Keyword Advertising: Challenging the Traditional Concept of “Use” under Malaysian Trade Mark Law

2009 ◽  
Vol 4 ◽  
pp. 1-17
Author(s):  
Pek San Tay
Keyword(s):  
Online Advertising ◽  
Trade Mark ◽  
Traditional Concept ◽  
Trade Marks ◽  
Search Terms ◽  
Keyword Advertising ◽  
Internet Users ◽  
Trade Mark Law ◽  
The Uk ◽  
The U.S

AbstractKeyword advertising involves the sale of keywords, sometimes comprising the trade marks of others, by search engine providers so that the keyword purchasers' advertisements are triggered as sponsored results whenever Internet users type in any of the keywords as search terms. This method of online advertising is new and novel and has been embraced widely by many businesses. However, its legality, particularly in the sale of keywords comprising the trade marks of others, has been challenged in a number of major jurisdictions. This article examines the approach of the courts in the U.S. and the UK with regard to the practice of keyword advertising with particular emphasis on the concept of “trade mark use.” With these foreign decisions serving as a useful guide, this article analyses and evaluates whether the practice of keyword advertising is legal under Malaysian trade mark law as embodied in the Trade Marks Act 1976.

24. Trade marks—an introduction

2019 ◽  
pp. 397-402
Author(s):  
Paul Torremans
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Trade Mark Law ◽  
The Law ◽  
The Uk

This chapter discusses the historical roots of trade marks, the need for reform, and the rationale of a system of trade marks. Over the last decades, trade mark law has been harmonized in Europe; in the UK, the Trade Marks Act 1994 saw a sea change in the law of trade marks.

Four Dimensions of Diamond T: Combination Trade Marks of Colours And Shapes

2006 ◽  
Vol 37 (4) ◽  
pp. 583
Author(s):  
Michael McGowan
Keyword(s):  
Three Dimensional ◽  
Trade Mark ◽  
Fourth Dimension ◽  
Trade Marks ◽  
Four Dimensions ◽  
Trade Mark Law ◽  
Dimensional Shape ◽  
Three Dimensional Shape

This article examines the relatively new fields of colour and shape trade marks. It was initially feared by some academics that the new marks would encroach on the realms of patent and copyright.  However, the traditional requirements of trade mark law, such as functionality and descriptiveness, have meant that trade marks in colour and shape are extremely hard to acquire if they do not have factual distinctiveness. As colour and shape trade marks have no special restrictions, it is proposed that the combination trade mark theory and analysis from the Diamond T case should be used as a way to make them more accessible. The combination analysis can be easily applied because every product has a three dimensional shape and a fourth dimension of colour.

HOW THE TRADE MARKS ACT SHAPES UP TO PERPETUAL MONOPOLIES

1998 ◽  
Vol 57 (2) ◽  
pp. 235-273
Author(s):  
JENNIFER DAVIS
Keyword(s):  
Engineering Design ◽  
English Language ◽  
Trade Mark ◽  
Consumer Products ◽  
Big Business ◽  
Trade Marks ◽  
Trade Mark Law

In British Sugar plc v. James Robertson & Sons Ltd. [1996] RPC 281, Jacob J. asked whether the 1994 Trade Marks Act enables “big business to buy ordinary words of the English language at comparatively little cost”. His answer was a resounding “no”. In Philips Electronics NV v. Remington Consumer Products, 22 December 1997, he asks whether trade mark law, by conferring a perpetual monopoly, can interfere with the freedom to manufacture artefacts of a “desirable and good engineering design”. The educated reader might hazard that he would again answer in the negative. And so it transpires. The thrill of the chase is to see how Jacob J. interprets the Act to reach this conclusion.

Distinctiveness Acquired Through Use

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Trade Mark ◽  
Legal Basis ◽  
Trade Marks ◽  
Secondary Meaning ◽  
Trade Mark Law ◽  
American Trade

Trade marks that are not inherently distinctive or that are descriptive or generic may nevertheless be registered if they have, as a result of the use that has been made of them, acquired distinctiveness, or what is called in US American trade mark law, ‘secondary meaning’. The legal basis for this basis for registration is found in Article 3(3) of the Directive and in Article 7(3) CTMR.

The rise, fall and convolution of the intent to use requirement under New Zealand trade mark law

2020 ◽  
Vol 10 (1) ◽  
pp. 87-114
Author(s):  
Rob Batty
Keyword(s):  
New Zealand ◽  
Trade Mark ◽  
Intention To Use ◽  
Trade Marks ◽  
The United Kingdom ◽  
Intent To Use ◽  
Trade Mark Law ◽  
History Of ◽  
Bona Fide ◽  
Historical Developments

The ‘cluttering’ of trade mark registers with unused trade marks is an issue of contemporary concern. One mechanism that can be used to prevent ‘deadwood’ trade marks from getting on the Register in the first place is to ensure that a trader has a genuine intention to use the trade mark. Indeed, the enactment of the first registration legislation in the United Kingdom (UK) was followed by a judicial insistence that a trader could not ‘properly register a trade mark’ if the trader did not have bona fide and present intention to use the trade mark. An intent to use requirement remains a feature of New Zealand (NZ) law, though it has a much reduced sphere of operation under the Trade Marks Act 2002. Tracing historical developments, this article examines how the regulation of the intent to use requirement has evolved under NZ law. This exercise provides a useful lens for understanding how and why the intention to use requirement operates as it currently does. Further, by examining the history of the intent to use requirement, the article also illuminates that there is nothing intractable about how NZ trade mark law has opted to regulate intention to use, and NZ law may be adjusted to better address concerns like cluttering.

27. Trade marks—European and international aspects

2019 ◽  
pp. 489-514
Author(s):  
Paul Torremans
Keyword(s):  
Competition Law ◽  
Trade Mark ◽  
Free Movement ◽  
Registration System ◽  
Trade Marks ◽  
Trade Mark Law ◽  
Free Movement Of Goods ◽  
International Aspects ◽  
Paris Convention ◽  
The Eu

This chapter discusses the international and European aspects of trade marks. Trade mark law is based on the Paris Convention and the TRIPS Agreement, with the Madrid system offering an international registration system. Inside the EU, one can also register a single trade mark for the whole of the Community by means of the Community Trade Mark Regulation. Trade mark law also has a substantial interaction with the Treaty provisions on the free movement of goods, but minimal conflict with competition law.

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