In Malaysia, the traditional concept of ‘mark’ as opposed to the wider concept of ‘signs’, as provided under TRIPS and statutory provision of other countries such as UK, is still retained.
Registrability of a single colour
Case: BP Amoco Plc v John Kelly Limited and Glenshane Tourist Services Limited [2000] NIEHC 18
The plaintiff is a well-known multinational corporation which is concerned in exploration for and production of oils, fuels and gas. It brings this action against the first defendant, a Northern Ireland registered company also involved in the sale and distribution of oils, fuels and lubricants though on a much smaller scale.
BP contended that the defendant are infringing BP’s UK registered trademark by using the colour green on the whole or a substantial part of the exterior of the TOP (the trade name of defendants’ petrol filing station in Northern Ireland) and that they are thereby committing the tort of passing off their TOP branded filling stations as BP or as otherwise connected with BP’s business. Therefore, BP seeks injunctive relief and other remedies arising out of the alleged infringement of rights.
Under section 1(1) of the UK Trade Mark Act 1994, “trade mark” means
“any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.
The court considered the ruling in William Wrigley Junior Company’s Application [1999] ETMR 219 that:
“A colour per se without an associated shape as in the present case is protectable as a trade mark since it falls within the meaning of the word ‘any sign’. That wording must be interpreted as a very broad open and general tem encompassing all conceivable types of marks. To restrict the protection of colour marks to a specific presentation would be contrary to the spirit of community trade mark”.
On the issue as to whether the colour alone signifies BP when the logo was removed, the court accepted the finding of the fact that confusion was likely when drivers travelling at speed first saw a service station, where they would only be able to see its green colour but no other distinguishing character. Further, the court ruled in negative on the issue of whether defendant could escape liability by adding other element to distinguish between their mark and that of BP’s.
The long held view that a single colour is not registrable has been reversed in this case
3D marks
In Malaysia, there appears to be no specific provision allowing 3D trademarks. In practise, however, representation of a 3D marks has been accepted by the Malaysian Trade Mark Registrar (section 6.26 Manual of Trade Mark Law & Practice in Malaysia (WIPO Geneva 1989). The positive view in support of 3D marks in Malaysia is that the word “device” under section 3(1) of our Trade Mark Act 1976 is sufficiently wide to cover such marks and on the basis of persuasive authority, the English case of Smith, Kline and French Laboratories Ltd v sterling – Winthrop Group Ltd [1976] 93 RPC 511 and Coca-Cola Trade Marks [1986] R.P.C 472 serve as source of assistance.
There have been many instances of three–dimensional marks being successfully registered in Malaysia. Among the best-known examples of this are the registrations of the triangular three-dimensional configuration of the TOBLREONE chocolate bar as well as the three–dimensional mark of Mercedes Benz.
To be continued..
[next post deals with the facts and court rulings of the aforementioned 3D marks cases]
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