On 25 January 1977, SEAC registered itself as proprietor of the“ LUK” trademark and continued selling both Lammellen’ s and its own products bearing the“ LUK” trademark. Subsequently, Luk Lamellen filed an application for a court order to expunge SEAC’ 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 January 1977 which was SEAC’ s trademark registration date.
The court allowed Luk Lamellen’ s application for the registration of“ LUK” trademark by SEAC to be expunged. Based on the evidence, it was clear that Luk Lamellen had been using the“ LUK” trademark before 25 January 1977 and therefore they were the lawful proprietor of the“ LUK” trademark.
It was apparent that SEAC made a wrongful claim that they are the proprietor of the“ LUK” trademark as the“ LUK” trademark belonged to Luk Lamellen. Although legally Luk Lamellen is entitled to reclaim the ownership of the“ LUK” trademark, it could have avoided the hassle of the court battle if the trademark was registered in the first place.
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. L a p s e d registrations will lose their legal protection and vulnerable to infringement by others. Generally, trademark registrations are renewable every 10 years in most of the countries. However, registration in some countries should be renewed within seven years or 15 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 five items of products under its trademark. Throughout the years of development, the company is now providing additional 10 items under the same trademark. Under such 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 or change of company name and address are very common in corporate world. Unfortunately, many people omitted the importance of updating their corporate information in the trademark 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 overseas. If their trademarks are not registered in any relevant country, it should be done as soon as possible to avoid loss of ownership.
In 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.
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.
Lawrance Tan,( LL. B( Hons), CLP) began his career in intellectual property in 2007. Prior to founding IP Gennesis Sdn Bhd, he was a practising advocate & solicitor in one of the leading IP firms in Kuala Lumpur. Learn more about IP Gennesis at www. ipgennesis. com.
ISSUE 2: 2016 | ASEAN COMMUNITY OF ENTREPRENEURS 39