THEY ARE COMING FOR YOUR BRAND!

2020 has thus far proven to be an annus horribilis of biblical proportions where on any given day, reading the news is like reading a Stephen King novel replete with death, doom, gloom, and more death! However, since it’s Halloween, it would be remiss of us if we do not regale you folks with a few ghoulish tales of branding disasters taken from real life cases found deep in Gordian’s vault of horrors.

The names of the parties involved have been changed to protect the identity of the victims of these heinous crimes…

The Body Snatcher

Toil and Trouble was a lovely family-run neighbourhood restaurant that’s been around for a few years. However, their idyllic existence came crashing down one day when they were sent a Cease and Desist letter. The sender, attorneys of an international hotel chain, demanded the restaurant to immediately cease using their trademark which was very similar to the trademark of one of the hotel’s restaurants.

Even though T&T's trademark was not registered, being the first to use the trademark in Malaysia meant that they had the rights to prevent the use of their trademark (or any confusingly similar ones). However, unknown to the restaurant, the hotel had already registered the trademark a year prior, meaning the hotel is now its legal owner. The only recourse for T&T was to bring the hotel to court in order to regain ownership and use of the trademark. Unfortunately, after weighing the financial and emotional costs that would surely follow the lawsuit, they decided to simply throw in the towel and ditched their decade-old brand. They were just not ready to take on the body snatcher and their attorneys.

The Squatting Troll

Weyland Solutions is a local software company who provides business solutions to customers all over Asia. Weyland had registered their trademark in several countries not long after they started their business. However, unbeknownst to them, they had actually registered their trademark in the wrong International Class and had neglected to claim their software products in their previous registration.

After realising their mistakes, Weyland applied to register their trademark in the right Class and claiming their software products throughout Asia. Unfortunately, it is found that other businesses have already registered Weyland's trademark or a near identical trademark in several countries causing Weyland’s trademark applications to be rejected there.

Worse still, Weyland could not use their own trademark in 2 of the countries as it had been registered by squatting trolls who threatened to sue them for trademark infringement! Weyland was eventually forced to take the squatters to court to reclaim its trademark. However, even after spending close to 6 figures in legal fees, there is no guarantee that they would be successful as the 2 countries have a first-to-file rule where the first person to register the trademark will have an almost unassailable advantage in a cancellation suit. If Weyland fails to reclaim their trademark from the squatting trolls, they will have to use a different trademark in those 2 countries.

The Doppelganger

Jekyll is a 3rd generation medicinal oil maker. A few years ago other traders around him started to ride on his coattails by using trademarks that are very similar to his. This put Jekyll in a right old pickle as the customers are confused and some even started to think they are the counterfeiter!

As Jekyll did not register his family trademark, he would have to engage each of the doppelganger in a costly passing-off suit. Even if he had the means to take legal action, success was not guaranteed as much of the documentary evidence that Jekyll had of his 3rd generation business was destroyed in a flood, leaving Jekyll with nothing to prove that his business have used the trademark for decades. Sadly, Jekyll had to give up his decade old brand in order to differentiate his business from his neighbours.

We hope the bone-chilling tales above have given you something to think about. No? Then we shall leave you to ponder the lamentations of this ancient prose…

Murderous screams the silence broke,

The foulest thief and conniving rogue.

Cursed fiend and devious enchantress,

Closing in to steal your very likeness.

And though you fight to save your heart and soul,

Your stomach weakens and your bones grow cold.

Alas, you should have listened to your IP attorney,

And have your trademarks registered early.

For the Snatcher, the Troll, and the Doppelganger,

Are now free to possess, pillage, and plunder!

If you too are affected by problems that are similar to what these victims had faced, or if you would like to prevent such calamity from happening to you, you know who you gonna call!

BANKSY'S TRADEMARK SCRUBBED OFF THE REGISTER

Popular graffiti artist Banksy recently suffered the ignominy of having his registered trademark cancelled in the EU. In a David vs Goliath showdown, greeting card company, Full Colour Black, managed to cancel a trademark registered by Pest Control Office Limited, an entity which holds the reclusive artist’s trademarks.

While trademark cancellations are not uncommon occurrences, what is interesting to note is that the trademark happened to be the famous stencil and spray paint mural, ‘Rage, Flower Thrower’.

Rage, flower thrower, 2005 painted on a wall in Palestine, Jerusalem

Wait, trademark protection for wall paintings?! Those familiar with intellectual property rights protection would be quick to point out that copyright protection rather than trademark registration would be more appropriate to protect artistic works.

However, there is a method in this madness. When it comes to the enforcement of one’s copyright, one can’t do so behind the veil of anonymity as the author of the copyright work must be identified. On the other hand, any distinctive image can be registered by any person as a trademark. Considering the artist’s well-known proclivity for anonymity, registering his artwork as a trademark would seemingly appear to be a masterstroke worthy of applause as he can still prohibit any unauthorised use of his trademark protected artwork through a special purpose vehicle, hence, retaining his anonymity.

The Achilles heel in this seemingly well thought out plan is that a trademark registration can be cancelled if there is no intention to use it in good faith. And this lack of honest use was exactly what Full Colour Black relied on to apply for a cancellation of the trademark at the EU IP Office. Attempting to remedy the oversight, the mysterious artist set up a storefront in London to sell his artwork in an attempt to meet the trademark use requirement to prevent the cancellation of his trademark. In a classic case of ‘too little, too late’, this token, after-the-event usage of the trademark was not enough to prevent the cancellation of his registration as the IP Office took the view that the artist had not used the trademark in good faith. It didn’t help that the artist had shot himself in the foot by publicly announcing that the storefront and sale were merely an attempt to stave off the cancellation attempt.

While it may appear that a great injustice has been committed against the art world, or at least, an artist, the EUIPO’s decision is correct because the primary function of a trade mark is to serve as a sign to enable members of a public to identify the maker of goods or provider of service based on that sign and trademark registration is to grant owners the right to exclusive use of that trademark. To register a trademark with no intention to use it and to deny others the ability to use that trademark is considered an act done in bad faith.

Do you make artsy stuff and/or sell them on e-commerce sites? Unsure about which IPR protection to get? Why not drop us a holler? After all, we’re here to help!

Start-up Assistance

The past couple of months have shown us the importance togetherness.

This Merdeka month, let our Wawasan 2020 be one of unity! Let's make Malaysia greater by working hand in hand! After all, a threefold cord is not quickly broken.

So, to do our part, we are taking 50% off our trademark registration fee for the first 5 Malaysian Startups to email us with the code "2gedergeder". With the discount, registering your trademark is now as low as RM 1,320!

Terms and Conditions: This offer is available to Malaysian Startups only (<3 years). It is not inclusive of official fees payable to the IP office. And we reserve the rights to modify, suspend, or terminate the offer without prior notice. Offer ends 16 September 2020.

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