Marks are a very valuable form of intellectual property because they become closely associated with quality and consumer expectations of a product or service. This explains why most entrepreneurs would want to register their marks, whatever the cost. However, before creating a mark, one of the things that business owners should realize is that they cannot incorporate any flags or national emblems into their mark. In the flurry of the upcomingMerdeka Day celebrations, business owners may incorporate national emblems or flags into their trademarks without realizing the consequences of doing so. Although most people who seek to promote their marks do not intend to make reference to the national emblems and merely wish to promote their nationality or affiliation to a known group or state, the law does not allow such marks to be used by entrepreneurs. This restriction is not new and is prevalent in many countries. The rationale behind this law is that the state, its bodies and institutions should have a monopoly on the use of state symbols.
Apart from the plain duplication of such symbols, making an ‘imitation’ of it could also get the entrepreneur into hot soup! Such was the scenario in a case in Poland where the Supreme Administrative Court (NSA) of Poland confirmed that a trademark containing a representation of a white eagle similar to the Polish national emblem (as shown below) could not be registered.
Applicant’s mark Representation of Poland’s national emblem
Another example is an English case where the applicant applied to register a sign consisting of an image of a maple leaf with the letters ‘RW’ beneath it (shown below). The examiner refused the registration of the mark, stating that the sign gave the public the impression that it was linked to Canada as the maple leaf was a copy of the emblem of that country.
Applicant’s mark Representation of Canada’s national emblem
Taking this into the Malaysian context, if any applicant tries to incorporate the pair of “Star and Crescent” or national or state flags into their trademark which mimics the actual emblems or flags, their mark will certainly be rejected by the Intellectual Property Corporation of Malaysia (MyIPO). The word ‘ASEAN’, royal crowns, arms, crests, armorial bearings or insignia will also be refused registration due to the reasons mentioned earlier.
Having said that, if the emblems or flags are used, but in a different manner of representation, such use may be found permissible. For instance, using a creatively depicted emblem which is different from the national emblem or our country’s state flags is acceptable.
Also, using the colors of a flag is not the same as using the flag itself. While it might be difficult to get the “Star and Crescent” registered, it is completely legitimate to create a red, yellow, blue and white trademark for a product. It is merely a matter of being creative with the choice of the mark used. If the concept is taken, but the actual national emblem or flag is not copied, chances of the mark being accepted by the MyIPO are high.
In any event, should any doubt arise in the minds of entrepreneurs on whether the trademark they use or intend to use is contrary to the law, professional advice should be sought immediately. Expenses on promoting their trademark and the products or services the marks are affixed to should be put on hold until they are certain that their mark is a strong mark.
Having passed on these words of advice, we at KASS can now celebrate the upcoming Merdeka Day with more enthusiasm and less worry. Selamat Hari Merdeka to everyone!
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