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  • Writer's pictureIP Gennesis

Registered Trademark Not Unbeatable

Updated: Oct 4, 2022

Some people may treat registration of trademark as registration of domain name, keep it for future purposes instead of engaging in commercial use instantly. Some may even want to try their luck by “locking” a trademark to see whether they can make a windfall gain in future by selling to others. However, the reality does not work in that way.

Trademark Registration Can be Cancelled for Non-Use

The Trademark Laws in many countries stipulate that registered trademark owners must use their trademarks in the course of trade within certain period of time.

For example in Malaysia, a registered trademark not being used commercially for a period of three years consecutively may be vulnerable for cancellation by an aggrieved person.

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” trademark registration in a trademark suit with an Indonesian local furniture company. The reason being the Swedish furniture retailer did not use its “IKEA” trademark for a period of three years consecutively in Indonesia. Despite the fact that the Swedish furniture retailer obtained registration of trademark in year 2010 in Indonesia, it only commenced use of the trademark in 2014. Hence there is a gap of more than three years since the registration of trademark until the commercial use, causing registration of the IKEA trademark being removed under Indonesian Trademark Laws. It was reported that the Swedish furniture retailer is in the midst of appealing against the decision.

In addition to a trademark should be used commercially after its successful registration, some countries would require the trademark owner to prove the use of the trademark before registration, or at least make a declaration that the trademark has been used or in preparation to be used in the particular country. Failing to do so may risk registration of trademark not being granted by the relevant authority. For example, the process of trademark registration in United States of America, Canada and Philippines have similar requirements.

Should Not Register Others’ Unregistered Trademark

If one day we realize that someone has not registered his trademark, we should not assume that he is not keen to protect his trademark 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” trademark. The “LUK” trademark 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” trademark and continued selling both Lammellen’s and EAC’s products using the “LUK” trademark. Subsequently, Luk Lamellen filed an application for a Court order to expunge EAC’s trademark 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” trademark in Malaysia even prior to 25.1.1977, EAC’s trademark registration date. The Court allowed Luk Lamellen’s application that the registration of “LUK” trademark by EAC to be expunged. Based on the evidence, it was clear that Luk Lamellen had been using the “LUK” trademark before 25.1.1977 and therefore they were the lawful proprietor of the “LUK” trademark. It was apparent that EAC made a wrongful claim that they are the proprietor of the “LUK” trademark knowing that the “LUK” trademark belonged to Luk Lamellen. Although legally Luk Lamellen is entitled to reclaim the ownership of the “LUK” trademark, they could have avoided the hassle of the court battle if the trademark is registered at the first stage.

Trademark Registration Self-Check Trademark 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 Trademark Registrations Trademark proprietors should make sure the registrations are renewed on time. Lapsed registrations will lose their legal protection and vulnerable to infringement by others. Generally trademark 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 trademarks 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 trademark. Throughout the years of development, the company is now providing additional 10 items under the same trademark.

In the circumstances, the company should file a fresh trademark application to cover the 10 additional items in order to protect its trademark 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 trademark protection is on a territorial basis. Therefore, trademark proprietors should always review their global business operation with their trademark registrations in overseas. If their trademarks 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 trademark 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 trademarks!

Disclaimer: 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.

Written by,

Lawrence Tan Malaysian Trademark, Patent & Industrial Design Agent Email:

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