Yay! Your trademark application has been approved by the Trademark Office! But~ wait! Don’t cheer first, it’s not the end yet! This is because generally there are two major hurdles to overcome. The first hurdle is examination and approval by Trademark Office; whereas the second one is to see whether your application will face opposition from the public during the advertisement period. This is a common practice for trademark registration in most of the countries.
For example, in Malaysia, once a trademark is approved by MYIPO, it will be published in the Malaysia Intellectual Property Official Journal, it enters a critical phase in the registration process. During this period, any individual has the right to oppose the trademark's registration, providing a window of two months from the date of publication to file such opposition.
Who Can Oppose a Trademark Registration in Malaysia?
In Malaysia, any person may oppose to the registration of a trademark based on the grounds mentioned in Section 34 of the Trademarks Act 2019 (TMA 2019). Therefore, it is not necessary that the Opponent to own an earlier registered trademark in order to lodge an opposition.
What Are the Grounds To Oppose a Trademark Registration?
There are a few grounds under the Section 34 of TMA 2019 which enable an opponent to lodge an opposition against a trademark registration. The most commonly used invoked grounds include:-
1. Relative grounds for refusal under Section 24 of the TMA, for example, the subject trademark is identical with or confusingly similar to an earlier mark.
2. Absolute grounds for refusal under Section 23 of the TMA, such as it is descriptive of the goods or services, lack of distinctiveness, causing confusion or deception to the public, constitutes passing off and many more.
3. The applicant is not the proprietor of the trademark.
4. The subject trademark is identical or similar to a well-known mark.
Why Oppose a Trademark Registration?
While credit should be given to the officers at the Government Trademark Office for their efforts in examining all the trademark applications and comparing the trademarks one by one, sometimes whether two trademarks are confusingly similar can often be subjective. An examining officer may conclude that two trademarks are not similar, but you might have a different perspective.
Another instance is when the examining officer, due to lack of familiarity with a particular industry, may not realize that a trademark is descriptive of the goods or services or the trademark lacks distinctiveness.
These are some of the instances that you should oppose a trademark registration. You should do everything within the legal means to oppose:
1. If you find that the subject trademark is identical or confusingly similar to your trademark. This is to safeguard the exclusivity or identity of your brand from being imitated by others.
2. If the subject trademark is describing your goods or services. This is to ensure that common industry terms are not monopolized by a single party, preventing unfair commercial advantage.
How Do We Determine if Two Marks Are Similar?
This is a question that can only be decided on a case to case basis. There is no hard and fast rule in determining whether two marks are similar. Typically, this decision is made by considering on a number of surrounding circumstances such as manner of use, trade channel, visual and phonetic similarity of the marks, concept behind the marks, goods and services involved and many more.
For example, in the Malaysian case A K Koh Enterprise Sdn Bhd v A1 Best Food Industry Sdn Bhd (Pendaftar Cap Dagangan Malaysia, interested party) [2015] 9 MLJ 715, the Court found the Defendant’s Mark is confusingly similar to the Plaintiff’s Mark. Both marks contains the A1 name and were being used on the same type of goods in relation to Bah Kut Teh soup spices, same trade channels and target the same group of customers. Therefore, there is higher likelihood of confusion of deception.
On the other hand, in the Malaysian case Rolls-Royce Plc & Anor v Saujana Hotel Sdn Bhd (Pendaftar Cap Dagangan Malaysia, interested party) [2019] MLJU 550, the High Court found that the Defendant’s Mark is not confusingly similar to the Plaintiff’s Mark. One of the reasons they are not confusingly similar to each other because the trade channel of the goods are obviously different. The Defendant’s customers will specifically be its hotel guests, who would purchase the goods at the hotel; whereas the Plaintiff’s customers will seek and purchase their goods from the Plaintiff’s websites or automobile showroom.
Furthermore, the Court agreed with the Plaintiff’s counsel that both of the marks are not resembling each other, even when viewed through imperfect recollection. One of the reasons being, the Plaintiff’s Mark consists of 2 alphabets “RR” which is presumably an abbreviation of Rolls Royce; whereas the Defendant’s Mark symbolises the building concept known as “Rumah Peranakan” and features the 2 alphabets “RP” within diamond shaped box. Hence, both of them are distinct and plainly distinguishable to the Court.
When to File a Trademark Opposition?
Procedurally, you may file the opposition within two months from the date of publication of the trademark. If necessary, you may request for extension of up to two additional months to file the opposition. The Notice of Opposition should be accompanied by a Statement stating the abovementioned Grounds of Opposition.
We have previously prepared another article explaining the complete procedure on trademark opposition, please click this link to explore further.
Once the opposition proceedings are complete, the Registrar will consider the evidence and submissions by both parties and render a decision thereafter.
If you disagree with the Registrar’s decision, you may appeal to the High Court. However, you can only rely on the grounds which you have raised in the initial grounds of opposition. This is why the first step is very important!
How Do I know if Someone Is Registering a Trademark Similar to Mine?
Most of the trademark offices publish trademark applications on their websites. However, as an entrepreneur, you may not have the time to keep an eye on these publication regularly. In this case you may engage a competent trademark agent to monitor the trademarks for you. If they find any trademark that is confusingly similar to yours, they will contact you immediately!
Contact us today if you need help in trademark monitoring services! Our trademark monitoring services offer you peace of mind by keeping a vigilant eye on new trademark applications that could infringe on your rights. You'll receive timely alerts about any confusingly similar trademarks, allowing you to take prompt action to protect your brand’s integrity.
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Legal Executive
LL.B (HONS)
Disclaimer: The above are meant for general information purposes and do not constitute legal advice. Please do not hesitate to contact us if we could be of assistance!
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