Unfortunately, the answer is No.
Currently, there is no unitary system enabling a company to protect its IP globally by one filing. Protection of IP is on a territorial basis. In other words, if a company wishes to expand its businesses overseas, it should register its IP for protection in the desired countries individually.
Failure to protect your IP in the desired countries will expose your business to following risks:-
- By coincident, someone just happened to have registered the same brand name like yours.
- Your brand being maliciously “hijacked” by trade mark squatter.
- Do not have legal status to take action against infringer.
- Diminishing of brand value because anyone could use your brand.
- Spending high litigation cost to fight for ownership of the IP which you have lost.
The Brand Battles – Apple vs. Proview
International giant like Apple Inc. is well-known to protect its IP vigorously around the world. Unfortunately, when it first launched its iPad products in China in year 2010, the trade mark “iPad” had already been registered by one Proview Technology in China as early as year 2001.
It should be pointed out that Proview Technology is believed to have registered the trade mark “iPad” genuinely back in year 2001. It planned to use the mark for Internet Personal Access Device. It did not mean to hijack the trade mark “iPad” against future users for a windfall gain.
In the circumstances, Apple entered into a legal battle with Proview Technology to fight for the ownership of the trade mark “iPad” in China. The battle had hampered the sales of Apple’s “iPad” products in China and some of the products being pulled of the shelves in some parts of China.
Eventually, both parties reached settlement by Apple paying USD60 million to Proview Technology for the ownership of the “iPad” trade mark and ended the suit.
What we could learn from Apple’s story is that the risk of losing a brand not necessary arising from “stealing” by competitor. We are also not able to prevent someone might co-incidentally create the same brand name with ours.
McDonald’s vs McCurry
McDonald’s is another role model of aggressively protecting its IP globally. One of notable trade mark battle launched by McDonald’s is in Malaysia. In the case McCurry Restaurant (KL) Sdn Bhd v McDonalds Corporation  3 MLJ 774, McCurry is a fast food restaurant which offered Indian food and other local Malaysia cuisine. McCurry did not serve any food that was available at McDonalds' outlets.
McDonald’s initiated legal action against McCurry for passing off McDonalds' business as its own. McDonald’s pleaded that McCurry had copied and adopted McDonalds' distinctive “Mc” identifier for its own food and beverage outlet.
Eventually, the Court of Appeal ruled in favour of McCurry. It was found that McCurry’s presentation of its business was in a style and get-up which was distinctively different from that of McDonald’s. Secondly, the foods available at the McDonalds’ restaurants all carry the prefix “Mc” but none of the food items served in the McCurry’s restaurant carry the prefix “Mc”.
Thirdly, McDonald’s and McCurry served different type of food. McDonald’s served fast food (eg. burgers, French fries and soft drinks). On the other hand, McCurry only served typical Indian and local cuisine. Fourthly, the type of customers who patronise the McDonalds’ outlets were very different from those who visit McCurry’s restaurant. Therefore, the Court had drawn an irresistible inference from the totality of the evidence was that McCurry’s signboard could not result in reasonable persons associating McCurry with McDonald’s mark.
The Court of Appeal further held that even if the name “McCurry” was chosen, this could not by itself lead to the inference that McCurry sought to obtain unfair advantage from the usage of prefix “Mc”. In addition, McCurry had not offered to its customers item that were labelled either the same or similar with McDonald’s.
It is noteworthy that the action instituted by McDonald’s against McCurry is passing off instead of trade mark infringement. The outcome of this case could be different if McDonald’s had registered the trade mark “McCurry” at the first place.
What is the difference between Trade Mark Infringement and Passing Off?
Trade mark infringement is governed by statutory law. It occurs when an infringer uses a mark identical or so nearly resembling with a registered trade mark so as to likely to deceive or cause confusion in the course of trade.
The action of passing off is a common law remedy and it is not available in all countries. The brand owner has to firstly establish its goodwill, followed by misrepresentation by the wrongdoer, lastly the damages suffered by the brand owner.
The brand owner would bear a higher burden of proof as he has to first establish its goodwill and reputation under the brand, which might be difficult for new or small business. However, if the trade mark is registered at the first place, it might not be necessary for him to establish his goodwill and reputation. He may take action as soon as the wrongdoer uses a mark identical or confusingly similar to the registered mark in respect of the goods and services registered.
Therefore, it is necessary for all companies to take aggressive and proactive steps to protect their brand internationally to reduce uncertainties in the course of business and ensure businesses operate without obstacle.
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