Malaysia Trademark Refusal: Distinctiveness Issues in the OCEANHERB Cosmetics Case

A Malaysian trademark application may encounter a refusal during examination. For cosmetics, health foods and beauty products, wording that describes natural ingredients can raise distinctiveness issues.

In this article, we will review the actual overseas trademark examination case and explain how to deal with the distinctiveness rejection that may occur during the Malaysian trademark registration process. We have compiled information to help companies or brand representatives who want to understand overseas trademark applications, Malaysia trademark registration, and trademark rejection strategies. 

In the Malaysian trademark system, a trademark should not be a mere phrase, but an indication of the origin of a product or service. In other words, consumers should be able to see the trademark and recognize that it is a product of a particular company.

However, if trademark is a direct description of a product's features or ingredients, then it may be judged to be deficient in distinctiveness. For example, when using expressions such as Natural Herb Skin or Ocean Beauty for cosmetics, consumers are more likely to understand it as a phrase describing the characteristics of a product, rather than a brand name.

Such a direct description of the raw materials, properties and quality of a product is difficult to accept as a trademark that can be used exclusively by a particular company. The Intellectual Property Corporation of Malaysia (MyIPO) determines trademark distinctiveness in accordance with these criteria. 

To explain what happens in Malaysia trademark examination, let’s take an example of a cosmetic brand called OCEANHERB.

The brand has a concept of selling skin care products that emphasize the plant ingredients obtained from the sea. The brand name also reflects this concept and combines the words OCEAN and HERB.

However, the Malaysian trademark review process may raise a lack of distinctiveness for the following reasons:

OCEAN is a common word for sea. HERB is a generic word for herb or plant ingredient.

The combination of these two words allows OCEANHERB to convey to consumers the meaning of cosmetics, including herbal ingredients derived from the sea. In other words, it can be understood as a description of a product's features or components rather than a brand name.

For this reason, the examiner may determine that the trademark is more of a description of the nature of the product than a label identifying the product of a particular company. 

Even if you have been notified of a rejection due to a lack of distinctiveness, you can increase your chances of registering through a variety of countermeasures. In real trademark practice, the following logic is often used:

The trademark review is based on how the trademark as a whole makes an impression on the consumer, rather than analyzing each word separately.

For example, OCEAN and HERB may each be words with general meaning, but the combination form OCEANHERB may be recognized by a single brand name.

In particular, when used in conjunction with a logo design or a specific character style, the overall trademark impression is likely to be considered a more original brand. Emphasize this and you can claim that the trademark is not just a description, but a source identifier. 

Brand naming is often used to combine two or more words to create a new name.

OCEANHERB is not a pre-existing word, but a combination of two words. This type of trademark is often recognized as a distinctiveness because it is likely to be recognized as a new brand.

Therefore, it is important to emphasize that trademark is not just an explanatory expression but an original brand name. 

If you look at the Malaysia trademark registration case, you can see that several trademarks with words such as SEA or HERB have already been registered.

For example, trademarks such as SEA BREEZE have been registered for products related to skincare products.

This precedent shows that even trademarks containing words reminiscent of a particular natural source or environment can be registered if the overall brand impression is recognized. 

If the trademark is already in use in the market, you can also claim that you have obtained distinctiveness through your use.

The following materials may be used as proof of trademark use:

- Product Sales Record

- Online shopping mall sales page

- Advertising and marketing materials

- Product Package Photo

- Brand promotion articles

This data is an important reason for consumers to recognize the name OCEANHERB as a specific brand. The Malaysia Trademark Act also requires that trademarks recognize registration if they have obtained distinctiveness through their use. 

When preparing for an overseas trademark application, it is important to not only set a brand name, but also consider each country’s examination standards.

In Malaysia trademark applications in particular, it is recommended to consider the following factors together:

A trademark consisting of only descriptive words should be avoided. If possible, use a new brand name. You can also consider a strategy to apply a logo trademark together with a text trademark . It is important to ensure that trademark usage data is constantly available.

If you're ready, it's much easier to set up a countermeasure even if a rejection occurs during the trademark review process.

Malaysia is one of the most important countries for companies considering entering the Southeast Asian market. Therefore, the trademark protection strategy in Malaysia is very important in terms of brand protection.

The rejection of trademark does not make it impossible to register. A comprehensive review of the trademark's structure, typing, similar trademark precedents, and evidence of actual use has a good chance of overcoming the rejection.

If you are a company that is applying for a trademark overseas, understanding these criteria and their countermeasures in advance and preparing your brand strategy will be very important in the long run.