In a news two months ago, the Supreme Court in Indonesia dismissed the appeal lodged by the Swedish furniture King, IKEA and ruled that the name 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 name with substantial fame has been awarded to a local company. This further proven the fact that not only you have to register your mark eagerly in all intended countries, but you should also make sure that the mark must be operational and be aware of by the public within the intended countries.

What happened in the IKEA’s case exactly? For those who are not aware of the news should be informed that the Swedish firm had registered its name in Indonesia since 2010. Wait, 2010? How can the Indonesian company able to register the same name in 2013? I am not sure how they did it, but if I have to guess what actually happened behind the scene is that the local company had lodged an invalidation proceedings against the Swedish firm to remove its registered name via the doctrine of non-use. 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. Apparently, the local company was able to bring forward to Court evidence of non-use for three consecutive years of the Swedish firm. In fact, it is also a known fact that the first and only IKEA mega store opened at Tangerang in late 2014. This fact alone is more than sufficient for the Supreme Court to dismiss the appeal, assuming no other evidence of commercial use is brought forward by the Swedish firm.

Almost every country with a proper Trade Mark system and regulations will have such a rule on non-use of Trade Mark, the only difference between countries are the duration of non-use. For example in Malaysia and Indonesia, 3 years but you would need to prove non-use for 5 years in the United Kingdom. Do bear in mind that the Registry would not remove your trade mark after three years of non-use on its own accord, it would have to be lodged via proceeding in Court by an interested party to remove your trade mark effectively. As such, there is not much concern in terms of non-use so long as you can show there is an actual use for your trade mark in a particular country.

The moral of the story is if you want to file a trade mark, make sure you actually use the trade mark to avoid invalidation by a third party who also happens to be interested in your trade mark. Do bear in mind that passing off and invalidation proceedings via Court is very hard and costly in all countries especially in non-commonwealth countries such as Indonesia. Civil law countries such as Indonesia and China practice a strict first come first serve basis, I am sorry to informed you that if your mark happens to be registered by another, then you would have no choice but to purchase it back from that person who claimed it first just as Apple uses 60 million dollars to buy back its iPad mark from a China company.

DON’T WAIT TO GET RIPPED OFF, TAKE ACTION NOW TO PROTECT YOUR NAME!

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