DEVELOPER’S TRADE MARK DILUTION
“Sentral” does not seem to have any meaning in the English dictionary. However, when Kuala Lumpur Sentral Sdn. Bhd (KLSB) established the “KL Sentral” development, KLians were very excited. Not only was the name “Sentral”, attractive and unique (as we all know “Sentral” should be correctly spelt “Central”), KL Sentral became a hit with the “Journey to Sepang Airport Made Easier” ERL was on the go. The train systems in KL Sentral was indeed a long waited dream come true for those travelling into the city.
Today, it is noted that the name “Sentral” is being used by many developers. You now see PJ Sentral, Klang Sentral, Cheras Sentral and the list goes on for many other developments, and surprisingly, these developments are mostly developed by different Developers. The reason for writing this short article is to share my views on these two (2) questions which have been asked numerous times by participants in my Trainings on IP:-
· Is “Sentral” a trade mark?
· If so, why hasn’t the owner of the trade mark commenced an infringement action against others who have used the trade mark in the construction field?
Let’s go straight to the first question if “Sentral” is a trade mark. The law of trade marks in Malaysia is governed by the Trade Marks Act 1976 (TMA). Section 3 of the TMA defines trade mark inter alia as a mark used on goods or services for the purpose of indicating a connection in the course of trade between that good or service with the person making the goods or providing the services. So the fact that “Sentral” when used is always used in respect of developments/constructions, it creates a link in the mind of the public in Malaysia that “Sentral” means a development be it housing, industrial or commercial. However, when a search was carried out in 2018 at MyIPO’s IP Online Search, it is noted that there are more than 100 hits in respect of the word “Sentral” and this word is not only registered in respect of services related to construction but also many other goods such as watches, bags, clothings, golf bags, etc. Most of this trade mark registration, no doubt has been applied for by the same owner who majors in developments / construction. All these registration seem to indicate that “Sentral” is indeed a trade mark. In time, this trade mark when becomes associated with other products, will slowly fade away from the minds of the public of its link to development/construction. This seems to be like “self-dilution” of trade mark. Whether this is a good strategy or not, is something to be pondered about.
What is interesting to note is that the words “Kuala Lumpur Sentral” was first registered in 1997 in various classes related to products and in relation to services of housing/construction in 1998 by KLSB. Then, from 1998 until 2015, various other trade marks consisting of the word “Sentral” and owned by other proprietors, were also allowed registration such as Kampar Sentral, D’sara Sentral and Perodua Sentral. Then in 2015, MyIPO granted registration for the trade mark “Sentral” per se to KLSB. How is this possible? This means only KLSB now has the absolute right to the word “Sentral” in respect of developments/constructions. Why haven’t KLSB sued other Developers for using the word “Sentral”?
This is a real life scenario in respect of Developers. How about other organizations? Many organizations face a lot of questions in their daily running of business……. Do you know what a trade mark registration can do for you? Can MyIPO grant a same trade mark to others? Could the reason for KLSB not suing be that these companies are all related or have obtained licence to use the word “Sentral” from KLSB? These are some questions which need answers and to find out more about these happenings, come attend AFSB’s Training sessions on IP.
This article shows that it is important not only for Developers but also all those other organizations, to know is it mandatory to register a trade mark, what are registrable trade marks, what happens if someone else uses your trade mark, what can you do when MyIPO had issued certificate of registration to others indicating that they too have a right to use your trade mark as part of their trade mark…..and the lists goes on. Trade mark protection is about monopoly of right. Know what it is, to protect your rights. Protect your trade mark …. DIY.
Contact: If you are interested to know more about trade marks and DIY, come attend our Trainings on Intellectual Property (IP). WA us at 019-7372671 or drop us an email at email@example.com should you wish to know about our Training sessions.