UNREGISTRABLE MARKS
Prohibited Signs for Trademark Registration
While many signs fit the definition of a trademark and could potentially be used as such, certain ones are explicitly prohibited from being registered for various reasons.
A common reason for prohibition involves signs that could confuse or mislead the public. Beyond these general cases, there are specific prohibitions that must be considered.
In some instances, refusal to register a trademark is mandatory; in others, the decision is left to the discretion of the Registrar.
Scandalous Or Offensive Matter
A trademark, or part of it, cannot be registered if it contains or includes any scandalous or offensive content, or if it would not be eligible for legal protection.
In the United Kingdom, the legal grounds for prohibiting certain trademarks are that they contain “scandalous design” or are “contrary to law or morality.” This differs from the Malaysian Act, which requires additional attention due to Malaysia’s multi-racial society, where religious and cultural susceptibilities must be considered.
To apply these principles to trademark registration in Malaysia, sensitivity and respect for the diverse religious and cultural backgrounds of substantial minorities are crucial. Any potentially offensive, culturally insensitive, or racially inappropriate marks should be avoided to ensure compliance with the laws and maintain social harmony.
Prejudicial To The Interest Or Security Of The Nation And Contrary To Law
The Registrar has the responsibility to determine whether a trademark contains content that could be prejudicial to the interest or security of the nation. This involves assessing whether a trademark contains inflammatory statements or language that could be deemed harmful or destabilizing.
Identifying marks that are contrary to law or unprotectable in court can be challenging. While text-based trademarks may contain obvious issues, trademarks that consist of images or devices require additional scrutiny. In such cases, it’s generally assumed that the applicant owns the copyright to the design, but the Registrar must still ensure that it does not pose any legal or security risks.
Marks Claiming Intellectual Property Rights
Certain trademarks or those containing specific elements must be denied registration. This includes trademarks with the following terms or phrases:
- “Patent,” “Patented,” or “By Royal Letters Patent”
- “Registered” or “Registered Design”
- “Copyright”
- Any similar wording or equivalent terms in any language.
It is a criminal offense to falsely claim that an unregistered mark is registered. Violators may face fines, imprisonment, or both. Regulation 13 also outlines additional prohibited marks, such as:
- “To counterfeit this is a forgery”
- “Registered Trade Mark”
- “Registered service mark”
- Any similar phrases indicating registration or copyright
- Specific terms like “Bunga Raya” and any representation of the hibiscus flower
These restrictions are designed to prevent misleading representations and ensure that trademarks are not falsely advertised as being registered or protected by patent, copyright, or other legal mechanisms. The presence of such terms can lead to confusion and potential legal consequences for misuse.
