The tricky issue of trademarks

In a broad sense, most of us are comparable to salesmen.  Throughout our lives, we concentrate our efforts on persuading others to give us a favourable response to our endeavours.

The aim of the politician, diplomat, professional or the man who proposes marriage is all the same, that is acceptance of our offer of services or compliance with demands subtly made.  In preference and often in competition to others in the same field.

Is competition good?  Andrew Carnegie says, "While the law of competition may be sometimes hard for the individual, it is best for the race because it ensures the survival of the fittest in every department.  We accept and welcome, therefore, as conditions to which we must accommodate ourselves, great inequality of environment, the concentration of business, industrial and commercial, in the hands of a few and the law of competition between these, as being not only beneficial, but essential for the future progress of the
race."

In the words of Adam Smith: "Every man, as long as he does not violate the laws of justice, is left perfectly free to pursue his own interest in his own way and to bring his industry and capital in competition with those of any other man or order of man."

In our economic system which has relied on competition to keep down prices and improve the quality of products, the policy of the common law is not to run the risk of hampering competition by providing civil remedies to everyone competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements by rival traders.

Exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of rivals, even though he knows this to be untrue, have been tolerated in the past (perhaps still so) by common law as venial puffing which gives no cause of action to aggrieved rivals.

The law has now provided progressively and cautiously some remedies against dishonest rival traders by implementing copyrights, trademarks and patent laws and by developing the tort (civil wrong) of "passing off."  A civil action for passing off will lie where a trader marks his goods in such a way as to create the impression  that they are the goods of another trader, thereby "cashing in" on the latter's goodwill.

A trademark is any visible sign or device used by a business organisation  to identify its goods and distinguish them from those made or carried by others.  Trademarks can be in many forms, such as words, logos, letters, numerals, devices, names, the shapes or other presentation of products or their packages, wrappings, colour combinations with signs and so on.

In any case, the trademark should display some distinctive marks to distinguish the goods of the proprietor of the trademark from those of other persons.  The trademark protects manufacturers/traders against unfair competition where a person or business represents or pass for sale his goods as the goods of the trademark owner.

Customers are protected from imitations of the goods for which they have known preference.  For those who are interested in knowing more of trademark protection, please visit the website http://www.malaysia-trademark.com/index.html

When does one commit infringement of trademark which makes him liable in criminal and civil law?  Under Section 38 of the Trade Marks Act, a registered trademark is infringed by a person who uses a mark which is identical  with it or so nearly resembling it as likely to deceive or likely to cause confusion.

The above provisions have been subject to numerous interpretations by overseas and local courts the only safe conclusion of whether an act constitutes infringement depends upon the facts of each case.

In the leading Supreme Court case of Tohtonkee v Superace (M) Sdn Bhd (1992), the court made an important decision.  In that case, one of the main points was whether condoms sold under the "Sister" trade mark infringes those sold under "Mister" trade mark.  The answer was "no" based on the totality of evidence before the court.

The court said: "There is similarity in the second syllable but, as a whole, the similarity is not close enough as to be likely to cause deception or confusion.  Further, the get-up of the intervenor's product is a green background with the picture of a lady whereas the get-up of the applicant's product is a white-lue-grey background with a picture of a lady and a man.

Similarly, in a recent case, the Kuala Lumpur High  Court held that there was no basis for the plaintiff's allegation that the trademark "Comelku" had infringed the trademark "Anakku".

In conclusion, there is no legally recognised category of unfair competition as such although it is not unlikely that a more flexible approach to traditional concepts will be adopted in future to meet new tricky situations and circumstances.

Below are two videos, "How to trademark your logo design" and "Trademark Protection" which will give you some insight on trademarks and how to ensure your trademarks receive adequate protection.