Monthly Archives: September 2013

BGA Management Series: Licensing & Franchising – The Good, The Bad and The Ugly!

This is an introductory workshop for Cafe Owners and Potential Cafe owners to learn more about Licensing and Franchising in ways that they can better protect their investment and interest as well as to expand their business. You will learn:

– The basic franchise and licensing laws of Malaysia
– Introduction to Malaysia Franchise Laws
– Registration of a franchise
– Franchise Agreement
– Repercussions
– Common mistakes in franchising agreements
– Expansion through methods other than franchise
– Licensing v Franchising

Maximum 20 participants only. Please register with Sarah Joy at hello@baristaguildasia.com by 31st August 2013

Per Person : RM70 per person

Inclusive of Refreshment and Coffee.
Note: no refunds or transferring once confirmed.

More information please visit Barista Guild Asia’s Facebook page.

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Apple moves to trademark the term ‘startup’ in Malaysia

I was quoted by Digital News Asia in their article, “Apple moves to trademark the term ‘startup’ in Malaysia“on 30 August 2013.

I understand that the Technopreneurs Association of Malaysia (TeAM) will be taking on Apple’s STARTUP trade mark applications by filing an opposition before the deadline. More details at Digital News Asia.


Apple moves to trademark the term ‘startup’ in Malaysia
Gabey Goh
Aug 30, 2013

– Applications filed with MyIPO for mark under various classes
– Members of public or companies have until Oct 8 to oppose

IN a move that will certainly raise many eyebrows, Apple Inc has filed applications with the Intellectual Property Corporation of Malaysia (MyIPO) to trademark the term ‘startup’ in the country.

Yes, you read that right.

The Cupertino, California headquarters of Apple and a Kuala Lumpur-based legal representative, Wong & Partners, lodged the ‘startup’ applications on July 23.

The technology giant has applied to hold the trademark of the word ‘startup’ under various computing, mobile and educational classes.

According to the documents submitted, the mark ‘startup’ is being applied for in classes 35, 37, 41 and 43 for the following services:

Class 35: Retail store services, including retail store services featuring computers, computer software, computer peripherals, mobile phones, and consumer electronic devices, and demonstration of products relating thereto.
Click here to view/download the application [PDF]

Class 37: Maintenance, installation and repair of computer hardware, computer peripherals and consumer electronic devices; consulting services in the field of maintenance of computer hardware, computer peripherals, and consumer electronic devices.
Click here to view/download the application [PDF]

Class 41: Educational services, including conducting classes, workshops, conferences and seminars in the field of computers, computer software, computer peripherals, mobile phones, and consumer electronic devices and computer-related services; providing information in the field of education.
Click here to view/download the application [PDF]

Class 42: Design and development of computer hardware and software; technical support services, namely, troubleshooting of computer hardware and software problems; installation, maintenance and updating of computer software; technological consultancy services in the field of computers, computer software and consumer electronics; computer diagnostic services; computer data recovery.
Click here to view/download the application [PDF]

According to a report by Australia-based website TM Watch, which specialises in trademark developments, the same set of applications has also been filed in the country.

Calling it an “audacious” application, TM Watch journalist Tim Lince also noted that “the official Apple website references its operating system booting-up as ‘Startup’ (with a capital letter).”

[UPDATED] Terrence Lee of SGE.io has also reported that Apple has tried the file the same set of applications in Singapore since 2011.

The company’s trademark application was filed through the Madrid Protocol, an international registration system for marks of which Singapore is a member country. The US and China registrations may have also been filed through this system.

In Singapore, the mark is still pending approval despite being registered more than two years ago, which suggests that the registration has faced complications.

According to Lee, it is unclear if the Intellectual Property Office of Singapore received any objections, since any party can oppose the trademark two months after it was filed.

Responding to queries by Digital News Asia (DNA), intellectual property lawyer Foong Cheng Leong (pic) said that it is possible to trade mark English words so long that the mark is distinctive i.e. capable of distinguishing its goods or services from other traders.

“The marks, once registered, would give exclusive rights to Apple Inc to the word ‘startup’ in respect of the above listed services. Apple may stop anyone from using the said marks for the above listed services,” he said.

Foong added that the mark would cover the term ‘startup’ in any other variation, be it upper case or lower case letters such as ‘STARTUP’, ‘Startup’ or ‘StartUp’.

“Note that the registration does not mean that nobody can use the word ‘startup’ for any goods or services. It is only limited to the registered goods or services,” he added.

When asked how this move would affect existing boot camps, accelerator programmes and government-initiated programmes that have the term in their names, Foong said that assuming the marks are registered, if any of these bootcamps or accelerator uses the mark ‘startup’ for any of the abovementioned services (e.g. education services), they may be open to trade mark infringement and legal action.

“You can’t even provide retail services using the mark ‘startup’!” he added.

Moreover, Foong noted that if no one opposes the application with MyIPO, the application would proceed to the next stage of the process, which is registration.

“Three of the marks are advertised in the Government Gazette for opposition purposes. That means, any person can file a Notice of Opposition with MyIPO against the applications on or before Oct 8 2013.

“If no oppositions are filed after Oct 8 2013 — except the mark in Class 35 which is still pending advertisement — the marks will proceed to registration,” he said.

In addition the application cites a priority claim on the trademark from Jamaica dated Oct 21, 2010.

According to Foong, the law allows trademark applicants to get an earlier priority date by relating to a foreign mark.

“So for example, I filed a trademark in Singapore on May 25, 2013 and I also intend to file the mark in Malaysia on Aug 25, 2013. Instead of getting a priority date of Aug 25, 2013 (which is the filing date), I will get a priority date of May 25, 2013 (if I rely on the Singapore application).

