Trademark Strategies in an Uncertain Time

 

Joanne Kong and Joyce Tan highlight some basic strategies in maintaining a trademark portfolio on a leaner budget

 

The COVID-19 pandemic has brought about serious financial impacts to many businesses. As the immediate focus turns to day-to-day operations and cost-cutting measures, trademark portfolios are not likely to be a priority for many companies. However, as trademarks undeniably remain valuable assets to a brand in the long run, this article seeks to explore some strategies in maintaining a trimmer trademark portfolio without having to sacrifice core trademarks.

New trademark filings

  • It is always advisable and prudent to conduct full availability searches to identify potentially conflicting marks. This is to avoid infringing the rights of third parties and to also avoid incurring unnecessary costs in dealing with such infringements and applying for a mark which is unlikely to achieve registration.
  • Non-distinctive marks which consist of common or descriptive words are likely to be objected to. As far as possible, unique or “coined” marks comprising non-descriptive words are preferred. A voluntary disclaimer on any descriptive words should be offered at the outset during the application stage.
  • Word marks should be prioritised as opposed to logo or composite marks since they cover the mark represented in different stylisation or fonts and therefore offer broader protection. This is of course subject to the mark being inherently distinctive on its own. As logo marks tend to vary over time in accordance with different branding strategies, word marks also offer greater value for unchanging brand names. In any event, logo marks enjoy copyright protection which subsists upon creation. There is no copyright registration system in Malaysia and copyright notifications to MyIPO are optional.
  • New marks which are well within the company’s future interests may be worth investing in as a defensive strategy since the costs of dealing with possible trademark infringers in the future may be much higher than initial registration costs.
  • The registration of taglines or slogans which will be used for one-off or temporary marketing campaigns may not be worthwhile pursuing especially since various delays in the registration process may result in the marks being irrelevant once they are actually registered.
  • Companies which have shifted or expanded their businesses online should consider expanding the scope of protection to cover their online platforms or delivery services.
  • In seeking to register marks in multiple countries, consider using the Madrid system which offers considerable costs savings as multiple member countries can be designated in one application without having the need to appoint local agents and file separate national applications.

Pending marks

  • Pending applications should be reviewed to identify marks which may not be crucial or important enough to existing or immediately foreseeable business interests. Such marks should be placed under consideration for abandonment, particularly if they run into objections or oppositions, thereby requiring additional budgets to deal with such issues.
  • In the event objections are raised against pending marks which are still important or relevant to the business, it may be worthwhile to consider whether such objections can be overcome by narrowing the scope of the specifications, offering a voluntary disclaimer on descriptive words and/or where appropriate, revising the representation of the mark to include a registered house mark to increase overall distinctiveness.

Registered marks

  • Core marks which are due for renewal during or surrounding the pandemic are worth maintaining as renewals are valid for a further 10-year period.
  • When unsure, the decision whether to maintain a mark may be slightly prolonged as a late renewal may be filed within 6 months from the date of expiry, after which the mark will be removed. If removed, the mark may be restored within 6 months from such removal date.
  • Marks which are no longer important or relevant may be immediately abandoned.

With the effects of the COVID-19 pandemic expected to last for an extended period, it would be useful for businesses to assess their trademark portfolios to place their marks into categories of high, moderate and low importance to be able to make swift decisions in an efficient and calculated manner when the need arises.

 

Joanne is a Senior Associate at Wong Jin Nee & Teo. Her practice predominantly focuses on end-to-end trademark prosecution, media and advertising clearance, and other compliance matters.

 

Joyce is an Associate at Wong Jin Nee & Teo. She is focused on trademark prosecution matters and has vast experience in worldwide trademark coordination.