A French pharmaceutical company tried to file two trade marks with the Department of Intellectual Property Rights ("DIPR") for goods including cosmetics, soaps, shampoos and perfumes. The company had already successfully registered these two trade marks in more than 15 jurisdictions. The DIPR issued a Notice of Preliminary Rejection of Mark Registration, on the basis that both trade marks were descriptive, therefore asking the applicant to provide supporting arguments and evidence to show that the marks were distinctive.
Unsatisfied with the notice of preliminary rejection, the applicant submitted its registration certificates for the two marks in more than 15 jurisdictions to prove the worldwide recognition and registration practice in respect of the two marks.
The DIPR accepted the application for one of the marks only. The registrar asked the company to disclaim the word in question, and upon doing so successfully, the company was granted protection. It was not possible to pursue a similar outcome for the second mark in question.
- Despite of worldwide recognition proven by the registration certificates in many countries, a trade mark application may not be accepted first hand. It is advisable that SMEs consult thoroughly with a local IP expert before filing trade mark applications to understand the leanings of the local trade mark registrar in order to better prepare for potential outcomes.
- Rejected marks on the grounds of being descriptive might still be registered as long as SMEs disclaim the descriptive word in question.
- Register broadly in South-East Asian countries of interest – do not just consider the immediate class for the product to be sold, but consider whether the same trade mark could be used on related items or/and services such as packaging, advertising or merchandising.