By Dipl.-Ing. Rohaldy Muluk
An Intellectual Property (IP) right is an exclusive right for you, as IP owner, to exclude others from getting economic benefits of your Intellectual Properties (IPs). IPs are patent, trademark, industrial design, copyright etc. IP laws, such as patent law or trademark law, are territorial laws. It means the protection of your IP is only valid in a certain territory where you registered or filed your IP. For example, if you register your trademark in Germany only, you only have a protection for your trademark in Germany as well.
As a common practice, if you plan to market or to produce your products in a certain country, you would have to register your trademarks in that country. But, actually there are many aspects to consider “where” and “why” you should register your trademark in a certain country. The decision where to register a trademark and other IPs should be part of company’s global strategic business plan. However, the strategic approaches for IP matters more complex than marketing and production matters only.
In our “connected” world, any decision of IP matters will give global impacts to your business. If you wish to do business internationally, you should think global from the beginning. Nowadays, a small company in the US could sell its products world-wide. If you build-up a brand that represents your product quality or technology or services, you have to protect your brand at any markets you are producing or marketing your product. But, it’s not yet enough. You also should consider to protect your brand in your future potential market, or where infringement possible is, or where someone else could take advantage of your brand or technology, etc.
We will take real examples. You have produced TV sets in China and registered a trademark “BestVision” in the country. After a while, your business in China is flourishing. Then you want to expand your business to South East Asia. You chose to enter Indonesian market, got a distributor, promoted your product in media and began to sell TV set “BestVision”. After a while your distributor got a warning letter from a lawyer to stop the sale of your product with a reason that your brand infringed a trademark called “BestVision” that has registered by another person on Indonesian Trademark Office before. Other example, your distributor registered your brand for himself, not for you, and without your knowledge, on their Trademark Office. After you broke up your business relation with the distributor, your ex distributor imported the similar TV sets from China without any brand, and then stamped the label “BestVision”. Both examples do not infringe any trademark law.
Typical mistakes relating to Trademarks
We summarize some typical mistakes of trademark owners that could harm your business:
- Your brands took part in an exhibition abroad. Domestic or foreign visitors of your exhibition could register your trademarks in their home country if they see your brands have business prospects and economic values.
- You export your products to a foreign country without registering your trademark in that country. Your buyer or distributor in that country could register your trademark under their own name.
- You outsource the production of your products in a country, and for that purpose you register your trademarks in that country only. The manufacturer or others could produce and export or sell your products without labeling the products with your brands (counterfeit products).
- At the beginning of your business you concentrate on a certain market and register the trademark in that market only. Somebody else could register your trademark and use your trademark as his own brand in other country, so that you later can’t enter the country’s market.
Registering of a trademark is very cheap in compare to losses in turn over, losses in market share or illegal abuse of a trademark.
(Dipl.-Ing. Rohaldy Muluk is IP Attorney at ChapterOne-IP, Jakarta, Indonesia)