The importance of international Trade Mark Protection
You may have read in recent news that IKEA has lost its trade
mark in Indonesia, where, pursuant to Indonesian Trade Marks Laws,
third parties can apply to have the trademark removed if it has not
been used commercially for three or more consecutive years after
The Swedish corporate giant struggled with the impact of these
laws, with the Indonesian Courts ruling in favour of a local
furniture store PT Ratania Khatulistiwa, who sought to have
IKEA's trademarks removed due to lack of commercial use. Whilst
one of the Judges, upon appeal to the Supreme Court, questioned the
application of these laws to such an internationally well known
brand, ultimately IKEA was unsuccessful.
The importance of protecting your trade mark across borders is
something that has become an increased priority in recent times
especially with continued growth in internet and social media
usage. A company's registered trade mark not only provides
brand equity but also enables a company to stop third parties or
competitors from leveraging off their success and goodwill.
It's essential for companies that intend to operate globally
that they obtain international trademark protection of their brand.
However, the process of obtaining international trade mark
protection is often lengthy, time consuming and expensive. Each
international jurisdiction has different requirements for trade
mark registration. Also, for some international jurisdictions it
isn't enough to simply obtain trade mark registration. Some
international jurisdictions have very strict requirements that need
to be adhered to in order to maintain the trade mark registration.
For example, in the Philippines, an owner of a registered trade
mark must file declarations of actual use at certain periods and a
failure to file the declaration may result in a cancellation of the
registered trade mark.
The IKEA example demonstrates the importance of planning and
managing your international trade mark portfolio. In some
jurisdictions such as Indonesia and the US, international
protection should generally be obtained when there is a clear
intention to use the trade mark in that jurisdiction or there is
actual use of the trade mark in that jurisdiction. Otherwise, you
may be exposed to a removal application or your application may not
proceed to registration. Companies should also regularly audit
their international trade mark portfolio to ensure they are
complying with all relevant use and maintenance requirements.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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