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Registering Scents, Sounds and Colours: Changes Brought by the Malaysian Trademarks Act 2019

The protection of trade marks in Malaysia has been given a revamp with the coming into

force of the new Trademarks Act 2019 (“TMA 2019”). A significant area of interest among

brand owners and businesses is the widening scope of what constitutes a trade mark capable of being registered under TMA 2019. In short, TMA 2019 now allows for the registration and subsequent protection of a non-traditional trade mark.

Traditional vs Non-Traditional Marks - What's the Difference?

Traditionally, trade marks consist of letters, numerals, words, slogans, symbols, logos,

pictures and combination thereof.

However, the world is changing in a rapid pace, over the years, trade marks are no longer

limited to the traditional visible sign alone. In the fast-growing digital age, people may be

more acquainted with sound and motion that easily catch more attention. Scent, colour,

shape, and 3D design are also the result of development from the conventional mark. Few examples of non-traditional marks would be the “Tiffany Blue” colour, commonly associated with the New York City jewellery company, Tiffany & Co., the special 3D clown figurine being the mascot for the fast food chain, Mc. Donald’s and the sound of lion roaring symbolising the production of the film studio Metro-Goldwyn-Mayer.

Changes Brought by the TMA 2019:

Non-traditional trade marks have originally been difficult to register. However, an increasing number of jurisdictions are now widening the scope of their legislation to allow the registration of these marks.

In Malaysia, the new TMA 2019 (by virtue of sections 2 and 3) now allows for the registration of shapes, colours, sounds, scents, holograms, and even sequences of motion, among others.

The significance this brings to brand owners and businesses is that they will now be able to register certain non-traditional signs that the general public has come to associate with their company; this of course will be greatly beneficial in terms of brand name protection, as the unauthorised use of a registered mark will constitute infringement and will allow the registered owner of the trade mark to initiate legal action. Take the earlier example of the Tiffany Blue colour, if a company has a registered trade mark for the particular shade of colour, other jewellery companies or manufacturers adopting the same/similar colour in their product packaging are at risk of trade mark infringement. Therefore, the registration of the colour as a mark helps Tiffany & Co. maintain the exclusivity of the brand and the colour that it is so famously known for.

Potential Challenges:

Appropriate description of mark: One practical issue with the registration of nontraditional marks is with entering the description of the mark during the application

process. For example, the description of a sound mark would require the applicant to include a graphic representation of the sound waves, the audio, and specify in words the duration, amplitude, and frequency, among others.

Common colours to the trade: Additionally, with regard to the registration of colour

marks, those that are common to the trade for which they are being registered will not be

allowed for registration. For example, the colour pink, being common to the cosmetic

industry, may not be registered and monopolised by a single cosmetic company for their

products. A shade range of colours also may not be registered; for instance, a company will not be allowed to trade mark the colour green in all its shades – the Pantone code for the colour must be specified.

Issue of similarity: One of the more controversial type of non-traditional trade marks is the scent/smell trade marks. The challenge really lies in the test for comparison of similarity as it would involve a considerable degree of subjectivity as individuals would perceive smells quite differently.

Overall, the TMA 2019 has brought about many significant changes to this area of the law, in line with the evolution of businesses in terms of branding and marketing. As such, it would certainly be wise for businesses to consider registering the non-traditional marks they have been using in order to safeguard their brand interests and rights

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