Intellectual Property Law Under Trade Marks

In this issue, we apply Intellectual Property Law under Trade Marks which  stated in the Section 3 (1) of TMA that a mark used or proposed to be used in relation to goods or services. Based  on section 3, the element of trade mark is important where first, it should be a “mark” because this section give a broad meaning of mark and the example included is not full comprehensive but the definition must be applicable and will be understand in certain point. Second element is the mark is used or proposed to be used. It means that the mark must be used at the time of application and the applicant also must have intention to use the mark itself. Third elements which is in relation to goods or services. The mark should symbolize the goods and services as stated in Section (2)(b) of TMA. Fourth elements which is to indicate a connection in the course of trade. This mark should be used in the course of transaction to exhibit the relationship between the owner and goods or services.

The law prioritize in this issue is under the registrable trade mark. It is important to ensure that the mark is distinctive and have exclusive right after it have been registered. One of registrable trade mark is invented word or words. The word must be newly generated and distinct as stated in Section 10 (1)(c) of TMA. According to the case of Illinois Tool Works, Inc v Pendaftar Cap Dagangan (M) (2009) MLJ 101, silicon that was used on the engine parts refered as High Temp Red” mark. In this case The Registrar believe the mark was not distinctive and not qualified. But, the court held that the mark “High Temp Red” did not have any rational meaning to the people. Hence, it is qualified as an invented word. The issue also include the misspelt word in which misspelt word indicate any other meaning  that will bring effect.

Next registrable trade mark is word that does not have any direct reference to the character or quality of the goods or services. According to Section 10(1) of TMA, it have been mentioned that it cannot be any reference towards it. For example, “apple” is one of the word of mark that is registered for computer and the word “apple” do not have any direct reference to computer. So it is registrable. In the case of Titan (M) Sdn Bhd v Registar of Trade Marks (2009), the trade mark of “SURE-Loc” have been rejected. It is because the “SURE-Loc” has a direct reference to the “key lock”. So, it has been described that the “SURE-Loc” cannot be used because key lock represent that it can be lock.

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