DEWAN Rakyat had just passed the Trademarks Bill 2019, which permits non-visual signs (sound and smell) to be registered as trademarks.
With this development, Malaysia has followed other jurisdictions in protecting sound and smell.
The move towards this milestone was once an antithesis to the belief that trademarks must direct consumers’ minds to manufacturer or service provider.
Gradually, the world has begun to accept that sound and smell can also function as an identifier of products and services, just like visual marks.
Think of MGM’s lion roar in the film industry, as well as Play-Dough’s sweet, musky vanilla-like smell.
Both have been registered as trademarks for the brands.
Section 3(1) of the new bill has several main points.
The section states that the mark must be capable of being represented graphically.
This section is imported from the old Trade Marks Act 1976 and is relevant with visual marks, such as words and numbers
that can be represented graphically.
In light of the new bill, how would one represent sound and smell graphically?
Is a sample of perfume sufficient to satisfy this aspect? Would a piece of paper with musical notation be a good documentary evidence in describing a sound mark?
As a comparison, Section 1 (a) of the UK Trade Marks Act 1994 made it clear that the trademark must be capable of being registered in a manner that enables competent authorities to determine the clear and precise subject matter of protection.
Secondly, the subjective interpretation of the smell would pose a challenge to applicants in registering the product’s scent as their trademark.
Previously, many brands had attempted to register their products’ smell, but to no avail.
Chanel’s Perfume No 5 all failed to be registered as trademarks, evidencing the struggle to deal with smell marks.
It is anticipated that further guidelines will be issued by legislators and MyIPO to address the above challenges, but it would have been better if the new bill clarifies this area in the said section.
Above all, we welcome the law in permitting non-visual marks to be registered in Malaysia as it is a sign of a growth of intellectual property.
HELMI KHAIR
Seremban, Negri Sembilan