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Manage your Intellectual Property in South-East Asia

Case Study 1 - Prior registration of a trade mark in Southeast Asia

Background

A European electronics producer with an internationally recognized brand for personal computers (BHT) is interested in setting up business in Southeast Asia. Upon carrying out their initial research into one of the ASEAN markets, they soon discovered that a prior registration for their brand existed in that market, having been submitted by a local party 5 years before. The local registration covered stereo systems and electronic radios. The European company was advised by a local attorney that the trade mark registration by the local party would effectively block any application put forward by the European company.

Action taken

The European company applied for a trade mark registration and simultaneously began an investigation into the activities of the local party. It was discovered that the local party had not actually been using the registered mark. The European company therefore initiated a cancellation procedure of this registration in a local court owing to a lack of use of the mark.

Outcome

The process of cancelling the earlier mark was expensive as a market survey was required and the local party defended the cancellation vigorously. An appeal was subsequently submitted to a higher court despite the fact that the European company had already succeeded in the initial hearing.

IP Lessons

  • Consider using a local investigator to acquire the mark
  • Perform trade mark searches before you decide to apply for trade mark protection, otherwise you may later encounter a prior registration that conflicts with your trade mark.
  • Once you obtain trade mark protection, use it for the classes in which you received protection otherwise you risk cancellation due to lack of use.
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