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Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Patent for the fountain pen that could store ink Utility Model for the
Patent for the fountain pen that could store ink Utility Model for the
Patent for the fountain pen that could store ink Utility Model for the
Patent for the fountain pen that could store ink Utility Model for the
Patent for the fountain pen that could store ink Utility Model for the
Patent for the fountain pen that could store ink Utility Model for the
Patent for the fountain pen that could store ink Utility Model for the
Patent for the fountain pen that could store ink Utility Model for the
Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors,
Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors,
Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors,
Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors,
Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors,
Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors,
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
The Value of a Trademark
The Value of a Trademark
The Value of a Trademark
The Value of a Trademark
The Value of a Trademark
The Value of a Trademark
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Purpose of Design
Purpose of Design
Purpose of Design
Purpose of Design
Two-dimensional Designs
Two-dimensional Designs
Three-Dimensional Designs
Three-Dimensional Designs
Three-Dimensional Designs
Three-Dimensional Designs
The design needs to be new and/or original
The design needs to be new and/or original
States party to the Hague Agreement as of (Total 37)
States party to the Hague Agreement as of (Total 37)
Case Study: TRAX
Case Study: TRAX
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and
Marketing and Branding Strategies: The Use of Trademarks and Industrial Designs for Business Success; Case Studies Guriqbal Singh Jaiya Director SMEs Division, WIPO

: LAP_XP. , . , Marketing and Branding Strategies: The Use of Trademarks and Industrial Designs for Business Success; Case Studies Guriqbal Singh Jaiya Director SMEs Division, WIPO.ppt zip- 886 .

Marketing and Branding Strategies: The Use of Trademarks and Industrial Designs for Business Success; Case Studies Guriqbal Singh Jaiya Director SMEs Division, WIPO

Marketing and Branding Strategies: The Use of Trademarks and Industrial Designs for Business Success; Case Studies Guriqbal Singh Jaiya Director SMEs Division, WIPO.ppt
1Marketing and Branding Strategies: The 62dismissing the second ground, the High
Use of Trademarks and Industrial Designs Court held that the correct date when
for Business Success; Case Studies calculating whether there had been non-use
Guriqbal Singh Jaiya Director SMEs of the ZARA mark during its registration
Division, WIPO. for a continuous period of three years was
2 the date the mark was actually entered
3Malaysian Textile Competition. The upon the register (ie, February 5 2002)
dependence on contract manufacturing means and not the date of application for
that Malaysia is weak in terms of design registration. Therefore, the three-year
and product planning capabilities, period should run from February 5 2002 and
distribution and marketing capabilities. not August 3 1998. The High Court found
Instead of creating original Malaysian that the plaintiff had started using the
brands or names, Malaysian manufacturers ZARA mark 10 months before the
produce for major world brand names, rectification proceedings were filed by
including: Adidas, Arnold Palmer, Active the defendant; hence the defendant failed
Wear, BUM Equipment, Calvin Klein, to satisfy the requirement of non-use for
Christian Dior, Gucci, Guess, Donna Karan, a continuous period of three years. The
YSL, Levi's, Nike, Padini, Polo, Ralph High Court recognised the importance of
Lauren, Reebok, Slazenger, Pierre Cardin, trademark searches to avoid unnecessary
Camel, Mizuno and Montagut. litigation and their significance in
4Marketing and Product Differentiation. commercial and business decisions. The
DIFFERENTIATION is the act of designing a High Court remarked that the defendant
set of meaningful differences to should have carried out a trademark search
distinguish the companys offering from at the Registry.
competitors offerings. - Kotler (1997). 63Looking at Designs. Looking Good.
5Key Differentiating Factors for a New 64Purpose of Design. Make your product
Product. The product represents a appealing to consumers Create a niche
functional improvement on competing or market Customize products in order to
substitute products The retail-selling target different customers (e.g. Swatch)
price is considered to be advantageous The Develop the brand (e.g. Apple s Think
product and/or its labeling has an Different strategy).
attractive design The new product is 65Two-dimensional Designs.
properly branded, promoted and advertised 66Three-Dimensional Designs.
