IP Deadlines: Don't get caught with your pants down

Ever found yourself racing to finish a project, only to realize you missed the deadline by a mile? We’ve all been there—late-night cramming, coffee-fueled sprints, and the all-too-familiar feeling of panic. While missing a deadline for your personal project might just mean a few missed marks or an extra day of work, missing deadlines in intellectual property (IP) can have far-reaching consequences.

Most intellectual properties, like trademarks, patents, and designs, have specific renewal dates. Patents require annual fees, trademarks every ten years, and designs every five years. Failing to renew can result in losing your rights, as Rebecca Dowdeswell, a Leicester salon owner found out the hard way.

Rebecca registered “nkd()” as a trademark for salon related services in 2009. However, she forgot to renew the trademark 10 years later when it was up for renewal. Having missed the grace period of 6 months for late renewal, Rebecca had no choice but to re-file her trademark in 2022, setting off a series of complications.

Her new application is being opposed by L'Oréal, citing potential consumer confusion with their "Naked" line from the Urban Decay series. Despite attempts to settle the matter amicably, the opposition is still ongoing, having cost Rebecca more than £30,000 in legal costs already.

This whole ordeal is a big wake-up call for business owners about just how important it is to stay on top of IP renewals. Keeping those deadlines in check can save you from some seriously costly legal trouble and keep your brand protected.

In Malaysia, trademarks must be renewed every ten years. If you miss the renewal deadline, there’s a six-month grace period for late renewal. But if you fail to renew your trademark within the grace period, you may still be able to request for a restoration of your trademark within 6 months of your trademark being removed for non-renewal. However, this process can be complex and costly, so it's crucial to stay on top of renewal dates. Setting reminders or working with an IP professional can help ensure your trademarks remain protected and avoid any costly surprises.

Why Trademark Applications Fail: Common Grounds for Refusal

Applying for a trademark is a crucial step in protecting your brand, but many applications hit roadblocks along the way. Understanding the common reasons for refusal can help you navigate the process more successfully. Here are the key grounds on which trademark applications often fail:

1. Too Generic, Descriptive, or Non-Distinctive

Trademarks need to be unique identifiers of your goods or services. If your mark is too generic or simply describes the product, it won't be approved. For example, trying to trademark "Fresh Bread" for a bakery will likely be rejected because it's merely descriptive. Aim for creativity and distinctiveness to ensure your trademark stands out.

2. Too Similar to an Earlier Trademark

One of the most common reasons for refusal is similarity to an existing trademark. If your mark looks or sounds too similar to a previously registered trademark, it could cause confusion among consumers. Conduct a thorough search before applying to avoid this pitfall.

3. Scandalous or Against Public Policy

Marks that are considered scandalous, offensive, or contrary to public policy are not permitted. This includes obscene language, derogatory terms, or anything that could be deemed socially unacceptable. Keep your trademark professional and respectful to avoid rejection on these grounds.

4. Deceptive

A trademark must not be misleading about the nature, quality, or origin of the goods or services. For instance, if you try to trademark "Organic Honey" for a product that isn’t organic, it would be considered deceptive and thus, rejected. Ensure your trademark accurately represents what you are offering.

5. Containing the Name, Emblem, or Flag of a Place

Using the name, emblem, or flag of a country, city, or other governmental body can lead to refusal. Such symbols are protected to prevent misuse and misrepresentation. Avoid incorporating these elements unless you have explicit permission.

6. Containing the Likeness of a Person

Using the name or likeness of a person, particularly without their consent, is another ground for refusal. This includes famous personalities and private individuals alike. Ensure you have the necessary permissions if you wish to use someone’s likeness in your trademark.

Tips for a Successful Trademark Application

1. Be Distinctive: Create a unique and memorable mark that distinguishes your goods or services.

2. Conduct a Thorough Search: Check existing trademarks to ensure yours is not too similar.

3. Avoid Descriptive Terms: Go beyond simple descriptions and generic terms.

4. Stay Professional: Avoid any scandalous or offensive content.

5. Be Honest: Ensure your trademark is not misleading or deceptive.

6. Respect Protected Symbols: Steer clear of names, emblems, or flags of places without permission.

7. Get Permissions: Secure consent when using someone’s name or likeness.

By understanding these common grounds for refusal and taking proactive steps, you can increase the chances of your trademark application being approved and securing your brand’s identity.

What do you do when you're faced with a copycat?

Ever caught wind of someone copying your awesome brand?

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