Rachel Chai discusses the benefits and requirements of filing a series trademark in Malaysia.

In countries which accept series marks such as Malaysia, filing a series of marks offers broader protection for businesses and their brand identity. It is not only cost-effective as it eliminates the need for separate filings for each mark, but it also ensures protection of a brand when it is used in slight variations across different products, services or marketing campaigns. Further, a trademark which is registered as part of a series trademark may be used independently from other marks in the series.

In Malaysia, while MyIPO allows a series trademark application (subject to payment of a nominal fee), it is crucial to note that there are requirements to be met to avoid facing potential formality objections for such application. In order to qualify as a series of trademark, the trademarks in question must:-[1]

• Resemble each other in material particulars; and
• Differ only in respect of one or more of the following matters:
  • Statements or representations as to the goods or services in relation to which the trademarks are used or intended to be used;
  • Statements or representations as to number, price or quality;
  • Standard fonts which do not substantially affect the identity of the trademarks; or
  • The colour of any part of the trademark.

Each of these requirements is discussed briefly below.

Statements or representations as to the goods or services in relation to which the trademarks are used or intended to be used

The varying elements must be distinctly and unambiguously distinguished from the features that identify the goods or services associated with the mark. As an example, the inclusion of the highly distinctive house mark “Sunkist”, along with clear or obvious descriptions of the goods claimed in the application, is acceptable as a series of marks. However, if the entire marks consist of common or descriptive dictionary word(s), the marks are unlikely to qualify as a series due to their lack of distinctiveness.

Statement or representations as to number, price or quality

Where the numbers are obviously separated from the material element of the mark, the marks can constitute a series. As shown below, despite the variation in the numbering, the overall identity of each of the marks remains the same due to the presence of a distinctive element, namely ‘CASIO’, and is therefore acceptable as a series. However, if the numbers are not separated from the material element and/or different numbering formats are used (e.g. numeric, Roman numerals and spelled-out numbers), these inconsistencies can prevent the marks from being recognised as a series.

Standard fonts which do not substantially affect the identity of the trademarks

The differences in fonts are permissible so long as they do not alter the pronunciation and meaning of the marks. In order to qualify as a series, the differences in the marks must not change the way the words in the marks in the series are read. The identity of the marks must remain the same. However, if the differences in fonts could be pronounced differently or have different meanings, they are unlikely to be acceptable as a valid series.

Colour differences

If the colour differences have a significant impact or substantially affect the identities, the marks may not be considered as a series. The simpler the mark is, the differences in colour will play an important role to identify the marks as compared to marks with complex shapes or designs.

Acceptable as a series:	MK Shop, MK Shop, MK Shop
Not acceptable as series:

Conclusion: Seriously series?

While there are advantages in applying for a series trademark, it is important to ensure that the formality requirements are met. The key elements of the trademarks in a series must be essentially identical. Any differences between the marks should not significantly alter their identity when compared to one another within the series. The main advantage of a series trademark application is that it allows you to register multiple marks in just one application, saving you the expense and effort of filing separate applications for each individual mark. By securing a series trademark, businesses can maintain consistency in brand identity while allowing for flexibility in their usage, ultimately strengthening their overall trademark portfolio.

[1] Pursuant to Section 21(1) of the Trademarks Act 2019

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