TeAM, as the main organization that represents and/or works with most of the “Startup” players including companies, Agencies, Technopreneurs as well as the Government, believe that this matter has serious implications for the ecosystem and would require the assistance and cooperation of players/parties within the industry to oppose it.
As a start, TeAM hosted a dialogue on 5 September 2013 at Plug & Play Technology Garden and invited a representative from the legal firm Messr Shearn Delamore (a 1st tier IP law firm in Malaysia) to explain the situation.
Apple has generally filed for trade mark (TM) protection for word “STARTUP” in a number of countries and for the same classes –35, 37, 41 and 42.
Similarly here in Malaysia, the filings for the above 4 classes were in 2011. Early 2012, MyIPO raised an objection on all 4 applications based on the following (likely presumed) grounds that the “STARTUP” mark:
• is not an invented word;
• comprises of words which have direct reference to the character and quality of the services; and
• non-distinctive as it is descriptive of the services
Apple via its IP lawyers submitted written appeal for all 4 fillings and provided grounds as to why the marks have to be accepted. Based on the grounds given, all 4 marks were accepted and thereafter advertised in the government gazette giving the public a chance to oppose to the marks being registered. Refer to diagram for the stages in registering a TM.
TeAM has until 8/10/2013 to file in the opposition for 3 of the marks as the other one has yet to be gazetted.
As for the fillings in other countries, the current the status of Apple TM fillings are as per below:
(a)Hong Kong – Registered
(b) UK – Protected via International Registration 1081614
(c) USA – Applied
(d) Russia – Protected via International Registration 1081614
(e) Turkey – Protected via International Registration 1081614
(f) Australia – Refused
(g) Switzerland – Refused
(h) China – Refused
(i) Norway – Refused
(j) Singapore – Refused
As seen above, Apple has been successful in some countries and equally unsuccessful in other countries.