A Trademark is any sign that can be represented graphically and can distinguish the goods or services of one business from those of others.
Signs include any letters, words, names, signatures, numbers, logos, brands, titles, labels, tickets, shapes of goods or their packaging, colors, sounds, smells, holograms, positions, sequences of movement, or any combination thereof.
TRADEMARK REGISTRATION: YOUR KEY TO EXCLUSIVE RIGHTS AND LEGAL AUTHORITY
The advantage of registering intellectual property in trademarks is through its use in business transactions, and it provides:
1) Exclusive Rights – The owner of a registered trademark obtains exclusive rights to use the trademark in business transactions. The trademark owner also has the right to take legal action against anyone who uses it without permission.
2) Legal Evidence – The registration certificate issued by the Registrar’s Office serves as proof of legitimate ownership of the trademark. This evidence is accepted in court and by enforcement authorities. It is also an important document to prove the ‘validity’ of trademark ownership in the exportation of goods abroad.
Can Competitors Publish Ads That Are Similar Enough to Confuse Your Customers?
Imagine you have a business selling shawls and have shelled out large costs to advertise your product. One day you saw a shawl advertisement that is similar to yours; to the point where even your own customers are confused! Can a competitor do this to you?
This actually falls under trademark infringement under the Trademarks Act 2019 (“Act 815”) and/or passing off.
Some of the elements of trademark infringement are:
In a trademark infringement claim, the registered proprietor must prove the following:
- The defendant’s trademark closely resembles the registered trademark, causing consumer confusion.
- The defendant is neither the trademark’s owner nor authorized user.
- The defendant used the trademark in the same course of business.
- The trademark was used in relation to goods or services covered by the registration (like in this case, shawls).
Is It Permissible to Use Another Business Owner’s Picture in Your Advertisement For Profit?
Situation: The brand Tudung X released an advertisement featuring Azalea (Not her real name), the owner of Tudung X herself, as the model wearing the hijabs in the ads. A few months later, Tudung Z published an advertisement using Azalea’s images, but the design of the hijab she wore was edited to feature their own design.
Question: Has Tudung Z committed trademark infringement?
Answer: Yes, because Tudung Z has used the trademark i.e. Azalea’s picture in such a manner as to render its use likely to be taken as referencing to Tudung X’s trademark or the brand Tudung X itself.
FAKE IT TILL THEY MAKE IT? WATCH OUT FOR BRAND COPYCATS!
In the case of Optimus Prime Sdn Bhd v Saadom [2022] (Edited Name), the Federal Court referred to the English case of Reckitt & Coleman Products Limited v Borden Inc [1990] 1 AER 873 and outlined the elements of brand imitation or ‘passing off’ as follows:
1. Building a strong reputation for their products or services by using a unique look or style that the public can easily associate with your brand.
2. Showing that false information is being presented that could make the public think the products being sold are from the original brand owner.
3. Proving that this situation has caused or will cause harm to your business.
TRADEMARK VIOLATION? DISCOVER YOUR RIGHT TO COMPENSATION!
The Federal Court in Hamdan v Kaki Sdn Bhd [2021] (Edited Name) decided that if a registered proprietor of a trademark successfully proves a claim for trademark infringement and/or tort of passing-off, the court will then proceed to assess the damages to be paid to the proprietor by the perpetrator as compensation.
DO YOU NEED LEGAL ADVICE REGARDING TRADEMARK INFRINGEMENT & PASSING OFF?
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