The new product is readily available to 67Reasons for protection designs in the
customers in the main retail shops A European Union.
number of after-sales services are 68Protecting Industrial Designs. New
provided that make the product appealing (The Malaysian definition of novelty
to consumers. requires that the design has not been
6How to Prevent Free Riding? If disclosed to the public in Malaysia before
functional improvements, attractive the filing or priority date or been the
designs and a well-positioned brand are subject of an earlier filed Malaysian
some of the features that may determine design application). Original (Not
the success of a new product, what can an required in Malaysia) Have an individual
SME do to protect them and maintain its character; (Not required in Malaysia) In
exclusivity over their use? digital world: protection for displays on
7The Answer Innovation - functional mobile phones or computer icons.
improvement of a product Design - 69Protecting Industrial Designs. In
development of the ornamental features of Malaysia, the definition of a protectible
a product Brand - for marketing the design refers to features of shape,
product. Patents or Utility Models configuration, pattern, or ornament
Industrial Designs. Trademarks. applied to an article by an industrial
8Patent for the fountain pen that could process or means, being features which in
store ink Utility Model for the grip and the finished article appeal to and are
pippette for injection of ink Industrial judged by the eye, but does not include:
Design: smart design with the grip in the (a) a method or principle of construction;
shape of an arrow Trademark: provided on or (b) features of shape or configuration
the product and the packaging to of an article which: (i) are dictated
distinguish it from other pens Source: solely by the function which the article
Japanese Patent Office. has to perform; or (ii) are dependent on
9Corporate Image, Product Positioning the appearance of another article of which
and Brand Equity. TRUST and RELATIONSHIPS the article is intended by the author of
are the bulwark of any enterprise, be it the design to form an integral part.
big or small, with a global or local Designs which are contrary to public order
ambit, having a traditional or modern or morality are not capable of protection.
management style, high tech or low tech, However, there is no requirement for any
leader or follower, and irrespective of it degree of creativity or originality beyond
being a part of the old world of brick the design being new.
and mortar or a rising star reliant on 70Industrial Design Protection.
e-commerce. Industrial designs are compositions of
10Building Trust and Relationships. A lines or colors or any three-dimensional
Brand is a consistent, holistic pledge forms which give a special appearance to a
made by a company, the face a company product They protect the ornamental or
presents A Brand serves as an unmistakable aesthetic aspect of a product Exclusive
symbol for products and services Business rights: Right to prevent others from
card a company proffers on the applying (making, selling or importing)
competitive scene to set itself apart from the protected design to commercial
the rest. products for a period of 10 to 25 years;
11Trust is to Business, as Trademark is 15 yrs in Malaysia (except in some cases)
to Brand. Brand Equity built on the Requirement of registration (new EU
foundation of a protected Trademark legislation includes unregistered design
Brand/Trademark can: (a) be disposed off protection) Section 27 of the Industrial
separately from other company assets Designs Act 1996 provides for grant of a
(Free-standing Institutions); and (b) give compulsory licence if there has been no
rights that can be legally protected. reasonable industrial application of the
12Brand/Trademark. Trademark: Legal registered design.
concept Brand: Marketing concept 71Industrial Design Protection. The IDA
Registration of a trademark adds value as of Malaysia provides a right of action for
it protects its other inherent assets infringement of a registered design but no
Brand profile and positioning may vary criminal offences. An action must be
over time, but trademark protection brought within a limitation period of 5
remains the same. years from the date of infringement. A
13WHAT IS A TRADEMARK? Any sign, or any defence of innocent infringement is
combination of signs, capable of available to an infringer who proves that
distinguishing the goods or services of he was unaware that the design was
one undertaking from those of other registered.
