As an introduction, I have chosen this topic mainly on the reason that I have been personally asked by a good friend of mine specifically, in relation to the Intellectual Property (“IP”) issues. As such, it would be interesting to write an article on this topic as part of the Individual Activity 1 instructed by our beloved Pn Nuha.
Foremost, let us have a look at the registered trade marks involved.
REGISTERED TRADE MARKS:
(1) Word mark
(2) Composite marks
(Retrieved from https://iponline.myipo.gov.my/ )
CLASSES (in general as provided under the Nice Classifications).
Class 16 – Refers to goods which includes paper, cardboard and certain goods made of those materials as well as office requisites incorporating the said trade mark.
Class 35 – Refers to services which includes advertising, business management, business administration and office functions.
Class 43 – Refers to services providing food and drink and temporary accommodation.
ISSUES RAISED BY THE PUBLIC (as observed via Facebook posts):
1) The pattern ‘shell out’ has been patented?
Public are easily confused with the different terminologies used in the field of IP especially with regards to the word ‘pattern’, ‘patent’ and ‘trade mark’ (probably due to lack of exposure on the same). As such, it would be best to clarify the same here as follows:
a) Pattern – This term is usually used under the Industrial Design Act 1996 which refers to a ‘two-dimensional features which are put on articles for decorative purposes’. For example, the patterns on the surface of a vase.
b) Patent – Patent generally involves an invention which is new, involve inventive steps and industrially applicable as provided under the Patents Act 1983. Method of doing business however is not patentable. Nevertheless, the apparatus of doing the business may be patentable if it fulfills the statutory requirements of an invention.
c) Trade mark – A trade mark is used as an indicator of origin of a goods or services to the owner of the said mark. As defined under Section 3 of the Trade Marks Act 1976, ‘mark’ include ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof’.
In this situation the mark “” and the logo “” has been registered under the Trade Marks Act 1976.
Further, as you may note and as pointed out above, the mark “” is a word mark, and the mark “” is a composite mark being a combination of the crab claw device and the word “shell” + “out”.
2) Can the owner stop other business from using “shell out”?
YES. The owner of the trade mark enjoys exclusive rights over his marks which is also deemed to have been given to the use of the marks in relation to the goods or services for which it is registered.
For example, the “” mark has been registered under Class 43 in relation to the services of providing foods and drinks. As such the protection granted extended to the goods in relation to the services as well such as the food itself.
In the current situation, the owner of the marks has put up a cautionary notice on 14th April 2017:
It is a general practice by the owner of a registered trade mark to put up a cautionary notice on the newspaper as a medium to show that he/she is the owner of the said trade mark in order to defend the mark against any act of infringement. Nevertheless, following to the issuing of the cautionary notice he/she may still initiate legal action against any act of infringement of his registered trade marks.
Please also note that the owner may take legal action not just from the date of the registration of the trade mark, but he may also do the same to any infringement occurring between the filing date and the registration.
3) Can other business use “shell out”?
NO. Any use of an identical or so nearly resembling the registered marks so likely to deceive or cause confusion in the course of the trade in relation to goods or services in respect of which the trade marks are registered will amount to a trade mark infringement except where such act is permitted by the owner of the marks.
However, other business which is beyond those for which the trade mark is registered can still use “shell out”. This would include any attempt to register the same. Such application would rarely be acceptable since it lacks inherent distinctiveness in itself unless the new applicant can show that there is no likelihood of confusion or capable of distinguishing the applicant’s goods or services from the registered owner’s marks.
4) Does this also means that other business should stop selling foods with the same concept – eating seafood masses on table?
NO. Trademark protects the mark itself, having associated with the owner of the mark in respect of the goods and services the owner offers. However, this does not extend to the way or method of doing the business itself.
In other word, other business may still serves foods with the same concept provided that they did not refer it as ‘shell out’.
5) But most business has been using ‘shell out’ for the past few years!
A generic mark refers to the use of the mark as a name or description of an article, substance or service such as Tupperware or Aspirin. However, there are few other instances whereby the mark remains validly registered despite the same has become generic in some other countries such as Cola or Xerox. In this situation particularly, the public claimed that “shell out” referred as eating seafood masses on table.
Though it is a legal principle under the trade mark law that a generic mark may be deemed as an entry wrongfully remaining in the Register of the MyIPO (as provided under Section 33 of the Trade Marks Act 1976) the general principle has always been that the registration of the trade mark remain valid even if the mark has become generic by the use of the public after the registration of the said marks.
However, if other business owner (traders) can prove among others, that the word has become generic which is used by them not in relation to the goods connected in the course of trade with the owner of the registered mark they may apply to the Court to remove the registered mark from the MyIPO’s Register.
6) What if the other business have been using “shell out” before or at the same time with the registered owner?
There are 2 ways to go about the above situation:
(a) Prior use
In the event that other business has been using “shell out” before the registered mark, he/she can show that he/she have used the same in the past over a period of time.
This is usually done by showing substantial evidence of use of the mark in Malaysia to the MyIPO (prior to the filing date of the current registered mark) to substantiate arguments that his/her mark has acquired a secondary meaning by way of its extensive use in relation to the goods / services applied for.
(b) Honest concurrent use
New applicant may need to convincingly argue that he/she has honest concurrent use of his/her mark since at least the date of application of the registered marks.
If the new applicant can prove honest concurrent use, this amounts to an exception to which the Registrar may then exercise his discretion to allow the new applicant’s mark to proceed to registration despite the fact that there may already exists a confusingly similar mark for similar goods or services.
For this purposes, the new applicant needs to adduce evidence which is capable of showing to the Registrar that the relevant public has had sufficient opportunity to become aware that there are two such marks which are in use in the same market and that they are able to be alert to the possibility of confusion and as such some degree of actual confusion may be tolerated.
(c) Application to expunge / remove the registered mark by an aggrieved person:
There are several grounds provided under the Trade Marks Act 1976 to remove / expunge any registered mark such as:
(i) Non use – If the new applicant is able to gather evidence to show that the registered mark has not been used for a period of 3 consecutive years, the new applicant will be able to apply to the High Court to expunge the cited mark on the grounds of non-use.
(ii) The mark has become generic (as discussed earlier).
(iii) Entry made in Register without sufficient cause – This refers to the registrability of the registered mark.
As a conclusion, it is important for the public to be more aware of the various field of protection and the right entails under the Intellectual Property provided under our statutory laws. Trademark particularly did not just merely serve as an indicator of origin of a goods or services to the owner of the said mark but it also protect the quality associated with the mark.
There is no business without monumental hurdles from marketing to branding in order for them to achieve to their current position in the market. To have it widely known using the mark is an effort to distinguish the owner goods from other traders and to built a reputation is not a ONE DAY business. Without the protection accorded by the registration of the trade mark, third parties can easily and unfairly ride on and profit from the owner’s goodwill and reputation present in his/her mark.
AZARITH SOFIA BINTI AZIZ