General principles [1.0]

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Functions of a trade mark

A trade mark serves as an indication of origin as well as indication of the quality of goods. To the purchasing public, trademarks allow product differentiation, assure them of the quality of the goods and even imply its user’s prestige and social standing. To the producers of the goods, the name implies reputation, quality and goodwill of the goods. Recognised trademark build consumer loyalty and allow the products to fetch premium prices.

Case: Mishawaka Rubber & Woolen Mfg Co v SS Kresge Co 316 US 203 [1942]

A trademark is a merchandising short cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. Whatever the means employed, the aim is the same; to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can attain legal redress.

Case: Scandia Down Corp v Euroquilt, Inc 475 US 1147 [1986]

Trademarks help consumers to select goods. By indentifying the source of the goods, they convey valuable information to consumers at lower costs. Easily identified trademarks reduce the costs consumers incur in searching for what they desire, and the lower the cost of search the more competitive the market. A trade mark also may induce the supplier of goods t make higher quality products and to adhere to a consistent level of quality.

Statutory Definition of Trade Mark

Section 3(1) of the Trade Marks Act 1976 defines “mark” as to include

“a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof”

The same section defines “trade mark” as

“except in relation to Part XI, 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 that person, and means, in relation to Part XI, a mark registrable or registered under the said Part XI”

It can be concluded that a trade mark consist of the relevant elements:

a)     A mark;

b)     Used in relation to goods and services; and

c)     An indication of a connection between the goods and the proprietor of the goods, either as an indication of origin or an indication of quality.

Non-conventional trademark

A non-conventional trademark refers to trademarks which does not belong to a pre-existing category of trade mark. The term encompasses marks which do not fall into the conventional set of marks (eg. those consisting of letters, numerals, words, logos, pictures, symbols, or combinations of one or more of these elements).

Non-conventional trademarks may be divided into visible signs (eg. colors, shapes, moving images, holograms, positions), or non-visible signs (eg. sounds, scents, tastes, textures). Certain types of non-conventional trademarks have become more widely accepted in recent times as a result of legislative changes which expand the definition of 'trademark'. Such developments are the result of international treaties dealing with intellectual property, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights, which sets down a standardised, inclusive legal definition.

Examples of non-conventional trademark include single colour trademarks, motion trademarks, hologram trademarks, shape trademarks (also known as three dimensional trademarks or 3D trademarks), and sound trademarks (also known as aural trademarks).

Points to ponder

The above statutory definition provides that only ‘Mark’ is registerable as trade mark in Malaysia. What is our legal position as regards to other distinguishable signs adopted to differentiate one goods from another such as 3D trademarks and colour trademarks?  

To be continued...