undertakings, shall be capable of 72Extending UK Designs to Malaysia. With
constituting a trademark. Words including the Industrial Designs Act coming into
personal names, letters, numerals, force in 1 September 1999, Malaysian
figurative elements (logos), combination industrial design registrations are valid
of colors, sounds, smells, etc Visually only for a total of only 15 years, with 2
perceptible; 2D or 3D (shape) Graphic renewal periods. The Registrar of
representation. Industrial Designs issued a Directive
14Any Distinctive Words, Letters, stating that the 4th and 5th term
Numerals, Pictures, Shapes, Colors, extensions of the extended UK design
Logotypes, Labels In some countries: registrations are not applicable in
Sounds, Smells and Three-dimensional Malaysia, thereby limiting the extended UK
marks. Examples: design registrations to a maximum validity
15 of 15 years instead of the original
16 25-years. As a result, a legal suit
17Definition of a Brand. (1) Defines the (Shachihata & 18 Ors v. Registrar of
differential features of a product or Industrial Designs & Ors) was brought
service: Real or Imaginary Rational or to determine the above issue. The High
Irrational Tangible or Intangible. Court of Malaya ruled that the Industrial
18Definition of a Brand Contd... (2) Designs Registration Office should by law
Constitutes an image that creates a accept applications for renewal of the
personal experience: Own Third party fourth and fifth renewal period for UK
Imaginary. registered industrial designs that were
19Definition of a Brand Contd... (3) registered after 01 August 1989 but before
With conscious and unconscious contents 01 September 1999. This will mean that the
that the consumer projects and deposits on period of the pre-1999 industrial design
it; (4) Constitutes part of and builds up filed under the UK Registered Designs Act
his/her identity; (5) Generates certain 1949 will be applicable for the full 25
perceptions, attitudes and behaviors and year period in Malaysia. The Registrar of
enables fulfillment in their lives. Industrial Designs has therefore withdrawn
20Brand Identity. Mind share (cognitive the earlier Directive and has issued a New
level) Heart Share (Emotional Directive which states that 4th and 5th
relationship) Buying intention share Self period extensions are now allowed (with
share (self-expression and self-design) conditions). The official fee payable for
Legend Share (cultural-sociological the subsequent 4th and 5th term of the
proposition; legendary; mythological). extended industrial design has not yet
21Role of Brands: For the Company. In a been determined by the Registrar. They
highly competitive world, where have indicated however that they are
manufacturers are losing their pricing currently accepting renewal documentation
power, branding is seen as a way of for the 4th and 5th period extensions, and
clawing back some of the lost influence. full renewal documentation should be
22Role of Brands: For the Company. Real provided to them first, to be followed by
and marketable asset Higher profit margin payment of the official fee upon
(Price Premium) Incremental cash flow announcement of the said fee.
Reduces cash flow sustainability risk. 73The design needs to be new and/or
23Role of Brands: For the Company. original. Do these qualify?
Accelerates speed of cash flow Increases 74Registering designs abroad. National
bonding and customer loyalty Increased route Regional route: Office for the
market share Entry barrier Limits growth Harmonization of the Internal Market
of competitors. (OHIM): industrial designs office of the
24Role of Brands: For the Company. European Union International route: The
Requires lower investment levels Better Hague Agreement.
negotiating position with trade and other 75States party to the Hague Agreement as
suppliers Facilitates higher product of (Total 37). Germany Belgium Belize
availability (better distribution Benin Bulgaria Ivory Coast Croatia Egypt
coverage) Dealers order what customers Spain Estonia Macedonia France Gabon
explicitly request. Georgia Greece Hungary Indonesia Iceland
25Role of Brands: For the Company. Italy Kyrgyzstan Liechtenstein Luxembourg
Extends products life cycle Allows lower Morocco Monaco Mongolia Netherlands
cost brand extensions Can be the basis for Moldova Romania Holy See Senegal Slovenia
international expansion Provides legal Switzerland Suriname Tunisia Ukraine
protection; licensing; franchising Buffer Democratic Peoples Republic of Korea
to survive market or product problems. Serbia and Montenegro.
26Role of Brands: For the Company. Value 76Case Study: TRAX. Trax is a system of
of Brands is a key determinant of public seating manufactured by OMK Design
enterprise value and stock market Ltd. Originally designed for British Rail.
capitalization Financial markets reward Had to be visually appealing, comfortable
consistently focussed brand strategies and weather-resistant In 1990, installed
Brand management a vital ingredient for in railway stations in UK 15 years later,
success in corporate strategy. installed in over 60 airports Industrial
27But... Brand Building Requires Time design protection in UK, France, Germany,
and Money; Brand Nourishing Should be a Italy, Benelux, Australia and the US has
Continuous Process; Higher guaranteed a degree of exclusivity keeping
Profile/Exposure, Greater its imitators away.
