Transcript MAKING A MARK The Importance of Trademarks in Establishing a Distinct Identity in the Marketplace Chew Kherk Ying Wong & Partners is a member.

MAKING A MARK
The Importance of Trademarks in Establishing a
Distinct Identity in the Marketplace
Chew Kherk Ying
Wong & Partners is a member of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with
the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent,
in such a law firm. Similarly, reference to an “office” means an office of any such law firm.
Forbes magazine’s list of the World’s 50 Most
Valuable BRANDS in 2010
– What do these companies have in common?
Trademark as a Representation of the Brand
Functions of a Trademark
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Indicators of origin
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Historically one of the earliest use of trademarks was by members of trade associations or guilds for the purposes of identifying the
person responsible for making them.
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Still recognized as an indicator of source.
Goodwill
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An intangible value attributed to a business which enables a business to continue to earn a profit.
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The value of the loyalty of the firm's customers, trademark required to enable association in the consumer's mind with a particular entity.
Product differentiation function
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The more distinctive the mark, the more effective the selling power.
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Has the power of distinguishing goods, hence reducing searching costs of consumers.
Symbols of quality
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Consumers are assured that each product or service symbolized by a particular trademark is the same quality as other goods and
services of the mark owner.
Investment or advertising power
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The more distinctive the mark, the more effective the selling power (branding)
Choosing a Trademark
Wong & Partners is a member of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with
the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent,
in such a law firm. Similarly, reference to an “office” means an office of any such law firm.
What can be Trademarked?
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Letters and words;
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Logos;
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Pictures;
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A combination of words and a logo;
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Slogans;
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Colours;
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Scents;
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Movement marks;
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Product shapes; and
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Sounds.
Spectrum of Distinctiveness
Not Protectable
GENERIC
A descriptive trademark directly
conveys information regarding an
ingredient, quality, characteristic,
function, feature, purpose or use of the
product.
Generic terms or common words for
the products cannot function as a
trademark because it would prevent
others from rightfully using the
common name for the product that
they make.
DESCRIPTIVE
SUGGESTIVE
FANCIFUL/ARBITRARY
An arbitrary trademark is a
word that exists but has no
meaning when used on the
product itself, while a fanciful
trademark is a word without
a dictionary meaning.
Very Protectable
Suggestive marks indirectly refer to
the goods or services with which
they are associated.
Marks to avoid
– Descriptive marks that describe the goods or services with which they are associated.
– Generic words (common words that describe an entire class of goods or services). These words do not serve as an
indication of the source of goods or services and should be avoided when choosing a potential mark.
– Signs which exclusively serve to designate the kind, quality, quantity, intended purpose, value, geographical origin or
the time of production of the goods, or other characteristics of the goods
– Signs that have become customary in the current language or in the bona fide and established practices of the trade
– Signs that are contrary to public order or to accepted principles of morality: scandalous or immoral marks offend the
conscience.
– Signs that are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of
the goods or service.
– Any national or governmental flag, emblem or insignia
The Importance of Distinctiveness
in Trademarks
Illustrations
Wong & Partners is a member of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with
the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent,
in such a law firm. Similarly, reference to an “office” means an office of any such law firm.
The Coca-Cola Co. of Canada v Pepsi-Cola
Co. of Canada (RPC) 1942
– Coke sued Pepsi for infringing their registered
trademark.
– Court held that “Cola” was simply a descriptive
word identifying a type of beverage and that the
“distinguishing feature” of the Coca-Cola
trademark is the word COCA.
– As the distinguishing feature is not borrowed,
there is no likelihood of deception.
Bata Ltd v Sim Ah Ba & Ors
– Both parties had registered marks for similar goods (cl
25). Bata applied to have the other party’s trademark
expunged from the register.
– Despite aural similarity, the two marks when placed
side by side exhibited many and obvious differences.
Further, Bata shoes retailed exclusively in BATA
shops.
Sim Ah Ba’s registered trademark
– As such, there is no real tangible possibility of
confusion or deception to the probable customers or
purchasers of goods retailed by Bata.
Bata’s registered trademark
Danone Biscuits Manufacturing (M) Sdn Bhd v Hwa
Tai Industries Bhd
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ChipsMore is a registered trademark.
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The Court held, having regard to the totality of circumstances, the ChipsPlus
mark so nearly resembles the ChipsMore trademark as to be likely to cause
confusion:–
The identical phonetic representation of the prefix “Chips”;
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The similar import of the suffixes “Plus” and “More;
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The omission of the space between the two individual words “Chips” and “Plus”
corresponding to the omission of the space between the two individual words
“Chips” and “More”;
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The larger letter “C” of the prefix and “P” of the suffix of the ChipsPlus trademark
corresponding to the larger letter “C” of the prefix and “M” of the suffix of the
ChipsMore trademark;
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The similar stylized double perimeter around the alphabets of both trade marks.
OTO Bodycare Pte Ltd v Hiew Keat Foong [2005]
– “OTO” a registered trademark (among others, Cl. 10- medical and
surgical equipment), produces “Electro-reflexologist”
– Defendant used the words “OTC Bodycare” and “Electro-Relaxologist”
in connection with an electrical reflexology apparatus.
– The Court held that the use of OTO Bodycare.
Adidas America, Inc et al v. Payless
Shoesource, Inc
– Whether Payless Shoesource has violated Adidas’s
THREE STRIPES trademark and the SUPERSTAR
Trade dress by infringement, dilution or injury to
business reputation?
– The final jury verdict in 2008 awarded Adidas a
staggering total of $304.6m.
Sample of Adidas shoes
– Later reduced to $65m-Adidas remains victorious.
Sample of Payless shoes
Why Register your Trademark?
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Registration is the only way to establish rights in a mark. The owner of a registered mark is entitled to a presumption of mark ownership and
exclusive use from the filing date of the application.
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A trademark confers on its proprietor an exclusive right therein. The proprietor is entitled to prevent all third parties, who do not have his
consent, from using the same or similar signs, in the course of trade, for identical or related goods and/or services as those protected by the
trademark.
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A registered trademark can be a valuable asset if you decide to sell your business. You can transfer or licence your trademark rights against
payment.
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Registered trademarks are protected for the complete national territory, regardless of the actual geographic use made of the mark.
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Registration of your mark may also prevent others from using that mark as an Internet domain name.
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Protection can extend to Trademark Dilution – which may occur even without a likelihood of confusion; when there is a lessening of the
capacity of a famousmark to identify and distinguish goods or services.
Value of a Trademark
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