Trademark registration can be a smooth and simple process when proceeding under professional guidance. However, minor blips in your trademark journey are to be expected as not all trademarks possess the eligibility to be successfully registered.
It is encouraged to understand what makes a trademark eligible for registration prior to choosing a name or logo as your trademark. The converse is also true – understanding what makes a trademark ineligible for registration will help eliminate the chances of a rejection from the IP office. A successful trademark application on the first try saves you time, money and energy, making your trademark journey a seamless one right from the start.
Here’s a run down on the top three reasons why your trademark could be rejected.
Your Trademark Is Overly Descriptive
One common mistake new trademark owners are prone to is in choosing a descriptive word or name as a trademark.
For example, Mr. Lee is starting an F&B business with a specialization in crab fried rice. Prior to submitting a trademark application, Mr. Lee has chosen his trademark as Crab Fried Rice and consulted an IP professional on the eligibility of his chosen trademark. In this event, the IP professional would most likely advise Mr. Lee to use a different trademark to represent his business.
Why is that?
According to the Trademarks Act 2019, trademarks that are overtly descriptive of goods and/or services are not registrable under Malaysian law. A trademark with designations of the kind, quality, quantity, intended purpose, value, geographical indication and other characteristics of the goods or services are not eligible for registration due to its descriptive qualities.
In short, your trademark should not, be it a good or service, describe what you are selling, or you will potentially be faced with trademark refusal. If your trademark is not in any way describing the good or service you are selling, there is a good chance your trademark is likely to be legally approved.
Your Trademark Is Not Distinctive Enough
Your trademark is no longer descriptive – will it be 100% approved? Not necessarily, as IP officials will be looking at the distinctiveness of your trademark prior to approval.
The Trademarks Act 2019 governs that a trademark can be rejected for registration should it be lacking in any distinctive character. For a trademark to be distinctive, the mark is required to be capable of identifying and distinguishing the goods or services originating from its source.
In other words, there needs to be a unique quality to your trademark which will allow consumers to distinguish your goods or service from the rest in the market. A trademark can be inherently distinctive or it can acquire distinctiveness through a period of time via exclusive use of the mark.
Inherently distinctive marks can be observed in trademarks such as sportswear rivals Nike and Adidas. Each trademark is a unique blend of letters to comprise each word. None of these trademarks are descriptive and they stand out to the consumer immediately due to their idiosyncratic qualities.
Acquired distinctiveness requires long term consumer familiarity with the good or service in association with the trademark itself. A good example of this is technology company Apple Inc. Without acquired distinctiveness gained over time, Apple’s trademark is merely descriptive. Over time, the trademark gained distinctiveness through public recognition and long term use, therefore enabling Apple Inc. to legally protect ‘Apple’ as a trademark.
If your trademark is not commonly referred to or is a new word, there is a good chance your trademark will be approved by the IP office.
Identical or Similar Trademarks
Last but not least, trademarks are more often than not rejected due to similarities to other existing trademarks. Under the circumstances whereby a mark is similar or identical to an existing trademark, the Registrar can and will refuse the application due to relative similarity to a legally protected mark.
Furthermore, the Trademarks Act 2019 states that new marks with great similarity to trademarks not legally protected in Malaysia will not gain approval either, despite the lack of trademark registration of such a mark in the country. This scenario is most likely to happen if the trademark in question is well-known and internationally renowned.
Several factors are important for the approval of a mark appearing to be similar to an existing trademark, such as the registration of such a mark under the same or different class of goods or services. There is a greater chance of success for an approval if the mark comes under a different trademark classification, however this is subjective to IP officials and will be considered on a case-by-case basis.