Vulnerability; Can be Target of 77Honda Case Study. In Honda Giken Kogyo
Counterfeiting/Criminal Activities; Kabushiki Kaisha v Allied Pacific Motor
28Time required... It took seven years ([2005] 3 MLJ 30) Honda applied for an
of marketing before car buyers began to interlocutory injunction against the
recognize that the BMW brand was defendant based on the alleged
distinctive: Jorg Zintzmeyer, board infringement of: five industrial design
member of Interbrand, p 33 of FORBES registrations owned by Honda for the Honda
Global, July 22, 2002 in The best-driven Wave 125 motorcycle by the defendants
brand by Nigel Hollway. Comel Manja JMP 125 motorcycle; and
29So... The cost of building a brand can Hondas copyright in two and
be very substantial over a period of time. three-dimensional drawings of the Honda
That is why buying a brand sometimes makes EX5 Dream motorcycle by the defendants
sense to many companies. Comel Manja JMP 100 motorcycle. The
30Morgan Stanleys Pettis Report on the designs were registered on December 7,
relationship of corporate brand strategy 2000. The drawings were created by Honda
and stock price shows that. Smart in Japan and first published in Thailand.
strategies can result in stock price In dismissing the defendants contention
appreciation by 2 to 9% Positive that the designs were not new as vehicles
Correlation between corporate improvements of a similar design had been sold in
in brand strategy programs and a positive Thailand prior to the plaintiffs
stock market return Starbucks: P/E ratio application to register the designs in
of 47! Malaysia, the High Court ruled that the
31The Importance of Brands. Consumers novelty requirement in the Industrial
are starved for time and overwhelmed by Designs Act 1996 is territorial.
the choices available to them. They want Therefore, prior disclosure of designs
strong brands that simplify their decision outside Malaysia is irrelevant. The court
making and reduce their risks Are there also applied the statutory presumption
other good reasons? Kevin Lane Keller, under Section 114(e) of the Evidence Act
Tuck School of Business. 1950 that official acts have been
32Functions of a Trademark. For the correctly carried out. Therefore, the
consumer: Enables consumers to distinguish court held that the designs were valid,
between similar or identical products ruling that there were many similarities
Products with characteristics that may not between the Honda Wave 125 and the
be examined prior to purchase Trademark as defendants JMP 125. In dealing with the
a guarantee of quality. copyright claim, the court applied the
33Functions of Trademark. For the Copyright (Application to Other Countries)
company: Enables it to differentiate its Regulations 1990 and held that the
products Basis for investing in the image drawings first published in Thailand were
and reputation of a companys products entitled to copyright protection in
Consumers have emotional attachment to Malaysia (subject to eligibility under the
certain trademarks Basis for a loyal Copyright Act 1987). The court stated that
clientele. the drawings were protected by copyright
34 as artistic works in Malaysia and were
35The Value of a Trademark. Interbrand similar to the eventual product of the JMP
conducts an annual survey of the most 100 motorcycle. Although the court
valuable trademarks in the world: concluded that there were serious
Coca-cola: US$ 68.9 billon Microsoft : questions to be tried, it stated that the
65.1 bill. IBM: 52.7 bill. balance of convenience tilted in favour of
36The Value of a Trademark. Consumers refusal of the grant of an interlocutory
are willing to pay a premium price for a injunction. The court found that the grant
product bearing a trademark with a given of an injunction pending final disposal of
reputation Mergers and acquisitions the suit would have a negative and perhaps
increasingly driven by need to acquire a irreversible impact on the defendant, as
trademark to, for example, enter a new an injunction would affect third parties
market Companies outsourcing manufacturing and the government.
activities to low-cost locations rely 78Honda Case Study Contd...
