Conventionally in Malaysia, the registration of a trademark simply meant the ability to register a graphical representation such as symbol, image, or logo. This was to ensure your business’s goods could be distinguished from your competitor’s goods. Through registering, a trademark can serve as a way for businesses to protect their intellectual property along with defining where their goods and services originated from.
That said, under the old law in Trademarks Act 1976 (now repealed), the registration of a ‘mark’ was limited to graphical representations. This however has undergone significant change with the new Trademark Act 2019 Act.
Trademark Act 2019 (‘TMA 2019’) was enacted to update Malaysia’s laws in order to keep up with the developments around the world and to bring the current law up to par with international standards. That included the protection of non-traditional marks and collective marks. Some of the examples of non-traditional marks include smells, sounds, colours, shapes, moving images, tastes and holograms.
Development in Foreign Countries
In recent years Europe has seen a wave of non-traditional marks fight to be recognised and registered under European Union law. One instance where the court recognised colour as a mark was in the UK case of Cadbury UK Limited v The Comptroller General case. Where Cadbury UK Limited (‘Cadbury’) had tried to register the shade of purple used on their chocolate products. Although Cadbury ultimately did not win the case, the law had ruled that colour could be a trademark even if it was not ‘spatially defined’.
Thereafter, several companies have since applied and successfully registered for colour trademarks. Among the notable successful applicants are Mondelez who have registered the shade of purple used for their Milka chocolate packaging under the European Union Intellectual Property Office (EUIPO) and Tiffany and Co. who have registered the jewellery brand’s signature ‘Tiffany Blue’ in both the US and the EUIPO.
Cases involving the registration of 3D shapes such as a transparent vacuum chamber have also been considered. In the case of Dyson v Registrar of Trade Marks, Dyson applied to register ‘transparent bin or collection chamber forming part of the external surface of a vacuum cleaner’. It was the concept of incorporating a transparent bagless bin that Dyson wanted to register as a trade mark. However, European Court of Justice rejected the application because the application appeals only to imagination and further ruled that it is not capable of being perceived by one of the five senses.
Nonetheless, with these set requirements, businesses could successfully apply provided they could prove the 3D design/shape of their product was distinctive. One such case was Toblerone’s application to trademark the triangular shape of their chocolate. EUIPO allowed the application of Toblerone mark and was satisfied in terms of its distinctiveness.
Development in Malaysia
What does this mean for Malaysia? TMA 2019 has updated its stance on marks and now recognises Non-Traditional Marks (NTMs) such as smells, sounds, colours, shapes, moving images, tastes and holograms as registrable in Malaysia. This has given way to many Malaysian and international businesses wishing to jump onboard the NTM train, with notable brands vying to trademark certain colours, sounds and designs for their sole usage in Malaysia.
As an example, Hisamitsu managed to successfully register both its brand’s “Hi-Sa-Mi-Tsu” jingle under a sound trademark and its animated logo under a moving image trademark.
Another notable successful application is the registration of a 3D tiger head device by Maybank. With the registration of this trademark, Maybank can now use this device for several purposes ranging from metal decorations, stationary, picture frames and tumblers, depending on the several trademark classes Maybank has registered it under.
At the time of writing, this third application for NTM is still currently undergoing substantive examinations. It is an application by Delivery Heroes Sdn Bhd better known as Food Panda. They have applied for a moving image trademark of Pau Pau, the Food Panda mascot. Pau Pau has been registered so you may see him as a toy, on printed merchandise, and as expected, for the purpose of food delivery, among many other registerable categories.
Non Traditional Marks stands out as one of the many exciting updates available to business owners of today, as it widens the scope of what a business can protect as its intellectual property, whether they stem from Malaysia or internationally.
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