ms wong strategy of tm protections

8/8/2019 Ms Wong Strategy of TM Protections

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EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Wong Jin NeeWong Jin Nee

Workshop 1Workshop 1Workshop 1Workshop 1Workshop 1Workshop 1Workshop 1Workshop 1 Trade MarksTrade MarksTrade MarksTrade MarksTrade MarksTrade MarksTrade MarksTrade Marks

Strategy of Trade Mark ProtectionStrategy of Trade Mark ProtectionStrategy of Trade Mark ProtectionStrategy of Trade Mark ProtectionStrategy of Trade Mark ProtectionStrategy of Trade Mark ProtectionStrategy of Trade Mark ProtectionStrategy of Trade Mark Protection

A Malaysian PerspectiveA Malaysian PerspectiveA Malaysian PerspectiveA Malaysian PerspectiveA Malaysian PerspectiveA Malaysian PerspectiveA Malaysian PerspectiveA Malaysian Perspective


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Challenges encounteredby SMEs

Lack of awareness and ways in which trade markscould be protected, commercialized/exploited andenforced

Lack of or limited resources within theirorganisations for protection of intangibleproperty Focus is on tangible assets

Perceived high costs of seeking protection Perceived complexity of issues relating to brand

building and brand protection Lack of accessibility to assistance


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In order to compete globally

IPStrategies Product

differentiation

&brand

image

SMEs

High-va

lue-added,

innov

ativeproducts

Effective

Marke

ting


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IP StrategiesIP Strategies

Trade Marks

Notjustroutinefiling,

prosecutionandmaintenance

Strategi

cuse

tosup

port

companysb

usiness

goals

Create competitivebarriers

Enhance companyscompetitive & market position

Createvaluable&flexible

assets


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A strong brand actsas a promise, leadingfaithful customersto pay a premiumover competitorsproducts/services

Benefits of strongbrand image

Premium prices

Customer satisfaction,trust & loyaltyCredibleRecognisableExploitation opportunities

Trust & Relationship

Vital linkto source& origin

DifferentiationFrom

Competitors

BadgeOf

Quality &Assurance of Consistency

PreventConsumerConfusion

Powerful Marketing& Promotion

Tool

Shorthand symbols ofFeelings, lifestyle and images

Associated with products/services

BrandsBrands

Functions of a brand


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Legal Regime for protection of

Trade Marks in Malaysia

Companies/BusinessNames

Domain Name

Common law rightsTrade Marks Act 1976

MyIPO45 Classes of goods

& servicesRights available

upon registrationCovering samegoods/services only

.com.myFirst come first served

MYNIC

Criminal RemediesTrade Descriptions Act 1972onsumer Protection Act 1999

Trade Marks

Reputation & goodwillMisrepresentation

Damage

USE, USE & USERegistered &

Unregistered marks[trade dress/get-up]

SSMRegistry of CompaniesRegistry of Businesses

No cross check

with MyIPO


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Filing ofApplication

RegistrysConfirmation of

Application

Examination

Refusal ofRegistration*

Advertisement inGovernment

Gazette

Issuance ofRegistrationCertificate

Renewal

RegistrarsReport Issued

ConsideredReply

Reconsiderationby Registrar

Hearing byRegistrar Rejection*

ApplicationLapses/

Abandoned

Acceptance

Opposition

Hearing byRegistrar*

The Process of Registration in Malaysia

Accept Refuse

IfRegistraraccepts

applicationafterhearing

* An appeal may be made to the High Court against the decision of the Registrar


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From clearance to

registration

Screening/Clearance

Filing

Prosecution

Identification/Selection

Registration

Maintenance

10 yearsfrom filing

date,renewableevery 10years

Searches at

MyIPO, SSM,Internet, tradeinquiries


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Why Register A Trade Mark?Why Register A Trade Mark? Is registration compulsory? NO Advantages:

Cheaper and simpler to enforce

Gives proprietor the exclusive right to usemark on goods/services covered by

registration Entitles proprietor to prevent unauthorised

use of identical or confusingly similar mark

for same goods or services Easy proof of ownership

Registration itself a property, even withoutuse


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What is a Trade Mark?What is a Trade Mark?A mark includes a device, brand, heading,

label, ticket, name, signature, word, letter,

numeral or any combination thereofA trade mark means a mark used or

proposed to be used in relation to goods

or services for the purpose of indicating aconnection in the course of trade betweenthe goods/services and the person havingthe right to use the mark to be registered


