The possible registration of the trademark ‘STARTUP’ in Malaysia has created some buzz over the past few days, especially among technology enthusiasts and media. Similarly, Apple is believed to have also applied for a trademark on “startup” in the USA, Australia, China & Singapore.
Speculations are rife on what Apple Inc. intends to do with this trademark, whilst others are voicing displeasure and concern that the trademark will create an unfair monopoly over a generic term that is frequently used within the business community.
Chuah Jern Ern, Chief Executive Officer of Advanz Fidelis Sdn Bhd and a senior intellectual property practitioner with over 20 years of experience in trademarks says that we must first examine the facts of the situation.
“I am surprised that this is being positioned with Malaysian based origins. Is this a Malaysia-specific issue? No. These trademarks have already been registered for some time in the USA and as an IR (International Registration). This issue on the registration of the STARTUP trademarks by Apple is also being played out in several other jurisdictions, and it will certainly be interesting to see how the scene unfolds in the months ahead,” says Chuah.
“I think it is premature to speculate on a Malaysian scenario where the term STARTUP cannot be used by businesses here. Any company, Apple included, should be very careful in asserting a wide claim over a word in generic use. Such a claim is likely to be futile in any case, as they can be so easily challenged,” added Chuah, who is the only Malaysian on the IAM 300 listing of the world’s top Intellectual Property Strategists.
“It is also important to note that these marks are not yet registered in Malaysia, and are only advertised in the Government Gazette. This means they can now be opposed by third parties on various grounds, and this is essentially why there is an opposition procedure prior to the registration of trademarks – to allow third parties to challenge trademarks that they believe should not be on the Register,” he stated.
“More importantly, it is a myth that a trademark registration gives the owner of a trademark the right to prohibit people from using the word in a generic sense. He only has a right to that word limited to the specific goods or services for which he has applied, and then only when used as a trademark,” stated Chuah.
“As an example, Apple is itself a generic word, but when applied to computers, it can act, and in fact, acts very well, as a trademark. No one can register the word “Apple” if they were planning to use it for selling apples. One core issue is whether the mark makes a direct reference to the character or quality of the goods or services for which it has been applied. If so, the mark should not be registered,” he concluded.
Advanz Fidelis is an IP specialist corporation in Malaysia that offers a fully integrated IP service under one roof, from registration and portfolio management through to advice on contentious matters (both advisory and consultation) and the physical implementation of policies related to clients’ IP needs.