This article explores what constitues an eligible trademark and the important truth of creating such eligible trademark, particularly focusing on the common pitfalls to avoid when aiming for trademark registration and protection.
The Misconception
It is not uncommon for the public to hold the misconception that a logo is an eligible trademark for registration simply by virtue of its usage over time or its resemblance to a trade name registered with the Companies Commission of Malaysia (CCM).
As a result, this misconception has resulted in numerous trademark registration applications being rejected or objected to, leaving logo owners puzzled or perplexed by the reasons provided by the Intellectual Property Corporation of Malaysia (MyIPO).
In addition, some logo owners may even find themselves in a situation where logos they have been using for many years are actually not eligible for trademark registration under the Trademarks Act 2019 (TMA 2019). This might occur because a similar logo design has already been successfully registered by another owner, or because the logo design does not meet the legal requirements outlined in the TMA 2019.
While it is noteworthy to mention that a logo may serve as a word mark, a device mark, or a combination of both, a registrable mark under TMA 2019 is not limited to logos alone. However, for the purpose of this article, we will mainly focus on logos consisting of word marks, device marks, or a combination of both.
We will now explore a few strategies to avoid the main pitfalls of designing a logo that does not meet the requirements for trademark registration.
(A) The logo should not describe the nature of the business
It is important to note that one should avoid logo designs bearing names or slogan describing the nature of the business such as “DR. AESTHETIC”, “DR. TUITION”, “BEST NOODLES IN TOWN”, “NASI LEMAK BEST”, “AYAM PENYET FIRE” etc.
Explanation:
These names and slogans are in contrary with Section 23 of the TMA 2019 which outlines the absolute grounds for refusal of trademark registration. To elaborate, it specifies that a trademark cannot be registered if it is customary in the current language or established practices of the trade, or those that are descriptive of the goods or services.
(B) The logo should not be similar with an earlier trademark
One should also avoid creating designs that could be confused with existing trademarks, such as altering the “Apple” design mark to resemble a “Pear,” as this similarity could potentially confuse the public.
Explanation:
To prevent such pitfalls, it’s advisable to conduct a trademark search in MyIPO’s database before finalizing the logo design. This will help ensure compliance with Section 24 of the TMA 2019, which prohibits the registration of trademarks closely resembling existing ones.
(C) The logo should refrain from containing any geographical indicators.
One should refrain from including words or slogans in the logo that reference a specific geographical area, such as “FUZHOU RED WINE”, “FRENCH MACARONS”, “SAMBAL INDONESIA”, “THAI MASSAGE” and similar.
Explanation:
This is in contrary to Section 24 of the TMA 2019 whereby it could potentially confuse the public regarding the origin of the goods or services.
Conclusion
In conclusion, while the mentioned pitfalls and strategies serve as helpful references, they are not exhaustive. Therefore, it’s recommended for startups or business owners intending to register their logo to involve a trademark agent during the initial design phase. This not only enables an assessment of the logo’s eligibility for registration, but also facilitates adjustments to the logo designs to ensure compliance with the registrable requirements stipulated in the TMA 2019 before finalization.
Reference: https://www.myipo.gov.my/en/trademark_registration/
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