heavily on the trademarks as the main Interestingly, in considering the
source of competitive advantage. copyright claim, Section 7(6) of the
37Choosing a mark. From a commercial Copyright Act 1987 was neither raised nor
point of view: Short and simple Easy to dealt with by the court. Section 7(6)
read, spell, pronounce and remember in all protects designs that are capable of being
relevant languages Not to have undesired registered under the Industrial Designs
connotations in any relevant language Act 1996 but are not registered. However,
(Nova, Traficante, Taco Bell) Easy copyright for such designs ceases as soon
to adapt to all advertising media. as any article to which the design has
38Choosing a mark. Cannot be registered been applied is reproduced more than 50
as trademarks: Generic marks (cases times by an industrial process. Based on
nylon, formica, aspirin, etc) decisions of the Privy Council and the
Descriptive signs Signs that may lead to Australian courts, which are regarded as
confusion as to the nature of the product persuasive in Malaysia, capable of
Signs contrary to public order Geographic registration has been interpreted to mean
signs Signs that are similar or identical that the design falls within the
to existing registered trademarks. definition of an industrial design under
39Selecting a Trademark. Best choice: the relevant industrial design laws, and
Arbitrary/fanciful Kodak film, Acrobat that it does not need to be new. However,
software, Exxon fuels Suggestive gives there are no reported Malaysian cases
a hint of what the product is, but is not dealing with this phrase. An industrial
merely descriptive Molyvan, Vancote design covers features of shape,
Can not be generic or merely descriptive configuration, pattern or ornament applied
Super Strong Diet Chocolate Fudge Soda to an article by any industrial process,
KANZEN TETSU . being features that, in the finished
40Selecting a Trademark. article, appeal to and are judged by the
Arbitrary/fanciful Acrobat software, eye. Designs that are not capable of
Exxon fuels, Sprite soft drink registration under the Industrial Designs
Suggestive gives a hint of what the Act 1996 but that are artistic works
product is, but is not merely descriptive within the meaning of the Copyright Act
Ty-D-Bowl cleaner, Rollerblades 1987 enjoy copyright protection for 25
in-line skates Descriptive with acquired years from the time the design is
distinctiveness American Airlines Can exploited by the copyright owner or
NOT be generic or merely descriptive Gummy licensee by making articles by an
Bears or Super Strong. industrial process as copies of the
41Selecting a Trademark. Must not be artistic work and marketing such articles
confusingly similar to existing trademarks in Malaysia or elsewhere. The two and
used on related goods. Are the marks three-dimensional drawings of the Honda
related Visual appearance, sound-alike? EX5 Dream motorcycle were protected by
Are the goods related Trade channels, copyright as artistic works that are not
marketing channels, compare likely capable of registration, although
purchaser group Other factors technically such drawings were capable of
sophistication of purchasing group, registration under the Industrial Designs
selling price, impulse vs. careful Act 1996. If the latter applied, copyright
purchaser Likelihood of confusion would in such drawings would cease as soon as
consumers believe that the two products the motorcycle (the Honda EX5) to which
come from the same source. the design is applied had been reproduced
42Types of trademarks which cannot be more than 50 times.
registered in Malaysia. If the 79Concept of Novelty in Malaysia. The
representations contain the following, a recent Malaysian decision of CKE Marketing
trade mark will not registered : His Sdn Bhd v Virtual Century Sdn Bhd [2006] 1
Majesty the Yang Di Pertuan Agong Their MLJ 767, set out that the design concerned
Royal Highnesses the Sultans Their must be looked at as a whole, when
Excellencies the Yang DI Pertua Negeri comparisons are made with the prior art
National Flower and Mosque Royal Imperial and that any evidence of prior art has to
Arms, Crests or Insignia Red Crescent, be strictly proven. The facts of the case
Geneva Cross and other representations of In this case, the first defendants
the Red Crescent, the Geneva and other industrial design which was filed on 12
crossed in red Swiss Federal Cross in August, 1999 pertained to the design of a
white or silver on a red ground or such glass door display chiller / freezer sold
representations in similar colour or under the brand name of LINDEN, termed as
colours. Refrigeration Apparatus under the
43Types of trademarks which cannot be provision of the Industrial Designs Act
registered in Malaysia. Trade marks cannot 1996. The First Defendants Design The
contain the following words (in any plaintiff applied for rectifying the
language) Red Crescent Geneva Cross Royal Register of Industrial Designs contending
Imperial Any wording which would amount to that the Defendants industrial design
a false trade description or which would registration had wrongfully remained on
cause confusion with a previously the Designs Register due to disclosure
registered mark. Any wording which is made to the Malaysian public prior to the
scandalous or offensive Any wording which said 12 August, 1999 priority date due to
would create the impression the applicant the existence of other designs differing
has or recently had Royal authorization or only in immaterial details. The first
patronage, regardless of whether it is defendant claimed that the existing models
true. and design features of the refrigeration
44Types of trademarks which cannot be apparatus that existed prior to the date
registered in Malaysia. Trade marks will of the defendants design application were
not be registered if they consist only of old and unappealing in appearance and,
: Numbers, letters or full names in plain therefore, based on their background
lettering Names of geographic locations knowledge of the industry, the first
Shapes of the product Words which describe defendant developed novel design features
the goods. and applied it to its product and sold its
45Clearing a New Mark. Searching new product in the market. The main
pending trademark applications and granted features, which the first defendant
registrations Knock-Out search Recommend contended were novel, were a curved
to follow up with outside search (Thomson crescent like shape, display panel with
&Thomson), which will find aluminum frames and curved aluminum
phonetically similar marks. doorframes. The defendants design
46Clearing a New Mark. Searching Common registration was further bolstered by a
law marks- third party rights may also registered design, which the defendant had
exist in non-registered marks. Sources: obtained under the UK Registered Designs
Google search, Lexis/Nexis, industry Act 1949.
