[#17] I Thought…

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!

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.