“This is useful because if someone filed the mark after you filed your mark (let’s say on Aug 1, 2013) in Malaysia, your Malaysia trade mark will prevail because you got an earlier priority date. That person’s trademark will get objected,” he said.

DNA has reached out to Apple in Cupertino, California, and is currently awaiting official comment.

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Event: Legal Practice and Research in the Electronic Age

I will be speaking at this event jointly organised by the KL Bar Pupils Welfare Committee and the KL Bar Information Technology & Publications Committee on the topic “Legal Practice and Research in the Electronic Age”


Pupils Workshop on Legal Research

2 CPD POINTS (EVENT CODE : 11092013/KLB/KLB1229/2)

Dear Pupils-in-Chambers,

The KL Bar Pupils Welfare Committee and the KL Bar Information Technology & Publications Committee are organising a legal research workshop specifically for pupils on practice in the electronic age , covering the following areas:

1. Alternative Online Legal Research.
– Using Google.
– Getting Unreported Malaysian Cases & Other Legal Resources.
– Foreign Judgements.
– Getting The Latest Updates.

2. Using Apps For Your Practice.

3. Building an e-Library.

Details as follows :

Speaker : Mr Foong Cheng Leong

Date : 11 September 2013 (Wednesday)

Time : 3.00pm – 5.30pm

Fee : RM 20.00 per pupil

Venue : KL Bar Auditorium,
10th Floor Wisma Kraftangan
No. 9, Jalan Tun Perak,
50050 Kuala Lumpur

Due to the intensive and practical nature of the workshop, there will be a limit of 50 participants on a first-come, first-served basis.

Click here to register. For more details, please contact Ms. Indra at 03-2693 3585.

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Bread & Kaya: Choosing a good trademark for your startup

Choosing a good trademark for your startup
Foong Cheng Leong
Aug 16, 2013

– A descriptive name has its advantages, but can be very hard to protect legally
– Register your mark, or you might find yourself in court when you go to market

Bread & Kaya by Foong Cheng Leong

WHEN George Eastman, founder of Eastman Kodak Company, chose the name Kodak for his camera, he explained why:

… because I knew a trade name must be short, vigorous, incapable of being mis-spelled to an extent that it will destroy its identity, and, in order to satisfy trademark laws, it must mean nothing. The letter K had been a favourite with me – it seemed a strong, incisive sort of letter. Therefore the word I wanted had to start with K. Then it became a question of trying out a great number of combinations of letters that make words and ending with K. The word Kodak is the result.

Although great advice from a man 100 years ago, it is difficult to come out with such special name for a product. It is enticing for traders to choose a name that best describes their products. It saves them the trouble of promoting extensively or even explaining to customers what the name is all about.

But the use of a name which directly describes one’s goods or services generally attracts problems.

A few years ago, the National ICT Association of Malaysia (known by its Malay-language acronym Pikom) initiated action against EM Exhibitions (M) Sdn Bhd and one of its directors for using the trademark ‘PC EXPO’ for its computer exhibitions.

Pikom alleged that the mark PC EXPO infringes and passes off its trademark ‘PC FAIR.’ The High Court held that the ‘PC FAIR’ is a common descriptive term and is used by numerous traders in the computer industry.

Thus, in short, the mark PC FAIR is not protectable and EM Exhibitions (M) Sdn Bhd is free to use the mark PC EXPO. [For the full judgement, click here].

The moral of the story is, always choose a distinctive mark. A distinctive mark is a mark which distinguishes your products from other traders. A distinctive mark can be registered and protected.

Although an unregistered mark can also be protected, you will need to produce voluminous evidence in court to show that your mark is protectable.

A distinctive mark should be a mark that does not have direct reference to the character or quality of your products. For example, the ‘e-Commerce Shop’ trademark for websites is not a distinctive mark as it describes the character of your product.

However, if you name your fruit stall ‘e-Commerce Shop,’ then you may be able to register it as it does not describe the goods and services provided by your stall.

If you are selling clothes on your e-commerce store, you should avoid using words like ‘clothing,’ ‘fashion,’ ‘haute’ or ‘couture’ as your trademark unless it is combined with a distinctive word or words such as ‘Digital News Asia Fashion.’ [A hint we should diversify? – ED]

Words that extol your products also should be avoided. For example, ‘cheap,’ ‘good,’ ‘great,’ ‘pretty,’ ‘fabulous,’ ‘sexy,’ ‘awesome,’ ‘cool,’ ‘cute’ and ‘best.’

The mark also should not be a name of a place – for example, ‘Silicon Valley’ for software.

Lastly, using a mark which is similar to your competitor’s trademark is a big no-no! If you do so, you’ll be beaten down with a lawsuit before you can start doing business.

You should do an online search at the Intellectual Property Corporation of Malaysia’s database.

Notwithstanding the above, there is nothing wrong with using generic words as your trademark. However, you may not be able to obtain protection.

If you wish to use a generic word, it should be accompanied with a distinctive word or set of words – for example, ‘FCL&Co Legal Services.’

Why register?

Your intellectual property is an asset. Registration gives you exclusive rights over the mark. You may sell it or license it.

There are many horror stories where marks were misappropriated by third parties when the owners did not register them. This usually results in a long and expensive legal suit. Some even had to change the marks that they had been using for years.

You may register the mark yourself by heading to the Intellectual Property Corporation of Malaysia or alternatively, engage a Trade Mark Agent to assist you. The latter would be recommended as they can provide you with proper advice and services.

To conclude, choose a distinctive mark before rolling out your products!


First published in Digital News Asia on 16 August 2013

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