publications, Thomson & Thomson. 80
47Clearing a New Mark. In Use 81Concept of Novelty in Malaysia. The
investigation registered marks may be findings of the court The High Court
invalid confirm current use through followed the requirements of novelty as
Internet or outside investigator. Opinion set out in the English Court of Appeal
experienced trademark counsel can give decision of AMP Incorporated v Utilux Pty
guidance as to descriptiveness and Ltd [1970] RPC 397 which held that there
confusion issues. must be substantial novelty or originality
48Proper Trademark Usage. Why? having regard to the nature of the article
improper use can lead to loss of exclusive before it is registrable, and differences
rights mark becomes generic, and from the prior art in details which are
everyone can use it Lost - aspirin, immaterial are not enough reason to
cellophane, escalator, thermos, linoleum expunge a design registration. The
Saved Xerox copiers, Band-Aid question of differences in a particular
bandages, Rollerblade in-line skates. case would depend on the nature of the
49Proper Trademark Usage. How? DO Use as article, the extent of the prior art, and
an adjective modifying a generic noun: the number of previous designs in the
Xerox copiers Set apart from other text: field in question. In view of the above,
Initial capital Xerox copiers All caps the court held that the question of
XEROX copiers Bold, or different font novelty is dependent on the nature of the
Xerox copiers. article and that a relevant consideration
50Proper Trademark Usage. How? DO NOT would be whether the article is a generic
Use as a noun or verb Give me a xerox I product that is commonly used by members
am xeroxing that now Use in the plural of the public. In such circumstances, it
Incorrect - Three xeroxes Correct Three is likely that the design features applied
Xerox copies. to an article are already individually in
51 when to use. indicates that a existence or in use prior to the formation
trademark is registered in MyIPO. It must of the said article. The paramount
not be used unless the mark is registered. consideration for the court will be the
It is suggested to use where appropriate totality of the design features taken as a
(gives notice to the public), though it is whole and the overall appearance of the
not required. common article as compared with the
52TM, SM - when to use. may be used articles that were disclosed to the public
for unregistered marks. Has no legal earlier. The court also held that in
effect SM may be used for unregistered relation to generic and common products
service marks in place of TM, but there the standard of novelty must be construed
is not really a legal distinction in accordance with the circumstances and
relates to copyright, not trademark followed the English decision of D Sebel
rights. & co Ltd v National Art Metal Pty Ltd
53Loss of Rights. Genericide Abandonment [1965] 10 FLR 224.
Usually 3-5 years of non-use may be 82Concept of Novelty in Malaysia.
