The recent application by Apple Inc to trademark the term "startup" in Malaysia has caused an uproar among many Malaysians. It was reported that the technology giant has applied to trademark the word "startup' under various classes in relation to computing, namely the following:-
| Class 35 Class 37 Class 41 Class 42 | Retail store services; Retail store services featuring computers, computer software, computer peripherals, mobile phones, and consumer electronic devices, and demonstration of products relating thereto; all included in Class 35 Repair and installation services; Maintenance, installation and repair of computer hardware, computer peripherals and consumer electronic devices; consulting services in the field of maintenance of computer hardware, computer peripherals, and consumer electronic devices; all included in Class 37 Educational services; Educational services, namely conducting classes, workshops, conferences and seminars in the field of computers, computer software, computer peripherals, mobile phones, and consumer electronic devices and computer-related services; providing information in the field of education; all included in Class 41 Technological services; design and development of computer hardware and software; technical support services; installation, maintenance and updating of computer software; consulting services in the field of computers, computer software and consumer electronics; computer diagnostic services; computer data recovery; all included in Class 42 |
The application is currently in the opposition stage whereby any third parties may give cause as to why the mark should not be allowed to register. This is a normal process that every trademark application needs to go through before it can be registered. It will be interesting to see how this will pan out in Malaysia. It was reported that Apple has also filed similar applications in Singapore and Australia.
One very important point of clarification that we would like to make is that a trademark registration does not give the owner the right to prohibit others from using the word in a generic sense. What the trademark registration does is that it gives the owner of the mark, rights to the mark in the specific class of goods or services in which it has been registered and only when used as a trademark.
So what is a trademark? A trademark is a sign which distinguishes the goods and services of one trader from those of another. A sign includes words, logos, pictures, names, letters, numbers or a combination of these. A trademark registration is valid for 10 years from the date of application and renewable every 10 years.
One common misconception is that once a trademark is obtained, it is applicable worldwide. It is actually untrue, there is no central worldwide administration. Companies are still required to file their trademark individually in different countries. An alternative is via Madrid Protocol whereby one application will cover more than one country. The only difficulty is that not all countries participate in the Madrid Protocol. So companies are still required to submit their application in that specific country that they wish to apply for, for example Malaysia. Malaysia is not a member of Madrid Protocol. Click here for list of Madrid Protocol members.
So have you registered your trademark? Or is your trademark registered in the countries that you operate in? If not, perhaps you should consider doing so now in order to protect your brand name. If you really think about it, the cost incurred is not much considering its for 10 years.
One very important point of clarification that we would like to make is that a trademark registration does not give the owner the right to prohibit others from using the word in a generic sense. What the trademark registration does is that it gives the owner of the mark, rights to the mark in the specific class of goods or services in which it has been registered and only when used as a trademark.
So what is a trademark? A trademark is a sign which distinguishes the goods and services of one trader from those of another. A sign includes words, logos, pictures, names, letters, numbers or a combination of these. A trademark registration is valid for 10 years from the date of application and renewable every 10 years.
One common misconception is that once a trademark is obtained, it is applicable worldwide. It is actually untrue, there is no central worldwide administration. Companies are still required to file their trademark individually in different countries. An alternative is via Madrid Protocol whereby one application will cover more than one country. The only difficulty is that not all countries participate in the Madrid Protocol. So companies are still required to submit their application in that specific country that they wish to apply for, for example Malaysia. Malaysia is not a member of Madrid Protocol. Click here for list of Madrid Protocol members.
So have you registered your trademark? Or is your trademark registered in the countries that you operate in? If not, perhaps you should consider doing so now in order to protect your brand name. If you really think about it, the cost incurred is not much considering its for 10 years.