Filling Trademarks In Kanji Characters In Malaysia

Question 4
We have recently become aware that it might be possible to file trademark applications in Malaysia for trademarks in Kanji characters. May we have your opinion as to whether or not it is necessary to file applications normally filed in Roman characters to also filed in Kanji characters?

Answer 4
We are pleased to inform you that it is possible to file trademark applications in Malaysia for trademarks in Kanji characters. This trend has become increasingly popular as Chinese is widely spoken in Malaysia and there has been a surge of applications in Kanji characters at the Malaysian Trade Mark Registry.

As the marks ‘Celgene’, ‘Revlimid’ and ‘Vidaza’ do not have any meaning in Chinese, the Kanji characters will be based on the pronunciation of the English word. However, each similar sounding Chinese character will have a meaning in Chinese.

Question 5
Please confirm that Kanji characters are indeed Chinese characters. To that end, whatever Chinese characters we have filed for CELGENE, REVLIMID and/or VIDAZA in other Asian countries could also be filed in Malaysia and be considered Kanji?

Answer 5
Kanji is essentially the term given to the use of Chinese characters to represent the Japanese language. Therefore, Chinese characters are not referred to as Kanji unless used in a Japanese context.
For the purposes of filing, please be informed that whatever Chinese characters you have filed for CELGENE, REVLIMID and/or VIDAZA in other Asian countries will be afforded protection in Malaysia and we can attend to filing the same at the Malaysian Trade Mark Registry.

Question 6
Do many people file the Kanji characters? We are trying to get a better sense of how important it is to cover the Kanji characters.

Answer 6
In our experiences a large number of our clients have sought protection for Chinese or Kanji Characters, most notably for goods such as pharmaceuticals (class 5), electronic media etc(class 9), stationery etc (class 16) and education, training, entertainment, sporting and cultural activities (class 41).

In order to assess how important it is to cover Chinese or Kanji Characters, it would depend on your target market. We advise filing as it will provide wider protection in Malaysia where Chinese is a widely spoken language and Chinese or Kanji characters appear on many products.