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 registration.
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.