2008 APAA Trademark Committee Discussion Chart Inherent Distinctiveness of Trademarks

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1 2008 APAA Trademark Committee Discussion Chart Inherent Distinctiveness of Trademarks a b a b Australia Bangladesh Hong Kong India Indonesia Japan Korea Malaysia Y M M N N M M M N Y M Y New Zealand Pakistan Philippines Singapore Sri Lanka Taiwan Thailand Vietnam Note: 1) Y means YES 2) N means NO 3) M means YES and NO 4) N.A means Not Applicable

2 2008 APAA Trademark Committee Discussion Chart MALAYSIA CASE 1 Is a trademark Millennium with respect to the goods clothing inherently distinctive enough to be registered in your region? [Note] Presumably, many people wish to use the word Millennium as a trademark and therefore, it may be appropriate to make such word as Millennium open to the public. How about your country? Yes, we would think that there is sufficient inherent distinctiveness for the mark Millennium to be registered for clothing. CASE 2 Is a trademark consisting of two alphabetical letters such as AB with respect to the goods clothing inherently distinctive enough to be registered in your region? [Note] Presumably in many countries, a two-letter word is not inherently distinctive enough to be registered; however, some regions may consider the same as being inherently distinctive. What is your thought on this? Much depends on the representation of the 2-letter mark. For example, if it is represented as a monogram or cypher or other forms of highly stylized representation, there would usually be sufficient inherent distinctiveness for the mark to proceed to registration without objection. If the letters are represented in plain form but form a known word such as He, Go, then, it may too have sufficient inherent distinctiveness for registration provided the word is not otherwise objectionable (e.g., descriptive of the goods or services). If the letters are represented in plain form but do not form a known word, then, non-distinctiveness objection would usually be raised. Evidence of use in Malaysia would assist to overcome the objection. So would evidence of acceptance or registration in any of the countries Australia, Hong Kong, Singapore and UK.

3 CASE 3 Is a trademark consisting of three digitals such as 525 inherently distinctive enough to be registered in your region? [Note] Presumably in many countries, a three-digit-number is not inherently distinctive enough to be registered; however, some regions may consider the same as being inherently distinctive. What is your position? Provided the numerals is not used for other purpose in trade (e.g., as tradeestablished product code or stock references), the 3-numeral mark can have sufficient inherent distinctiveness to be allowed registration. However, it is usual for the Registry to raise prima facie non-distinctiveness objection in such cases. Evidence of use in Malaysia would assist to deal with the objection. So would evidence of acceptance or registration in any of the countries Australia, Hong Kong, Singapore and UK. CASE 4 Is a trademark kaba with respect to the goods coffee inherently distinctive enough to be registered in your region? [Note] In Serbian language and Ukrainian language, kaba means coffee. However, it is unknown to people in other countries as well. In the United States, the trademark kaba was found to be non-registrable (In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967)). How would a decision be rendered in your country on kaba? The Malaysian Registry frequently consults foreign language reference works for meanings of words. It also seeks verification from the applicant as to whether the mark has any meaning in any language. If such due diligence reveals that kaba means coffee, then, registration for coffee will of course not be allowed. If such due diligence is not taken or omitted by the Examiner, then, it is possible for a foreign word which has no obvious meaning to the local population to be registered for the thing which that word describes (although in a foreign language). However, in Malaysia, where the official religion is Islam, the word kaba would be understood or taken to refer to Ka ba, a large cuboidal building in Mecca and one of the holiest symbols of Islam. Thus, that word would not be allowed registration in Malaysia and as being likely to offend common sensibilities.

4 CASE 5 Is the Coca-Cola bottle trademark as shown below with respect to the goods soft drinks inherently distinctive enough to be registered in your region? [Note] In many countries, the Coca-Cola bottle trademark was registered, probably because of its extensive use. Supposing that such Coca-Cola bottle configuration had not been extensively used or well-known, however, would the Coca-Cola bottle configuration registered as being inherently distinctive enough to be registered? In Malaysia, the drawing of a bottle or other container is registrable as a trade mark but not the 3-dimensional shape of that bottle or container. If it was not supported by extensive evidence of use, we do not think the Coca-Cola bottle as shown above has sufficient inherent distinctiveness to be allowed registration. Other representations or drawings of bottles or containers which are unusual or of a unique design have however been allowed without objection and without support of evidence of use. CASE 6 Is a three-dimensional trademark as shown below with respect to the goods chocolate cakes inherently distinctive enough to be registered in your region?

5 [Note] The above trademark consists of a configuration of a chocolate cake. In the case where this configuration is filed designating chocolate cakes, is such a configuration could be found inherently distinctive enough to be registered? What is your position? The drawing or representation of the chocolate cake is registrable in Malaysia but not the 3-dimensional shape thereof. Depending on the goods or services claimed, the above representation can have sufficient inherent distinctiveness for registration without support of evidence of use by reason of the added features at the top of the chocolate bar. If the representation is filed designating chocolate cakes or chocolate bar, then, it would attract descriptiveness or direct reference objection. Evidence of use will need to be filed to show that that particular representation of the chocolate bar signifies the applicant s goods and none other. CASE 7 Is a trademark with non-pronounceable letters only without vowels, e.g., XZY inherently distinctive enough to be registered in your jurisdiction? [Note] Presumably, in some states, a trademark, consisting of non-pronounceable letters, is not inherently distinctive enough to be registered. What is your local practice? If the combination of the 3-letter mark is not likely to interfere with the ordinary usage of letter combination by others, then the mark can have sufficient inherent distinctiveness to be allowed registration. CASE 8 Is a trademark with Model Number of relevant (e.g., CF 200 in the illustrated picture below) products inherently distinctive enough to be registered in your jurisdiction?

6 [Note] It is noted that there is a controversy over whether a model number of relevant products is considered as being inherently distinctive. What is your local practice? If the model number is unique to the applicant or its products (and not, say, trade-established product code), it can have sufficient inherent distinctiveness to be allowed registration. CASE 9 Is a trademark comprising of Surname only (e.g., Kim, Lee, Nahm, Takeuchi, Murashita, Johnson, etc.) inherently distinctive enough to be registered in your jurisdiction? a) In case the surname is common, b) In case the surname is not common [Note] It is noted that in some countries surname especially common surname trademark is not considered as being inherently distinctive to be registered. What is your local practice? Any word which by its ordinary meaning is a surname is specifically excluded (s. 10(1)(d) Trade Marks Act 1976) from registration unless evidence of acquired factual distinctiveness is supplied. If the surname is not common, that is, it is not recognised to be a surname by its ordinarily understood meaning, then, it can have sufficient inherent distinctiveness to be allowed registration. Also, in such a case, the possibility of another person of that name wishing to trade in the goods and wishing to use his surname as a trade mark, may be discounted.

7 CASE 10 Is a title of a book as exemplified below acknowledged as having inherent distinctiveness in your jurisdiction? a) In case that the title indicates the contents or nature of the book, e.g., Industrial Property Law, Theories of Economics, General Rules of Civil Law, etc. b) In case that the title is not directly relevant to the contents or nature of the book, e.g., a title of novel, e.g., Seoul Serenade, Freezing Point, etc. Remarks: In each of the questionnaires above, please indicate if the answer can be changed if the mark in question has been extensively and exclusively used and is considered as having a secondary meaning. In the case of (a), the mark would face descriptiveness objection. If evidence of acquired factual distinctiveness is supplied, the objection will be overcome and registration allowed. In the case of (b), the mark can have sufficient inherent distinctiveness to proceed to registration without objection.