I thought… “I am not allowed to manufacture, sell, or distribute a product in Malaysia that is already patented in the US.” 

This is not totally true, it depends. If you want to manufacture any product that is already patented in the US, you should at least take the following steps.

First, check at the Malaysian Patent Office records whether the corresponding patent has been granted in Malaysia and if so, whether the Malaysian patent is still subsisting or whether the patent has lapsed or expired. If the answer to the last question is yes, then you are at liberty to manufacture the product disclosed in the patent. But what you cannot do is to manufacture the product and export the product to other countries before ensuring whether any patents corresponding to the US patent are still subsisting. You also have to consider other related IP rights such as trademark rights, design rights and copyright issues. This area of IP rights and the clearance of these rights before manufacturing, selling or exporting the products is complex and you are strongly urged to seek advice from experienced IP practitioners before you decide to manufacture a product disclosed in a foreign granted patent.

I thought… “That a similar trademark which has been registered earlier will be a barrier against the registration of my brand”

Definitely! Let’s say that you’ve come up with a catchy and unique brand for your products/services, and then conduct a search at the Malaysian Trademark Office (MyIPO) prior to filing your trademark application. If there is an identical or very similar trademark which has been registered already, your application will be objected to by the Examiners at the Trademark Office on the basis that both marks cannot co-exist as the co-existence will confuse customers. Priority will be given by the Examiners to the mark which has an earlier filing date.

At this stage, you have two options;

(i) You can change your trademark, which would be a shame as you would have to brainstorm all over again to come up with another catchy brand for your goods – and we all know how hard it is to create a brand that will become memorable and well-liked!

Or,

(ii) You can investigate whether the earlier mark is still in use by the owner of the mark. If the mark has been registered but has not been used (without good reason, e.g., factory burnt down, lack of raw material, discontinuance of the business, and so forth) for the past three consecutive years, then the mark can be removed from the Register.

In our previous articles, we have repeatedly stated that registered trademarks last for a lifetime if their registration is renewed every ten years. Unfortunately, if the mark has not been used for three years in a row, a third party can have the mark removed from the Trademark Register. This leaves the mark free for all to use.

Many countries allow for trademarks which are not used for a period of time to be removed from the country’s Trademark Register. This particular law may not be favourable to trademark owners, but the reasoning behind it is that the monopoly given by the Government is being misused by the trademark owner when he/she registers a mark and chooses not to use it. It is not fair for the owner to hog the mark and keep the public from using it.

It is therefore very important for all brand owners to take note of the above. The Courts, when considering whether the mark is still in use, will analyse the use shown by the owner and decide whether the use was genuine use or merely token use to avoid their mark being cancelled.

Brand owners should be careful. Yes, trademark registrations can last indefinitely… on the condition that they are used!

I thought… “Is there a time limit on a Trademark? Will I be able to use a trademark after 10 years?”

Trademarks have an infinite lifetime.

Registered trademarks, on the other hand, are renewable every ten years on a limitless basis. This means the owner of a trademark can own that trademark for generations to come as long as the mark is renewed before its expiry date every ten years.

In 2002, the International Trademark Association (INTA) conducted an analysis on the world’s oldest registered trademarks and the results of the survey revealed the following:

• The first Australian trademark to be registered was in 1905, where a pine tree logo, still in use by Fisons plc for chemicals, was registered.
• In 1874, the trademark NESTLE’S EAGLE BRAND, became the first registered mark in Hong Kong, used on condensed milk. The mark is still in use today.
• In Japan, the design of a seated figure for pills and wound dressings was registered in 1884.
• The famous Bass red triangle logo for beer gets the recognition in the UK as the first registered mark, registered in 1875.
• Whereas, in the US, an eagle logo used for paints by Averill Paints (which is no longer in use) was the first registration, registered in 1870.
• In Malaysia, the trademark New Tide was the first trademark filed in Malaysia, registered in 1983.

However, although protection can be for an infinite period, like almost everything in business, the marks used at the start of the business will evolve over time. Marks need to be revamped and freshened up to be relevant to the next generation of consumers. Many well-known marks have evolved in the past years to be the trademarks they are today. Observe how the trademarks Pepsi and Shell have evolved where changes are significant, fresh trademark application should be filed.

I thought… “A UK granted patent is enforceable in all the Commonwealth Countries”

Absolutely NOT! A UK granted patent is enforceable in the UK only. While some countries (notably some small former British Colony countries) have inherited provisions to allow re-registration of UK granted patents in their country without the need for further examination by their local patent office, this procedure of granting patents is being discontinued by many former British Colony countries.

Even Malaysia had a provision for re-registration of UK granted patents in Malaysia for the UK patent to the enforceable in Malaysia. This provision was repealed when our own Patents Act 1983 came into force. Still, UK patent owners may use their patents as a basis for the grant of a corresponding Malaysian application, but that is a story for another day. Nevertheless, some of the former British colonies still allow re-registration of UK granted patents.

Readers are strongly advised to check with their patent agent to know which of the former British Colonies still adopt re-registration of UK granted patents if there is interest to obtain patent rights in any of the countries.

I thought… “Every product can be copied and be made in other countries such as in China, Thailand or Vietnam”

If the product or the process of making a product can be and is protected by Intellectual Property Rights in Malaysia, then any import, sale, or manufacture of the product which is protected by way of a patent, registered industrial design, copyright or trademark would be an infringement of the Intellectual Property Rights. Infringing acts can be stopped by an order of a court.

