ASEAN COMMUNITY OF ENTREPRENEURS
INTELLECTUAL PROPERTY
Registered
Trademark
Not Invisible
BY LAWRENCE TAN
S
ome people may treat
registration of trademark
as registration of domain
name, i.e. by keeping it for
future purposes instead of
engaging in commercial use instantly.
Some may even want to try their
luck by ‘locking’ a trade mark 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. In Malaysia, for
instance, a registered trademark that
is 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 its trademark registration in
2010 in Indonesia, it only commenced
use of the trademark in 2014.
As there is a gap of more than
three years since the registration of
its trademark and commercial use,
the IKEA trademark was ultimately
removed under the Indonesian
trademark laws. It was reported that
the Swedish furniture retailer is in
the midst of appealing against the
decision.
Additionally, some countries
would require trademark owner to
prove the use of their trademarks
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 the trademark
registration not being granted by the
relevant authority. Bear in mind that
the trademark registration process
in the United States, Canada and
the Philippines is subject to similar
requirements.
DON’T REGISTER OTHERS’
UNREGISTERED TRADEMARK
If one day we realise 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 South
East Asia Clutch Industries (SEAC) had
been distributing, manufacturing and
selling clutch disc in Malaysia.
38
ASEAN COMMUNITY OF ENTREPRENEURS | ISSUE 2 : 2016