grounds for cancellation; 3 years in Comparison of Designs In this case, the
Malaysia Discontinue use with no intention statement of novelty read: Novelty Resides
to resume use Naked licensing In The Shape And Configuration Of The
authorized use by a licensee does not go Design As Shown In The Circle In The
to benefit of trademark owner if not Representations and was accompanied by
controlled and monitored can lead to front and perspective photograph of the
abandonment. first defendants article as a whole with
54A few more important points. TM is a a side view photograph of the curved panel
territorial right TM must be registered marked as circle A and a front view
(protection through use weak and only in photograph of a curved panel marked as
some countries, including Malaysia); circle B to illustrate visual details. In
renewal of registration It is the this respect, the court held that the
responsibility of the TM owner to identify plaintiffs attempt to isolate each of the
TM infringement and take action against designs marked as circles A and B in the
infringers. design registration and compare the same
55Registration (1). National route: individually against purported prior art
submit application form in each country was wholly misleading and incorrect in
where you seek protection. - National fees law. This is as the appealing appearance
for each country - Translation into of the first defendants article was a
national languages - Convenient if result of a combination of a crescent like
protection sought in one or a limited display with curved aluminum border frames
number of countries or no alternative. and the door frames having a distinctive
56Registration (2). Regional route: use curve at the center with the two grooves
regional trademark systems for protection forming its border. Therefore, when both
in several countries. - African the articles of the defendants as well as
Intellectual Property Organization (OAPI): the plaintiff were viewed, the Judge held
www.oapi.wipo.net - African Regional that there were sufficient and material
Industrial Property Organization (ARIPO): differences between both the articles in
www.aripo.org - Benelux Trademark Office - question. The first defendant had taken
Office for the Harmonization of the reasonable amount of steps to illustrate
Internal Market (OHIM): trademark office the characteristics in the design that
for countries that are members of the would naturally enhance or have impact on
European Union. Http://oami.eu.int. the visual appearance or appeal of the
57Registration (3). International route: first defendants article.
Madrid system for the international 83Concept of Novelty in Malaysia.
registration of marks - One application - Evidence of Prior Art The court also held
One language - One set of fees - 77 member that there was no cogent evidence of the
states - Administered by WIPO - One prior art as there was only a letter by a
system, two treaties. foreign company stating that a certain
58 model of refrigerator was introduced into
59 the Malaysian market in 1993 which the
60Case study: Pickwick. An Italian court found to be hearsay and it did not
businessman buys unmarked t-shirts from prove that the design concerned was
manufacturers of generic clothing, disclosed to the Malaysian public at that
attaches his trademark and begins to sell time. As to a collection of sales
them to retail stores Started in a garage brochures and a directory, this was also
in the periphery of Rome Today the not accepted by the court as evidence of
Pickwick trademark is perceived by Italian disclosure to the public. Therefore, any
teenagers as a synonym of style and evidence of disclosure has to be direct
quality Pickwick exports its products and cogent such as the sale of the
across Europe Its trademark is considered infringing article before the court
its most valuable asset. accepts the same. In addition, the court
61GRINGO Case Study. A Mozambiquian held that although evidence of exports of
Success Story... a certain product or article can be shown
62ZARA Case Study. In Industria De in Malaysia, this would not be sufficient
Diseno Textil SA v Edition Concept Sdn Bhd or cogent evidence that the product has
([2005] 2 CLJ 357) the defendant applied been disclosed to the public. Conclusion
to amend the Trademarks Register to The stand taken by the Malaysian High
expunge the plaintiffs ZARA mark on the Court suggests that the issue of novelty
grounds that: the ZARA mark was wrongly has to be viewed in great detail and not
entered in the register as its use was plainly on a surface level. Accepting de
likely to deceive or cause confusion to minimis differences nor trade variants
the public because the ZARA mark is well based on the slightest aspect of the
known in Malaysia as a result of the article as was highlighted in the above
defendants alleged use of it since decision in question would not be
September 1999; and there had been no sufficient to argue that a design does not
use of the ZARA mark during its hold novelty. The case holds firm that the
registration by the plaintiff for a issue of novelty of a design cannot just
continuous period of three years up to one be viewed or examined on the minute
month before the application for details of the article alone but must also
rectification was filed. In dismissing the be examined as a whole and overall
first ground, the High Court held that the features of the article itself. The court
correct date in determining whether the will not view the article in isolation but
mark was well known in Malaysia was the rather view it as a whole. The court was
date of application for registration of therefore right to rule that the
the ZARA mark by the plaintiff (ie, August plaintiffs attempt to isolate each of the
3 1998). The defendant failed to adduce designs from the first defendants article
any evidence that the ZARA mark was well was wholly misleading and incorrect in
known in Malaysia on this date. In law.
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Marketing and Branding Strategies: The Use of Trademarks and Industrial Designs for Business Success; Case Studies Guriqbal Singh Jaiya Director SMEs Division, WIPO

Marketing and Branding Strategies: The Use of Trademarks and Industrial Designs for Business Success; Case Studies Guriqbal Singh Jaiya Director SMEs Division, WIPO

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