Trade Mark Registration Can be Cancelled for Non-Use
The Trade Mark Laws in many countries stipulate that registered trade mark owners must use their trade marks in the course of trade within certain period of time.
World renowned Swedish furniture retailer IKEA has been hit by similar legal provision in Indonesia. It was reported that the Swedish furniture retailer lost its “IKEA” trade mark registration in a trade mark suit with an Indonesian local furniture company. The reason being the Swedish furniture retailer did not use its “IKEA” trade mark for a period of three years consecutively in Indonesia. Despite the fact that the Swedish furniture retailer obtained registration of trade mark in year 2010 in Indonesia, it only commenced use of the trade mark in 2014. Hence there is a gap of more than three years since the registration of trade mark until the commercial use, causing registration of the IKEA trade mark being removed under Indonesian Trade Mark Laws. It was reported that the Swedish furniture retailer is in the midst of appealing against the decision.
In addition to a trade mark should be used commercially after its successful registration, some countries would require the trade mark owner to prove the use of the trade mark before registration, or at least make a declaration that the trade mark has been used or in preparation to be used in the particular country. Failing to do so may risk registration of trade mark not being granted by the relevant authority. For example, the process of trade mark registration in United States of America, Canada and Philippines have similar requirements.
Should Not Register Others’ Unregistered Trade Mark
If one day we realize that someone has not registered his trade mark, we should not assume that he is not keen to protect his trade mark and we can register it as our own.
In a reported case in Malaysia, Luk Lamellen Und Kupplungsbau GmbH v South East Asia Clutch Industries Sdn Bhd, the Plaintiff, Luk Lamellen is a German manufacturer of vehicle parts bearing the “LUK” trade mark. The “LUK” trade mark was first registered by Luk Lamellen in Germany in 1954 and subsequently other countries. On the other hand, the Defendant East Asia Clutch Industries (EAC) had been distributing manufacturing and selling clutch disc in Malaysia. On 25.1.1977, EAC registered itself as proprietor of the “LUK” trade mark and continued selling both Lammellen’s and EAC’s products using the “LUK” trade mark.
Subsequently, Luk Lamellen filed an application for a Court order to expunge EAC’s trade mark registration on “LUK” pursuant to Section 45(1)(a) of the Malaysian Trade Marks Act 1976. Luk Lamellen contended that they had been using the “LUK” trade mark in Malaysia even prior to 25.1.1977, EAC’s trade mark registration date.
The Court allowed Luk Lamellen’s application that the registration of “LUK” trade mark by EAC to be expunged. Based on the evidence, it was clear that Luk Lamellen had been using the “LUK” trade mark before 25.1.1977 and therefore they were the lawful proprietor of the “LUK” trade mark. It was apparent that EAC made a wrongful claim that they are the proprietor of the “LUK” trade mark knowing that the “LUK” trade mark belonged to Luk Lamellen.
Although legally Luk Lamellen is entitled to reclaim the ownership of the “LUK” trade mark, they could have avoided the hassle of the court battle if the trade mark is registered at the first stage.
Trade Mark Registration Self-Check
Trade mark protection is a long term effort and is not something we can just leave it in the file folder upon successful registration. Registered proprietors are advised to check their registrations from time to time on the following issues.
Ensuring Validity of Trade Mark Registrations
Trade mark proprietors should make sure the registrations are renewed on time. Lapsed registrations will lose their legal protection and vulnerable to infringement by others. Generally trade mark registrations are renewable every ten years in most of the countries. However, registration in some countries should be renewed within seven years or fifteen years.
Specification of Goods & Services
It should be pointed out that trade marks are protected in respect of the goods and services registered. At the initial stage, a company may have registered 5 items of products under its trade mark. Throughout the years of development, the company is now providing additional 10 items under the same trade mark.
In the circumstances, the company should file a fresh trade mark application to cover the 10 additional items in order to protect its trade mark and products comprehensively.
Change of Company’s Particulars
Merger and acquisition, change of company name and address is very common in corporate world. Unfortunately, many people omitted the importance of updating their corporate information in the Trade Mark Registry promptly. This omission may be an obstacle to initiate legal action against infringer, ownership disposal, licensing or franchising in future. Therefore, everyone should update the owner’s information accordingly.
Protection in Foreign Countries
It should be noted that trade mark protection is on a territorial basis. Therefore, trade mark proprietors should always review their global business operation with their trade mark registrations in overseas. If their trade marks are not registered in any relevant country, it should be done as soon as possible to avoid loss of ownership.
As a conclusion, registration of trade mark is not something should be treated lightly. The management of a company should appoint a dedicated staff or appoint professional consultants to oversee the matter.
Contact us now to find out more about adopting the above steps to protect your trade marks!
The information above is for general understanding only and is not intended to constitute legal advice. Readers are advised to consult with the appropriate legal advisors in the respective jurisdiction.