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How to devise a good Mark?How to devise a good Mark? Inherently distinctive

Coined, fanciful, original orinvented words

Avoid identical or similar marks Memorable and endurable

Know your customers Fit the products/services or

image of business Word with no or little relation to

goods or services Avoid descriptive or generic words

Avoid geographical name orsurname

Avoid deceptive words(quality/GI)

Do not adopt offensive andscandalous marks

positive connotations

Avoid prohibited marks

Do not contravene any legalrestrictions i.e. marks whichare contrary to law

Name, represented in special or particular mannerSignatureInvented wordsWords having no direct reference to character or quality of goods/services,not being, according to ordinary meaning, a geographical name or surname

Any other distinctive mark

Distinctiveness[capable of distinguishing] =

inherent capability to distinguish+factual distinctiveness


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Examples ofTrade Marks Words (e.g. Coca-Cola,

Kodak, Cialis,Marrybrown,Timberland)

Numbers (e.g. 4711,555)

Letters (AT&T) Logos, Devices,

Symbols Labels

Slogans (its the realthing, dont leavehome without it)

Signatures (PierreCardin)

Combination (Levis501, McDonaldsgolden arches & ImLovin it)

Colours


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Non-Conventional TradeMarks

Colour Product shape (3Ds)

Packaging

Label


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Ralph & FriendsRalph & Friends

Ralph Lifshitz, a NewYork designer chose

to change unpleasantsounding name toRALPH LAUREN

SONY, SHARP,

PANASONIC, clear,distinct English namesto penetrate Americanmarket

Cosmetic industrygoes for soft, invisible

message (ETERNITY,ROMANCE) or a solidweight (OPIUM,FAHRENHEIT)

PADINI, not ofItalian origin. Foundedby Yong Pang Chaun, aMalaysian


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Maintaining theMaintaining the FedExFedExreputation and its brandreputation and its brand

image is a top priority forimage is a top priority for

me, since it is one of theme, since it is one of the

most valuable things themost valuable things the

company hascompany hasFred Smith, founder andFred Smith, founder and

chairman ofchairman ofFedEXFedEX


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2005 TOP 10 BRANDS2005 TOP 10 BRANDS

Coca-Cola =US$67.5b

Microsoft =US$59.9b

IBM = US$53.4b

GE = US$47b

Intel = US$39b

Nokia = US$26.5

Disney =US$26.4bMcDonalds =US$26b

Toyota =US$24.8b

Marlboro =US$21.2b

Source: Business Week/Interbrand

Brand value


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Proper Symbols = registered

Offence to use if mark ispending

= trade markright is claimed,pending mark


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Guidelines on proper TM use Use TM consistently & properly

Use only specific font, colour or size Do not modify or change the representation of TM Do not vary the spelling, crop it, superimpose, use as

background/wallpaper etc Use TM as adjective, not as noun A can of Coca-cola beverage A pair of Levis jeans

Distinguish TM from the rest of text PLAYSTATION game software

Timberland shoes Do not use TM in possessive form

Coca-colas taste X Taste of Coca-cola beverage -

Do not use TM as a verb

It is easier to xerox your document X It is easier to photocopy your work using a XEROX machine -


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The Power of Branding

Escalator

Elevator

Nylon Zipper

Thermos

Aspirin Yo-yo

Tupperware

Xerox

BRAND GENERICIDE Downside of famous brand

becoming household word - riskof losing rights to the trade mark

Generic mark - becomessynonymous with all products of a

given kind Xerox runs aggressive campaignsto inform trade & public that itsbrands are valuable, indicating its

products and not those of anyother company


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When you useWhen you useWhen you useWhen you use XeroxXeroxXeroxXerox

the way you usethe way you usethe way you usethe way you use aspirinaspirinaspirinaspirinwe get a headachewe get a headachewe get a headachewe get a headache

When you useWhen you useWhen you useWhen you useWhen you useWhen you useWhen you useWhen you use XeroxXeroxXeroxXeroxXeroxXeroxXeroxXerox

the way you usethe way you usethe way you usethe way you usethe way you usethe way you usethe way you usethe way you use aspirinaspirinaspirinaspirinaspirinaspirinaspirinaspirinwe get a headachewe get a headachewe get a headachewe get a headachewe get a headachewe get a headachewe get a headachewe get a headache

