Rachel Chai discusses the guidelines and challenges of registering non-traditional trademarks in Malaysia.

Words, logos and symbols have long been recognised as traditional trademarks which are capable of distinguishing the goods and services of one trader from another. Over the years, however, in an effort to stand out among the increasingly saturated global landscape, businesses have turned to non-traditional trademarks (“NTMs”) such as colours, shapes, sounds, scents, holograms and motion marks to serve as unique identifiers of their brand and cement themselves in the minds of consumers.

In response to this shift, the Malaysian Trademarks Act 2019[1] (“TMA 2019”) has widened the definition of a ‘sign’ which can be registered as a trademark to include NTMs. With the introduction of the TMA 2019, businesses are able to secure protection for distinctive elements in their brand image beyond mere words, logos and symbols.

While the NTM registration process does not significantly differ from that of traditional trademarks, it would be prudent to ensure compliance with the registration process and identify the challenges in registering NTMs under the TMA 2019 to ensure a smooth registration process.

Specific guidelines for NTMs

When filing a trademark application for NTMs, the applicant must adhere to specific guidelines to ensure clear and precise representations of the mark are provided.  In addition, it is necessary to provide a detailed description of the NTM by outlining its distinct features. Below is a summary of the relevant requirements:[2]

For a smooth registration process, applicants should adhere to the specific guidelines set forth above to avoid any potential formality objections from MyIPO.

Proving Distinctiveness of NTMs

After fulfilling the necessary formality requirements, the applicant must show that the NTM is sufficiently distinctive to function as a trademark and/or that the NTM has acquired distinctiveness through wide recognition, which may prove to be challenging for certain NTMs.

Some of these challenges are briefly considered below:

Single or common colour

Challenge: It may be challenging to show that a single colour or colour that is common to the trade is distinctive. However, it can be registrable if the applicant can show evidence that the colour or combination of colours has acquired distinctiveness through substantial use to the effect that it is associated with the applicant’s goods or services.

Approach: To overcome the objections on absolute grounds, it would be helpful to provide evidence (in the form of a Statutory Declaration) such as extensive promotional materials, advertising expenditure and sales revenue, to highlight to the Examiner that the colour is significant to the applicant’s business and that the public has come to associate the colour with the applicant and no one else. In short, the colour must be a brand indicator!

Shape mark

Challenge: A shape mark must be distinctive enough to function as a trademark and must not be perceived as a functional element of the goods and services or a common feature or standard in the industry.

Approach: To overcome the non-distinctiveness objections, the applicant must provide evidence of acquired distinctiveness through extensive use and public recognition. In short, the applicant must show that significant members of the public have come to identify the goods and services by reference to the shape mark as originating from the applicant only and no others.

Sound mark

Challenge: If the sound is perceived as a common sound in the industry and has a purely functional purpose, the sound cannot be considered as distinctive.

Approach: For the sound to be registrable, there must be evidence to show that the public, upon hearing the sound, would associate the sound with the applicant. In short, the sound must be memorable, unique and uncommon.

Scent mark

Challenge: It is considered as one of the most challenging NTMs to achieve registration since it is not easy to describe the specific smell to the Examiner in an exact and concise manner. Further, the scent will not be regarded as distinctive if it only serves as a function of the applicant’s goods or services.

Approach: Providing the chemical composition or formula of the scent, although not mandatory, may be helpful to describe the scent. Further, the applicant must show that the relevant public specifically associates the particular scent with the applicant’s goods or services. It would be helpful to substantiate the application with evidence and proof of registrations in other countries.

Conclusion

Although brand owners are now able to apply for trademark registration of NTMs in Malaysia, successful registrations remain limited. We believe that this is because of the strict criteria set by MyIPO which must be met, particularly in relation to distinctiveness. In fact, at the time of writing, the number of successfully registered NTMs does not appear to correspond to high number of NTM filings since the TMA 2019 came into force. As the legal landscape continues to evolve, to secure registration for NTMs, brand owners will need to show evidence of continuous and prolonged use to distinguish themselves from other traders in the particular industry or market.

Despite the challenges, companies looking to protect unique brand elements beyond words, logos and symbol should proactively explore the possibilities under Malaysia’s updated trademark regime.

Rachel is an Associate at Wong Jin Nee & Teo. Her practice is focused on trademark prosecution matters including opposition proceedings and she has vast experience in worldwide trademark coordination.

[1] The TMA 2019 came into force on 27 December 2019.

[2] The Seventh Schedule of the Guidelines of Trademark 2019 (VA1- 2024) issued by the Intellectual Property Corporation of Malaysia (“MyIPO”) on Format of Additional Information to Support Application for Registration of Certain Signs.