Professional Documents
Culture Documents
Marketing and Branding Strategies:: The Use of Trademarks and Industrial Designs For Business Success Case Studies
Marketing and Branding Strategies:: The Use of Trademarks and Industrial Designs For Business Success Case Studies
Strategies:
• Red Crescent
• Geneva Cross
• Royal
• Imperial
• Any wording which would create the impression the applicant has or
recently had Royal authorization or patronage, regardless of whether it is
true.
Types of trademarks which cannot be
registered in Malaysia
• Searching –
– pending trademark applications and
granted registrations
– ‘Knock-Out’ search
• Recommend to follow up with outside
search (Thomson &Thomson®), which will
find phonetically similar marks
Clearing a New Mark
• Searching
– ‘Common law’ marks- third party rights
may also exist in non-registered marks.
Sources: Google™ search,
Lexis®/Nexis®, industry publications,
Thomson & Thomson®
Clearing a New Mark
• ‘In Use’ investigation – registered marks
may be invalid – confirm current use
through Internet or outside investigator.
• Opinion – experienced trademark counsel
can give guidance as to descriptiveness
and confusion issues
Proper Trademark Usage
• Why? – improper use can lead to loss of
exclusive rights – mark becomes generic,
and everyone can use it
• Lost - aspirin, cellophane, escalator,
thermos, linoleum
• Saved – Xerox® copiers, Band-Aid®
bandages, Rollerblade® in-line skates
Proper Trademark Usage
How?
• DO
– Use as an adjective modifying a generic
noun: Xerox® copiers
– Set apart from other text:
• Initial capital Xerox® copiers
• All caps XEROX® copiers
• Bold, or different font Xerox® copiers
Proper Trademark Usage
How?
• DO NOT
– Use as a noun or verb
• “Give me a xerox”
• “I am xeroxing that now”
– Use in the plural
• Incorrect - Three xeroxes
• Correct – Three Xerox copies
® – when to use
• ® indicates that a trademark is
registered in MyIPO. It must not be
used unless the mark is registered.
Agreement only 12
Protocol only 20
Agreement and Protocol 42
Case study: Pickwick
Looking Good
Purpose of Design
– Make your product appealing to consumers
– Create a « niche » market
– Customize products in order to target
different customers (e.g. Swatch)
– Develop the brand (e.g. Apple ’s « Think
Different » strategy)
Two-dimensional Designs
Three-Dimensional Designs
Reasons for protection
designs in the European Union
Protecting Industrial Designs
• New (The Malaysian definition of novelty requires
that the design has not been disclosed to the
public in Malaysia before the filing or priority date
or been the subject of an earlier filed Malaysian
design application).
• Original (Not required in Malaysia)
• Have an “ individual character”; (Not required in
Malaysia)
• In digital world: protection for displays on mobile
phones or computer icons
Protecting Industrial Designs
• In Malaysia, the definition of a protectible design refers to
• The Registrar of Industrial Designs has therefore withdrawn the earlier Directive and has issued a New
Directive which states that 4th and 5th period extensions are now allowed (with conditions). The official
fee payable for the subsequent 4th and 5th term of the extended industrial design has not yet been
determined by the Registrar. They have indicated however that they are currently accepting renewal
documentation for the 4th and 5th period extensions, and full renewal documentation should be
provided to them first, to be followed by payment of the official fee upon announcement of the said fee.
The design needs to be new
and/or original. Do these qualify?
Registering designs abroad
• National route
• Regional route:
– Office for the Harmonization of the Internal
Market (OHIM): industrial designs office of the
European Union
• International route:
– The Hague Agreement
States party to the Hague
Agreement as of (Total 37)