Boy, what a headache! And all becauseBoy, what a headache! And all because

some of you may be using our name in asome of you may be using our name in a

generic manner. Which could cause it togeneric manner. Which could cause it to

lose its trade mark status the way thelose its trade mark status the way the

namenameaspirinaspirindid years ago.did years ago.THE DOCUMENT COMPANYTHE DOCUMENT COMPANY

XEROXXEROX


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A holistic approach

Commercialization

Policing/Enforcement/

Dispute ResolutionManagement/

Audit

Protection


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Main Ways to Exploit TradeMain Ways to Exploit Trade

MarksMarks Using trade marks to gain competitive edge Sharing them with others

Licensing & Franchising JV/Strategic Alliance Outsourcing

Selling trade marks Disposing off separately from other corporate assets

Using trade marks belonging to others Licensing & Franchising Co-branding Knowing what to avoid to prevent disputes


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Corporate PolicyIP Awareness & Culture Establish, adopt and implement corporate policies

for Creation, Protection, Maintenance,Commercialisation and Enforcement of IP assets Awareness amongst Management & Staff Integration of IP goals into overall business plans and

strategic directions of SMEs Periodic audits and strategic analysis

Are the trade marks being protected and maintained? Are they fully and optimally exploited? Are any redundant brands which could be utilised or

further exploited?


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Proper retention of records Crucial to adopt a proper record retention policy To be effective, such policy has to be implemented and practiced by the

top management Important to SMEs for various reasons:

Evidence of ownership & subsistence of rights

Overcoming office actions, objections or oppositions When licensing/franchising trade marks to others with extensive

indemnities and warranties When acquiring licenses from third parties to make, use, sell or

distribute products with indemnities and warranties provided; When entering into a joint venture/strategic alliances with another

entities, co-branding relationship As a sword or shield

face possible litigation involving their IPR, whether as claimants orrespondents;

When seeking investment or financing in their businesses based ontheir trade marks;

When accepting security interests in intangible assets; As a tool in valuation process Consider listing in the near future


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Third parties

rights

ProtectionExploitationEnforcement

Ownership

Parent,Subsidiary

TransactionsExtent of use

A&P

Creation,Clearance &Adoption

Types &Nature ofdata to beretained

RecordRetentionPolicy


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Heading off InfringersHeading off Infringers Danger of doing nothing

No interim relief Loss of rights

Encourage others to infringe Prevention is better than cure

Discourage infringement or unauthorised use of trade marks Education

Internal employees External agents, distributors

Warning Notices Local dailies/industry newsletters Other forms of publicity

TM Notices & markings on goods/packaging/collaterals Successful enforcement actions

Alternative Dispute Resolution Issuance of Cease and Desist letters Mediation/Arbitration/Settlement


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Going to WarGoing to War Sword

Is litigation necessary? Infringer refuses to comply

with C&D To avoid an image of paper

tiger

Right to sue Recordal of Assignment? Registered User?

Check your weapons Any flaws e.g. non-use for 3

years Ability to substantiate claims

based on records? Aggressive but not reckless Aim for quick result and

adopt pragmatic approach Summary judgment

Shield Any way to avoid litigation

Settlement on a withoutadmission of liability basis?

Licensing/acquisition? Challenge validity of TM?

Investigate defencesavailable

Can someone else pay? Source of supply Warranties/Indemnity

provided by suppliers

Do not discount out of courtsettlement at any stage


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Marketing globally

Marketing StrategyLocal distributorLicensing

Clearance & Protectionbefore launching products

overseas

Export Strategy& Potential

export markets

Business Goals,Plans &Directions


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Issues for consideration Territorial nature of trade mark rights

Registration in Malaysia does not offer automatic protectionoverseas

Laws and procedures differ from country to country Consider regional or international protection

Community Trade Marks (CTM) with OHIM, African RegionalIndustrial Property Office (ARIPO) Madrid Protocol

Real & Effective industrial or commercial establishment Deadline for filing application overseas based on Paris Convention

6 months from filing in Malaysia Costs for protection vary from country to country and the systemadopted

Use Clearance in potential markets

A&P - adapting to the new market brand, packaging, labeling Standard agreements for appointment ofdistributors/licensees overseas


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ms wong strategy of tm protections

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