A descriptive name has its advantages, but can be very hard to protect legally
Register your mark, or you might find yourself in court when you go to market
Bread & Kaya by Foong Cheng Leong
WHEN George Eastman, founder of Eastman Kodak Company, chose the name Kodak for his camera, he explained why:
… because I knew a trade name must be short, vigorous, incapable of being mis-spelled to an extent that it will destroy its identity, and, in order to satisfy trademark laws, it must mean nothing. The letter K had been a favourite with me – it seemed a strong, incisive sort of letter. Therefore the word I wanted had to start with K. Then it became a question of trying out a great number of combinations of letters that make words and ending with K. The word Kodak is the result.
Although great advice from a man 100 years ago, it is difficult to come out with such special name for a product. It is enticing for traders to choose a name that best describes their products. It saves them the trouble of promoting extensively or even explaining to customers what the name is all about.
But the use of a name which directly describes one’s goods or services generally attracts problems.
A few years ago, the National ICT Association of Malaysia (known by its Malay-language acronym Pikom) initiated action against EM Exhibitions (M) Sdn Bhd and one of its directors for using the trademark ‘PC EXPO’ for its computer exhibitions.
Pikom alleged that the mark PC EXPO infringes and passes off its trademark ‘PC FAIR.’ The High Court held that the ‘PC FAIR’ is a common descriptive term and is used by numerous traders in the computer industry.
Thus, in short, the mark PC FAIR is not protectable and EM Exhibitions (M) Sdn Bhd is free to use the mark PC EXPO. [For the full judgement, click here].
The moral of the story is, always choose a distinctive mark. A distinctive mark is a mark which distinguishes your products from other traders. A distinctive mark can be registered and protected.
Although an unregistered mark can also be protected, you will need to produce voluminous evidence in court to show that your mark is protectable.
A distinctive mark should be a mark that does not have direct reference to the character or quality of your products. For example, the ‘e-Commerce Shop’ trademark for websites is not a distinctive mark as it describes the character of your product.
However, if you name your fruit stall ‘e-Commerce Shop,’ then you may be able to register it as it does not describe the goods and services provided by your stall.
If you are selling clothes on your e-commerce store, you should avoid using words like ‘clothing,’ ‘fashion,’ ‘haute’ or ‘couture’ as your trademark unless it is combined with a distinctive word or words such as ‘Digital News Asia Fashion.’ [A hint we should diversify? – ED]
Words that extol your products also should be avoided. For example, ‘cheap,’ ‘good,’ ‘great,’ ‘pretty,’ ‘fabulous,’ ‘sexy,’ ‘awesome,’ ‘cool,’ ‘cute’ and ‘best.’
The mark also should not be a name of a place – for example, ‘Silicon Valley’ for software.
Lastly, using a mark which is similar to your competitor’s trademark is a big no-no! If you do so, you’ll be beaten down with a lawsuit before you can start doing business.
You should do an online search at the Intellectual Property Corporation of Malaysia’s database.
Notwithstanding the above, there is nothing wrong with using generic words as your trademark. However, you may not be able to obtain protection.
If you wish to use a generic word, it should be accompanied with a distinctive word or set of words – for example, ‘FCL&Co Legal Services.’
Your intellectual property is an asset. Registration gives you exclusive rights over the mark. You may sell it or license it.
There are many horror stories where marks were misappropriated by third parties when the owners did not register them. This usually results in a long and expensive legal suit. Some even had to change the marks that they had been using for years.
You may register the mark yourself by heading to the Intellectual Property Corporation of Malaysia or alternatively, engage a Trade Mark Agent to assist you. The latter would be recommended as they can provide you with proper advice and services.
To conclude, choose a distinctive mark before rolling out your products!
Foong Cheng Leong is a blogger pretending to be a lawyer, and a lawyer pretending to be a blogger. He blogs at xes.cx and foongchengleong.com, and tweets at @xescx and @FCLCo.
Previous Instalments of Bread & Kaya:
Using Facebook's marks for your business
Limited Liability Partnership: An alternative business structure
Bread & Kaya: Start-ups, get your house in order
Bread & Kaya: Looks can be deceiving!
Attention e-commerce businesses: Fraud, the law and you
PDPA: Businesses have responsibilities and burdens
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