I thought… “Patent Rights are for the ‘Big Boys’, and my business is only a SME, therefore Patent is not for me!”

Even the present day, large companies started life as an SME years ago with a unique and often patented product. The patent rights would have given near monopoly rights to the company to manufacture and sell the product exclusively at a premium price to enable the company to grow to where it is today.

The size of the company is not relevant. What is important is the potential commercial value of the patent and the desirability of the product in the market. To assess that, the potential commercial value of the invention you have created or improvements made in your business, before you declare that patent rights are not for you.”

I thought… “I own a restaurant. So I only need to bothered about Trademark Rights”

When dining out, think of what attracts you to a restaurant, besides parking facilities! Is it the catchy name, the interior decoration (furniture, display items on the wall, etc), menu card with coined menu items, uniquely designed cutlery and plates, the uniform of the restaurant staff? These creative elements in the restaurant business can be protected and thereby kept away from competitors’ reach:

1. Name of Restaurant. Often the trade name of the restaurant (i.e. the name on the signage, menu card and so on) may not be the same as the incorporated name of the restaurant. For example, McDonald’s® may be the trade name of the restaurant but the owner of the fast-food chain in Malaysia is Golden Arches Restaurants Sdn Bhd. Therefore, unless the trade name is registered as a Trademark in the country, others may adopt identical or similar names.

2. The interior and staff uniform. The general ambiance of the interior of a restaurant is difficult to protect, unless the other party copies all elements of the interior. However, if the owner designs or instructs a manufacturer to design an exclusive interior item (tables, chairs, counters, cutlery etc), the Industrial Design rights of the articles (the shape) can be owned by the restaurant. Once registered, no one can reproduce the same articles, even the original manufacturer of the articles. Even photographs, artistic paintings and the uniform of the staff can be protected by copyright and the rights can be assigned to the restaurant. No one can reproduce the same photographs, paintings or uniform.

3. Menu Card and Menu Items. The design of the menu card with all its artistic work, if original, would be automatically protected under Copyright law. Of course, if an external designer/artist was engaged to design the card, then the restaurant should obtain an assignment of the copyright if there has been no contract of commissioning the work.

4. Recipe. Most restaurants would keep the recipe for their signature dishes as trade secrets. However, calling the recipe as a “trade secret” is insufficient if the management does not take appropriate management steps to maintain the recipes as trade secrets – just like how Coca-Cola® or Kentucky Fried Chicken® keep their recipes as trade secrets.

5. Shape of food items. Certain food items, like biscuits, lollipops, cakes, ice-cream, fruit carvings and such can be protected by Industrial Design Laws. If the restaurant owner produces naan bread or kuih lapis (steamed layer cake) in unique shapes then the shape can be protected by Industrial Design.

The business of running a restaurant can involve a lot of creativity. Unless the owner takes steps to protect the creative elements in the business, he has no one to blame but himself if his ideas are copied. Of course, copying is done once the business is successful, as success generally begets imitations. But action to protect the creative elements must be taken much earlier in the business to stop the copycats even before they begin!

Note: The trademarks identified in the article belong to their respective owners. KASS does not claim any proprietary rights whatsoever; they are used merely for educational purposes.

I thought… “If I keep changing my product, I cannot afford to patent each and every change in the product”

The truth is, it is not necessary to patent every change or modification made in your product unless such change is a non-obvious or a significant change. Generally, a well-drafted patent description would anticipate such changes and still include them in the patent description as alternate embodiments. Minor change in size, materials used in the manufacture is the core of a mechanical invention or change in the concentration of ingredients or operating temperature is the core of chemical invention can be anticipated and provided for in the patent application and there is no need to file additional patent application for such changes/modifications. Each case must be analysed in its own right as each invention by definition is unique.

Remarks: This is not legal advice; it is mere information for knowledge on the patent system.

I thought… “Even if I get a patent, a big company can invalidate the patent with its large financial resources”.

The same argument can be said for security systems installed in your house. A determined thief can still overcome the security barriers, but the security system is a strong barrier and deterrent to a thief. He would rather attempt robbery in a house with no security system or a weak security system. Similarly, a strong patent is a barrier to would-be infringers. Without patent protection, a commercially successful invention would invite competitors to copy the invention without fear of any legal suit against them. It is not easy to invalidate a well-researched and well-drafted patent

I thought… “Patent Rights are for the “big boys”, and my business is only a SME. Therefore patents are not for me”

While it is true that the “big boys” with their large R & D budgets do file for and obtain a lot of patents to maintain their competitive advantage in the marketplace, even SMEs and individuals can obtain patents for any invention taking place in the shop floor or in the workshops of the factory.

Remember Thomas Edison was an individual inventor working in the workshop and invented and patented the incandescent electric light bulb and created a multi-million dollar industrial research laboratory.

Even minor but new and non-obvious improvements or modifications to a product or the process of manufacture of the product are eligible for patent rights. Consider examples of minor patented inventions which yielded large sums of money to the patent owners.

Special glue applied on POST-IT® memo-pad. Use of ethylene gets to increase the production of latex in rubber trees.

So SMEs should not shy away from obtaining patent rights for their invention no matter how trivial it may appear to be at first instance.