Common LawCivil Law
Basic PrincipleThe tort of passing off can always be used to take legal action against unauthorized use of one’s trade mark. Subject to whether you are able to prove the three essential elements of passing off.

The IP right is based on “first-use”. If your trademark has been filed/registered by others, you can still claim back the trademark so long you can prove you have used the trademark first or earlier through Court proceeding.
Care less about unauthorized use of an unregistered trade mark as they practice a strict FIRST TO FILE FIRST TO GET system for any intellectual property.

The ownership of IP is based on “first-file” basis. If your trademark has been taken or filed by others in Civil Law countries, it will be very difficult for you to claim back your trademark, even though you have used the trademark first or earlier.
CountriesAsia:
Bangladesh, Brunei, Hong Kong, India, Malaysia, Maldives, Pakistan, Singapore, Sri Lanka.

Other countries:
Antigua and Barbuda, Australia, Bahamas, , Barbados, Belize, Botswana, Cameroon, Canada, Cyprus, Dominica, Gambia, Ghana, Grenada, Guyana, Jamaica, Kenya, Kiribati, Lesotho, Malawi, Malta, Mauritius, Mozambique, Namibia, Nauru, New Zealand, Nigeria, Papua New Guinea, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, Samoa, Seychelles, Sierra Leone, Solomon Islands, South Africa, Swaziland, Tanzania, Tonga, Trinidad and Tobago, Tuvalu, Uganda, United Kingdom, Vanuatu, Zambia.

(Approximately 80 countries)
Asia:
China, Taiwan, South & North Korea, Japan, Vietnam. Philippines, Indonesia, Cambodia, Myanmar, Laos, Thailand

Other Countries:
Russia, Europe (except UK), Brazil, Congo, Central African Republic, Chile, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, Egypt, Equatorial Guinea, Ethiopia, Gabon, Guinea, Mexico, Mongolia, Mozambique, Panama, Paraguay, Peru, Servia, Slovakia, Turkey, Ukraine, Uzbekistan, Venezuela


(Approximately 150 countries)
CasesCase 1: Apple Inc. buy back “iPad” trademark in China

Apple Inc. using $60 million to buy back ownership of the “iPad” trademark in various countries from Proview Technology (Shenzhen) who owned the trademark in China. Proview Technology has registered “iPad” trademark in China in 2001 prior to entering the Chinese market.
Case 2: IKEA LOSTS ITS BRAND NAME IN INDONESIA!

The trademark of Swedish furniture King, “IKEA” is now owned by a local Indonesian rattan furniture company PT Ratania Khatulistiwa where its trade mark IKEA (acronym for Intan Khatulistiwa Esa Abadi) was registered back in 2013. This has undoubtedly negatively impacted the Swedish firm as its famous name has been awarded to a local Indonesian company. The Swedish firm had registered its name in Indonesia since 2010 whereas the Indonesian company registered the same name in 2013. The Indonesian company was able to secure the brand name via invalidation proceeding against the Swedish firm to remove its registered name under the doctrine of non-use. In fact, the Indonesian company was able to bring forward to Court evidence of non-use of “IKEA” name for three consecutive years of the Swedish firm (The Swedish firm did not use “IKEA” name in Indonesia for 3 consecutive years despite it has registered the name in year 2010). It is also a known fact that the first and only IKEA mega store opened in Indonesia in late 2014.

To be successful in such a proceeding, one would have to prove the actual NON commercial use of a registered trade mark by the proprietor for a specific period of time, in this case, three (3) consecutive years.
Conclusion Based on the above information, you might think that registering your IP is not necessary for Common Law countries as it is based on “first use” and passing off can be executed against unauthorized parties. However, do bear in mind that the tort of passing off has to be initiated in Court which will cost you a lot more than paying for official trademark registration.

As for Civil Law countries, registering your IP is crucial and the first thing you ought to do as these countries practice a strict first come first serve basis. We are sorry to inform you that if your trademark happens to be registered by another, then you would very limited choice to re-secure your trade mark. One quickest way is to purchase it back from the person who claimed it first just as Apple uses 60 million dollars to buy back its iPad mark from a China company.