveness. However to achieve a successful registration at this stage, you have to adduce sufficient evidence to prove this fact to the Registrar of Trademarks. Even with the evidence of use, there is no guarantee that the Registrar will grantw exclusive rights to you for your descriptive or generic mark. We have had Registrars who refused registration on the grounds that it is unjust to other traders who want to use the descriptive and generic words to describe their products/services on their promotion material, website and packaging.
For this reason, we strongly advise for all businesses to select their trademarks wisely, avoiding descriptive marks and generic marks altogether. Creatively coin a fanciful trademark which stands out in your industry. Take for instance the invented and meaningless marks below:
IKEA for furniture and household items
KODAK for films
CANON for cameras
NOKIA for mobile phones
SONY for electrical gadgets
Local examples of coined marks would be:
MAXIS for telecommunication services
LEWRÉ for shoes
PADINI for clothes
MAMEE for noodles
Alternatively, you can even choose to use an arbitrary mark on your goods and services. With this, we mean use a term, word or phrase that is common and used daily by the public but in relation to goods and services not associated with the word. Examples of arbitrary marks are produced below:
APPLE for computers
BANANA BOAT for sunscreen
ORANGE for telecommunication services
The above article is only intended to offer a brief overview of matters of concern to brand owners. It should not be treated as legal advice on issues discussed. Should you have any queries during the selection process of your trademark, please feel free to contact us for professional and competent advice.