TeAM to take on Apple in trademark issue, calls for evidence

By A. Asohan September 6, 2013

TeAM has engaged law firm Shearn Delamore & Co to oppose Apple’s move to register ‘Startup’ as trademark
Urges startup community to submit evidence by Sept 13 so that lawyers can prepare case before Oct 8 deadline

TeAM to take on Apple in trademark issue, calls for evidence THE Technopreneurs Association of Malaysia (TeAM) will take on the fight to prevent Apple Inc from registering the word ‘Startup’ as a trademark in Malaysia, and is calling on all companies and individuals to support it with evidence.

“TeAM is going to oppose this; we think it’s important for us to do this as an association that represents startups,” said Dr V. Sivapalan, director of the TeAM Policy Institute (TeAM-PI) and also one of the original founders of the entrepreneurs’ association. “We’re taking up this cause.”

Sivapalan said TeAM estimates the legal cost for it to do so would be about RM12,000 (US$3,640). Cradle Fund Sdn Bhd, the non-profit agency under Malaysia’s Ministry of Finance that manages a startup investment fund; and Sivapalan’s own company Proficeo Sdn Bhd, which coaches and mentors technology entrepreneurs; have each pledged RM1,000.

Newly-elected TeAM president Dhakshinamoorthy ‘Dash’ Balakrishnan, also the founder of StartupMalaysia.org, has promised to underwrite the remaining legal costs if no others come forward to make pledges.

TeAM has already engaged the services of legal firm Shearn Delamore & Co to file notices of opposition with the Intellectual Property Corporation of Malaysia (MyIPO).

On Aug 30, Digital News Asia (DNA) broke the story that Apple, via its Kuala Lumpur-based legal representative Wong & Partners, had filed applications to register the word ‘Startup’ as a trademark with MyIPO, under four different classes.

In its application, Apple cited a priority claim on the trademark from Jamaica dated Oct 21, 2010.

Evidence needed

Notices of opposition against each of the four applications have to be filed before Oct 8. If there are no objections and the trademark is awarded to Apple, no other company would be able to use the word ‘Startup’ in its business or company name, products or services, programmes or initiatives that fall under the four classes the Cupertino, California-based technology giant applied for:

Class 35: Retail store services, including retail store services featuring computers, computer software, computer peripherals, mobile phones, and consumer electronic devices, and demonstration of products relating thereto.
Click here to view/download the application [PDF]

Class 37: Maintenance, installation and repair of computer hardware, computer peripherals and consumer electronic devices; consulting services in the field of maintenance of computer hardware, computer peripherals, and consumer electronic devices.
Click here to view/download the application [PDF]

Class 41: Educational services, including conducting classes, workshops, conferences and seminars in the field of computers, computer software, computer peripherals, mobile phones, and consumer electronic devices and computer-related services; providing information in the field of education.
Click here to view/download the application [PDF]

Class 42: Design and development of computer hardware and software; technical support services, namely, troubleshooting of computer hardware and software problems; installation, maintenance and updating of computer software; technological consultancy services in the field of computers, computer software and consumer electronics; computer diagnostic services; computer data recovery.
Click here to view/download the application [PDF]

To help bolster its legal case, TeAM and its lawyers are also asking for companies or individuals which have used the word ‘Startup’ in the names of their businesses, programmes, initiatives, products or services that fall under any of the classes above to submit any evidence they have of their use of the word.

While such evidence should preferably be dated before the Jamaican priority date of Oct 21, 2010, any material – in the form of documentation, advertising material, brochures and such – can be submitted via email to [email protected] or via snail mail to TeAM c/o Plug & Play Technology Garden, Level 7, The Gardens South Tower, Mid Valley City, Kuala Lumpur.

TeAM to take on Apple in trademark issue, calls for evidence “We need this evidence by Friday the 13^th of September for us to prepare the legal submissions,” said Dash (pic). “If we don’t this, we can’t go around blaming MyIPO or the government for granting this.

“We have to take up this; we [the startup community] need to champion this,” he added. “Speak to 100 people you know and get them to gather evidence too.”

TeAM said it would be reaching out to other organisations such as the National ICT Association (Pikom), given that many of its members may be affected too.

It would also seek the aid of the Multimedia Development Corporation (MDeC), the national ICT custodian and the government agency in charge of the Multimedia Super Corridor (MSC Malaysia) project and the Digital Malaysia programme, to get the word out.

Generic words can be trademarked

Dash and Sivapalan were speaking to TeAM members after a briefing on the issue by Shearn Delamore & Co advocate and solicitor Timothy Siaw, also a partner in the firm’s intellectual property practice.

In his briefing, Siaw noted that the word ‘Startup’ is a common and generic word, made even more popular during the dotcom boom of the late 1990s.

“It is a word very much linked with Internet companies; it’s not a highly distinctive word,” he said, but added that common, generic words can be registered as trademarks as long as they do not directly describe the services or the goods.

“The best example of this is the trademark ‘Apple’ for computers; another would be ‘Camel’ for cigarettes,” he said.

“However, if you’re using ‘Startup’ for business or technological services, it obviously has a meaning that is directly linked to the services or products – for example, StartupMalaysia.org,” said Siaw.

He said that for Apple to show it owns the mark ‘Startup’ in Malaysia, it has to do two things:

Prove that it was the first company to use the mark in Malaysia in relation to the services or goods cited in its four classes of application – if any company can prove it used the mark in the same four classes before the Oct 21 2010 Jamaican priority date, this would dispute Apple’s claim.
Show that the mark has become associated exclusively with Apple in the four classes of use – that is, when you think of ‘Startup’ in those areas, you would think of Apple first.

“I think this association would be very difficult for Apple to prove,” said Siaw.

However, he noted that Apple has filed similar applications in other jurisdictions. It has been successfully registered in Hong Kong, but refused by the registries in Australia, China, Norway, Singapore and Switzerland. Korea has rejected its application.

It has also applied for the mark in the United States and it is currently protected via the Madrid Protocol in these jurisdictions: The European Commission, Russia and Turkey. If the United States rejects the application, these countries will follow suit, Siaw said.

MyIPO opposed

As to why MyIPO has not refused Apple’s application while Singapore has, Siaw said that different registries have “different thresholds or standard.”

“MyIPO has its own due process, but it can be influenced by Apple showing precedence of acceptance in other jurisdictions – and the next layer would be the opposition stage, which we are at now,” he added.

According to information obtained by DNA, MyIPO had first refused Apple’s application on the grounds that the ‘Startup’ mark:

Is not an invented word;

Comprises words which have direct reference to the character and quality of the services; and

Is non-distinctive as it is descriptive of the services.

However, Apple via its legal firm Wong & Partners had successfully appealed MyIPO’s decision, which was why it was accepted and advertised in the Government Gazette, giving the public a chance to oppose Apple’s application.

“I just want to highlight the importance of opposing it at this stage – you have a window now [until Oct 8] to oppose Apple’s filing,” Siaw told TeAM members at the briefing.

“Give us the information and evidence we need [via TeAM], and we can consolidate the evidence and use it collectively – but all four applications have to be opposed individually. We can file the notice of opposition first, but we would prefer to have the evidence before us when we do.

“Apple can stop you from using the mark if they get it registered. You can move to expunge after this, but you will have to go to court, and it will be much more costly.

“Now it is in the administrative process at the registry; now is the time to oppose it,” Siaw said.

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