THE REQUIREMENT OF DISTINCTIVENESS OF MARK
1. Introduction
1.1 A trade mark can be in the form of words, designs, slogans, logos, symbols, signature, labels or names or a combination of any of the aforesaid.
1.2 The commercial values of a trademark are, among others, the following:-
(a) for commercial identification and to distinguish one person's goods or services from that of another person's;
(b) to enable companies to differentiate their products; and
(c) to be used as marketing tool and basis for building a brand and reputation of one's products or services.
1.3 Trade mark protection can be obtained in Malaysia through registration in accordance with the provisions of the Trade Marks Act 1976 ("the Act ") which came into force on 1st September 1983 and applies throughout Malaysia. The Act is modeled upon the UK Trade Marks Act 1938.
1.4 The expression "Trade Mark" is defined in the Act[1] as:-
" a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and a person having the right, either as proprietor or as registered user to use the mark, whether with or without an indication of the identity of the person"
2. What is a registrable trade mark under the Act?
2.1 Section 10 of the Act[2] requires that for a trade mark to be a registrable trade mark, the proposed mark must contain one of the following:-
(a) the name of an individual, company or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or of some predecessor in his business;
(c) an invented word or words;
(d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or
(e) any other distinctive mark.
2.2 If the proposed trade mark does not satisfy the criteria as set out in the preceding paragraph (a) to (d), the proposed mark is still registrable if it is distinctive under paragraph (e). Distinctiveness simply means "capable of distinguishing".
2.3 The aim of this article is to discuss the requirement of distinctiveness.
3. What is the test of "distinctiveness"?
The meaning of "distinctiveness"
3.1 For the purposes of the Act[3] , "distinctive" , in relation to the trade mark registered or proposed to be registered in respect of goods or services, means the trade mark must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade mark from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration.
3.2 In other words, the key criterion for registering a trade mark is whether or not the proposed mark distinguishes the goods/services of one merchant from those of another.
3.3 In determining whether a trade mark is capable of distinguishing as aforesaid regard may be had to the extent to which-
(a) the trade mark is inherently capable of distinguishing; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing[4] .
Distinctiveness and descriptiveness
3.4 Distinctiveness is the opposite of descriptiveness for trade mark purposes.
3.5 A proposed mark is distinctive if consumers regard such mark as indicating a particular manufacturer or person.
3.6 A proposed mark is descriptive if it informs consumers about any characteristics of the relevant products or services. For example, in the case of candy, if uses the mark "CANDY" is purely descriptive of the product and is normally not registrable under the Act for lack of "distinctiveness".
3.7 The distinctiveness of trade mark varies from being highly distinctive to being merely descriptive or generic. The legal protection of a trade mark is stronger if the trade mark is more distinctive.
Categories of trade mark distinctiveness
3.8 Trade mark distinctiveness can be classified into the following 4 categories:-
(a) Arbitrary or Fanciful :
The word "EXXON" does not have a direct relationship to the oil and gas company.
The word "KODAK" does not have a direct relationship to photographic supplies.
The word "APPLE" does not have a direct relationship with computers.
(b) Suggestive :
The word "JAGUAR" is suggestive of powerful automobiles, but this does not directly describe the product.
The word "COPPERTONE" is suggestive in regard to sun tanning products but does not directly described the product.
(c) Descriptive :
"SWEET" for chocolates, describes the characteristic of the product.
(d) Generic :
"FURNITURE" for furniture or tables, chairs.
"APPLE" for apples.
3.9 Arbitrary or fanciful trade marks have the advantage of being approved for registration as they are more likely to be considered inherently distinctive. However, an arbitrary or fanciful trade mark may also require heavy advertising to enable consumers to associate such marks with the underlying product or service.
3.10 Trade marks that are merely descriptive may potentially be considered to be registrable if they have acquired distinctiveness with secondary meaning.
3.11 Secondary meaning means that the trade mark has some meaning to the public beyond the obvious meaning of the terms or images of the trade mark itself. In other words, if the primary significance of the trade mark in the consuming public's mind has become the source of the goods or services, rather than the product itself, it has acquired secondary meaning.
3.12 In the case of Zatarain's Inc v. Oak Grove Smokehouse[5] , the court considered factors such as amount and manner of advertising, volume of sales, and length and manner of use as circumstantial evidence in deciding the descriptive mark "FISH-FRI" to have acquired a secondary meaning.
4. Approach of Malaysian Courts
4.1 In the case of Illinois Tool Works, Inc. v. Pendaftar Cap Dagangan, Malaysia[6] ,the appellant used the trademark "HIGH TEMP RED" to its products, "silicone to be used as a gasket replacement on engine parts and used to replace cork, felt, asbestos and rubber gasket." The Registrar objected the mark on the ground that the words in question describe the character or quality of the goods. However on appeal to the High Court, it was established that no ordinary public would think that "HIGH TEMP RED" means silicone.
Ramly Ali J. held that:-
"It would take a 'mental gymnastics' and even a 'technical scientific lab research' to find out the meaning or character or quality of a silicone. Even if they do so, which is impossible, they will still not find out the meaning of "HIGH TEMP RED" as referring to silicone for a gasket, cork, felt and asbestos."
4.2 The marks "HIGH TEMP RED" was held as a figurative or fanciful suggestion which is not objectionable. There is no definite indication that the appellant's mark indicates a silicone for a gasket, cork, felt and asbestos. Therefore the registration of the appellant's trademark is not objectionable. As long as it satisfies one of the requirements under Section 10 of the Act, the registration should be allowed.
4.3 In OzeMarketing Sdn Bhd v. Twenty First Century Products Sdn Bhd[7] ,the court held that the word "MEMO PLUS" was descriptive of a memory enhancing products. The word "MEMO" is undoubtedly an abbreviation of memory. The word "PLUS", used as a noun, means, according to the Concise Oxford Dictionary, an advantage, which in turn means a benefit. Since the product was supposed to enhance memory it clearly indicate that it is a descriptive name of the product.
5. Conclusion
5.1 The relevancy of having a distinctive trade mark is to reserve the exclusive use of the potential trade mark. Beside that, for a trade mark to be effective, particularly for distinguishing a company's goods, it needs to be distinctive.
5.2 The other reason, distinctiveness is important is that the more distinctive a mark is, the more protection it enjoys; i.e., the more the owner can keep competitors from using the trade mark or one similar to it.
5.3 The less distinctive the trade mark, the harder it is to establish and enforce exclusive rights in it. Distinctiveness is important not only for it to be eligible for registration but also for users to differentiate the services or product. It also serves as a marketing tool for a company.
5.4 As a conclusion, trade marks vary from being highly distinctive to merely descriptive. Distinctive trade mark will highly be considered for registration while descriptive trade mark will not be eligible for registration.
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