Photo credit: designrush.com

Exploring non-traditional trademarks

Nurul Hanani A.
Legal Associate

In my last article, I mentioned trademarks briefly. Here, I would like to talk more about it.

So, what’s a trademark? The Trademarks Act 2019 says trademarks are signs capable of distinguishing goods or services of one undertaking from another. (Remember the emphasis on “sign” here as we’ll see more of this later). To put this simply; it is a feature that represents your brand or company, and its purpose is for the public to associate those goods or services to a specific brand. As long as the “sign” is distinctive, then it will be sufficient to be a registrable trademark.  

Many know that trademarks are commonly linked to logos, letters, numbers, or signs which identify a brand. However, the world has since developed beyond traditional approaches to trademarks. Even our Trademarks Act 2019 (“TMA”) encompasses a broader spectrum of unconventional signs. Section 2 states, signs could include, among others, device, shape of goods or their packaging, sequence of motion, colour, sound, scent. Some jurisdictions even recognize taste to be capable of being trademarked.

Some non-traditional trademarks (“NTT”), stretching over other jurisdictions:

Sound mark

In the United States, a sound or a combination of sounds can be trademarked, in fact; multiple famous sounds have been trademarked. Some examples include; the infamous “da-dum” sound which accompanies Netflix’s introduction. The oft-quoted Metro Goldwyn Mayer with the roaring lion sound and the exciting 20th Century Fox introduction theme which often gives viewers the chills, in anticipation of an amazing film. However, in the local context, there is not much information readily available on public databases regarding registered sound marks. Nevertheless, since it is prescribed under the TMA, many brands would have undoubtedly seized this opportunity to secure exclusivity over their brands.

Colour mark

It is remarkable how powerful a colour can be to a brand. In fact, this was acknowledged by Supreme Court Justice Stephen Breyer when he said: “Color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function”. To this day, one impactful registered colour mark is the tiffany blue hue adorned on Tiffany & Co’s packaging. Since the acknowledgement of this colour mark, many other brands have followed suit to seek for the colors of their brand identity to be trademarked as well. In the local context, the distinctive green colour of Milo’s packaging could also be trademarked. And, if you’re familiar with the local brand “dUCk”, well known for their hijab collections – the purple boxes they come in (see below) could also qualify for a colour mark. The brand dUCk has incorporated this purple colour not only on its packaging, but across its website and social media as well. Those who know dUCk will automatically associate the colour to its products immediately, without having to introduce the brand. They have successfully applied this colour to their brand identity, which is, ultimately, the function of a trademark. But, of course, if registration is sought, it is subject to proving that the colour is distinctive and that there is an appropriate description to the mark. The shade must be identified and often represented upon registration in the Pantone shade.

(Photo credit: User @naida.h on Carousell)

Shape mark

The TMA recognises shape of goods and their packaging to be a “sign” registrable for trademark. The triangular shape packaging of Toblerone, the infamous contoured Coca-Cola bottle, and Hershey’s kisses shape. These are all immediately recognisable in the market due to the unique shape of the product or the packaging in which it comes in.

Position mark

Marks that consist of a specific placement or positioning of a sign on a product can also be registered. For example, the placement of a logo, or a device mark (which includes drawings) on a particular area of a product’s packaging could potentially be registered as position marks. Taking the issue discussed in my previous article (vis-a-vis the tudung design), arguably, it can also be said that the positioning of a logo onto a product can be a “position mark” as well.

Photo credit: dUCk official website

Let’s take another hijab design as an example; the arrangement in which this dUCk hijab incorporates its monogram and the specific placement of its logo at the corner of the hijab can be a position mark. This design essentially incorporates the letter “D” and placed in a slanted manner across the hijab. 

So, the doors are not fully shut to the applicability of trademark to hijabs. If the hijab incorporates any of the categories of “sign” under Section 2 of TMA and can be shown to be distinctive, hijabs are also capable of being trademarked. 

In summary, NTTs are gaining importance in Malaysia’s brand landscape, offering businesses unique ways to stand out. Despite challenges in registration, such as proving distinctiveness and non-functionality, these trademarks provide significant benefits in brand recognition and consumer loyalty. As Malaysia’s economy grows, recognising and protecting non-traditional trademarks will be vital for fostering innovation and economic growth. Understanding the legal requirements allows businesses to utilise these trademarks effectively, and seeing to registering your trademark is of utmost important. So, if you ever need advice on this issue, feel free to reach out! 

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