South-East Asia IPR SME Helpdesk

Étude de cas n°21 – Marque

Context

A European manufacturer of electronic products, whose brand of personal computers (BHT) is internationally recognized, wishes to establish itself in Southeast Asia. During an initial study on one of the ASEAN markets, he learned that his brand had already been registered on this market by a local party five years ago. This local registration concerned stereo systems and electronic radios. A local lawyer told the European company that any registration request from him would be effectively blocked because his trademark had already been registered in the country.

Action taken

The European company has submitted a trademark registration dossier and carried out research on the activities of the local party at the same time. Having learned that the local party had not in fact used the registered trademark, it therefore launched a procedure for canceling the registration with a local court on the grounds that the trademark had not been used .

Result

The cancellation procedure was costly, as a market study had to be carried out and the local party strongly opposed this procedure. It has in fact filed an appeal with a court of a higher court, although the European company won its trial after the first hearing.

Lessons to be learned

  • Consider using a research firm to acquire the brand.
  • Research your brand before filing for registration, or it may conflict with a company that has already registered it.
  • Once your trademark is protected, use it in the categories for which you are protected, because otherwise you risk cancellation of its registration for lack of use.
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