The Malayan tiger is a ubiquitous national icon. A symbol of bravery, charm and regality, it is deservedly honored and depicted on the Malaysian Coat of Arms. Malaysia’s first national car, PROTON, adopted the abstract tiger-head as its emblem and badge-mark for its cars. The leading bank in Malaysia, Malayan Banking Berhad or Maybank, and the Football Association of Malaysia (FAM) also have the tiger as their emblem and logo.
This shows the close nexus that Malaysia and Malaysians have with the tiger. Most Malaysians believe that the National Sports Council (NSC) adopted the tiger stripes as a pattern for the Malaysian squad jerseys for the same reason – to associate the athletes with a symbol of bravery, strength and grandeur.
However, it was shockingly revealed recently that NSC is not the true owner of the ‘three tiger stripes’ pattern affixed on the Malaysian squad jerseys. This controversy – highlighted in the local newspapers for several weeks – concerns several parties, namely Mesuma Sports Sdn Bhd (Mesuma), National Sport Council (NSC), Olympic Council of Malaysia (OCM) and Telekom Malaysia Berhad (TM).
Mesuma is a retailer and wholesaler of sportswear, sports equipment, trophies and premium sports items and has been actively involved in organizing events, marketing, outdoor advertising and client servicing. They have been engaged by OCM to be the distributors of the official attire for the national contingent since the year 2006. They will also provide the official sports attire for the national contingent to the SEA Games in Indonesia later this year and to the London 2012 Olympics. Mesuma’s contract with OCM ends after next year’s Olympics.
The tiger stripes in contention here initially consisted of five tiger stripes when it was officially launched by then Deputy Prime Minister Datuk Seri Najib Razak. The tiger stripes design was obtained through a contest organized by the sports ministry, after which it was re-designed and touched up, creating the end product of five tiger stripes. Unfortunately, NSC, despite being the national sports body, neglected to secure the ownership to the five tiger stripes design, which would eventually come to function as a trademark.
Mesuma, being the official distributor of the attire since 2006, subsequently reduced the number of tiger stripes from five to three in order to make the jersey sponsor-friendly (i.e. to allow more space for the sponsor’s brand to be affixed to the jersey). Without consulting NSC, Mesuma applied to register the trademark of the three tiger stripes on 9 July 2009 and obtained registration on 19 February 2011. They therefore have proprietary rights over the three tiger stripes design for 10 years from the filing date, expiring on 2019.
Mesuma’s three tiger stripes
The NSC and OCM, both government agencies who did not own registered rights to the three tiger stripes trademark, later entered into an agreement with TM, allowing TM to use the three tiger stripes trademark and the Olympic rings on jerseys. TM was also allowed to use the trademark for its marketing and promotional activities and souvenirs, and given dealership rights to produce and distribute merchandise bearing the three tiger stripes and the Olympic rings.
Mesuma are obviously disputing the rights awarded to TM by NSC and OCM. Mesuma’s lawyers have stated that the three tiger stripes design is owned by their clients and the three tiger stripes design is synonymous with brand “Mesuma”.
Although this dispute has yet to be resolved and is speculated to be heading to Court, the Government stated recently that it will negotiate an out-of-court settlement with Mesuma for use of the trademark on jerseys by TM.
From an intellectual property standpoint, this is likely to mean that Mesuma will grant a license to TM to use the three tiger stripes trademark for a specific period of time (5 years in accordance to the agreement NSC and OCM entered into with TM).
What we at KASS find interesting is that this dispute came about due to lack of knowledge of IP law. If they (NSC or OCM) had at least applied to register the trademark consisting of five tiger stripes, they would have had grounds to argue or challenge the registration of Mesuma’ s three tiger stripes on the basis that the three tiger stripes are not distinctive and substantially similar to the five tiger stripes. As both trademarks are tiger stripes, regardless of the number of stripes it has, the general public would perceive it to be the same mark as they resemble each other. However, in this case, neither NSC nor OCM have trademark rights to any tiger stripe marks.
Further, if NSC was aware that it had rights to the tiger stripes mark, then the moment Mesuma (who is merely the producer and distributor of the national squad’s attire) reduced the five stripes to three stripes, NSC would have clarified to Mesuma that it is still the owner of the tiger stripes mark. One would understand if a national sports body claims rights to the trademark used on jerseys worn by our national athletes!
Having said that, this interesting case has yet to be concluded and we will continue to monitor the progress to keep you updated. Since this issue concerns government agencies and our national squad and its supporters, a just and adequate decision is needed. We hope to report one in due course.
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