MAKING A MARK

1. MAKING A MARK The Importance of Trademarks in Establishing a Distinct Identity in the Marketplace Chew Kherk Ying

2. Forbes magazine’s list of the World’s 50 Most Valuable BRANDS in 2010 • What do these companies have in common?

3. Trademark as a Representation of the Brand

4. Functions of a Trademark • Indicators of origin • Historically one of the earliest use of trademarks was by members of trade associations or guilds for the purposes of identifying the person responsible for making them. • Still recognized as an indicator of source. • Goodwill • An intangible value attributed to a business which enables a business to continue to earn a profit. • The value of the loyalty of the firm's customers, trademark required to enable association in the consumer's mind with a particular entity. • Product differentiation function • The more distinctive the mark, the more effective the selling power. • Has the power of distinguishing goods, hence reducing searching costs of consumers. • Symbols of quality • Consumers are assured that each product or service symbolized by a particular trademark is the same quality as other goods and services of the mark owner. • Investment or advertising power • The more distinctive the mark, the more effective the selling power (branding)

5. Choosing a Trademark

6. What can be Trademarked? • Letters and words; • Logos; • Pictures; • A combination of words and a logo; • Slogans; • Colours; • Scents; • Movement marks; • Product shapes; and • Sounds.

7. Spectrum of Distinctiveness Not Protectable Generic terms or common words for the products cannot function as a trademark because it would prevent others from rightfully using the common name for the product that they make. Suggestive marks indirectly refer to the goods or services with which they are associated. An arbitrary trademark is a word that exists but has no meaning when used on the product itself, while a fanciful trademark is a word without a dictionary meaning. Very Protectable

8. Marks to avoid • Descriptive marks that describe the goods or services with which they are associated. • Generic words (common words that describe an entire class of goods or services). These words do not serve as an indication of the source of goods or services and should be avoided when choosing a potential mark. • Signs which exclusively serve to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods, or other characteristics of the goods • Signs that have become customary in the current language or in the bona fide and established practices of the trade • Signs that are contrary to public order or to accepted principles of morality: scandalous or immoral marks offend the conscience. • Signs that are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service. • Any national or governmental flag, emblem or insignia

9. The Importance of Distinctiveness in Trademarks Illustrations

10. The Coca-Cola Co. of Canada v Pepsi-Cola Co. of Canada (RPC) 1942 • Coke sued Pepsi for infringing their registered trademark. • Court held that “Cola” was simply a descriptive word identifying a type of beverage and that the “distinguishing feature” of the Coca-Cola trademark is the word COCA. • As the distinguishing feature is not borrowed, there is no likelihood of deception.

11. Bata Ltd v Sim Ah Ba & Ors • Both parties had registered marks for similar goods (cl 25). Bata applied to have the other party’s trademark expunged from the register. • Despite aural similarity, the two marks when placed side by side exhibited many and obvious differences. Further, Bata shoes retailed exclusively in BATA shops. • As such, there is no real tangible possibility of confusion or deception to the probable customers or purchasers of goods retailed by Bata. Sim Ah Ba’s registered trademark Bata’s registered trademark

12. Danone Biscuits Manufacturing (M) Sdn Bhd v Hwa Tai Industries Bhd • ChipsMore is a registered trademark. • The Court held, having regard to the totality of circumstances, the ChipsPlus mark so nearly resembles the ChipsMore trademark as to be likely to cause confusion:- • The identical phonetic representation of the prefix “Chips”; • The similar import of the suffixes “Plus” and “More; • The omission of the space between the two individual words “Chips” and “Plus” corresponding to the omission of the space between the two individual words “Chips” and “More”; • The larger letter “C” of the prefix and “P” of the suffix of the ChipsPlus trademark corresponding to the larger letter “C” of the prefix and “M” of the suffix of the ChipsMore trademark; • The similar stylized double perimeter around the alphabets of both trade marks.

13. OTO Bodycare Pte Ltd v Hiew Keat Foong [2005] • “OTO” a registered trademark (among others, Cl. 10- medical and surgical equipment), produces “Electro-reflexologist” • Defendant used the words “OTC Bodycare” and “Electro-Relaxologist” in connection with an electrical reflexology apparatus. • The Court held that the use of OTO Bodycare.

14. Adidas America, Inc et al v. Payless Shoesource, Inc • Whether Payless Shoesource has violated Adidas’s THREE STRIPES trademark and the SUPERSTAR Trade dress by infringement, dilution or injury to business reputation? • The final jury verdict in 2008 awarded Adidas a staggering total of $304.6m. • Later reduced to $65m-Adidas remains victorious. Sample of Adidas shoes Sample of Payless shoes

15. Why Register your Trademark? • Registration is the only way to establish rights in a mark. The owner of a registered mark is entitled to a presumption of mark ownership and exclusive use from the filing date of the application. • A trademark confers on its proprietor an exclusive right therein. The proprietor is entitled to prevent all third parties, who do not have his consent, from using the same or similar signs, in the course of trade, for identical or related goods and/or services as those protected by the trademark. • A registered trademark can be a valuable asset if you decide to sell your business. You can transfer or licence your trademark rights against payment. • Registered trademarks are protected for the complete national territory, regardless of the actual geographic use made of the mark. • Registration of your mark may also prevent others from using that mark as an Internet domain name. • Protection can extend to Trademark Dilution – which may occur even without a likelihood of confusion; when there is a lessening of the capacity of a famousmark to identify and distinguish goods or services.

16. Value of a Trademark

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