Tony Conaghan and Georgia Campbell

Removal of trade marks for non-use: Not even IKEA is safe!

Tony Conaghan and Georgia Campbell

5 May 2016

Trade marks

Despite being one of the most recognisable brands in the world, Swedish retailer IKEA has lost its trade mark in Indonesia due to non-use.

Although the Indonesian Supreme Court’s ruling was handed down in May last year, the decision was only published online earlier this year.

The case

The non-use action was brought by Indonesian rattan furniture company PT Ratania Khatulistiwa in 2014, when IKEA was constructing its first store in Indonesia.

IKEA had registered its ‘IKEA’ trade mark in Indonesia in 2010; whereas Ratania did not register its ‘Ikea’ trademark (an acronym of Intan Khatulistiwa Esa Abadi) until December 2013. However, because IKEA did not set up their first store until 2014 (four years after registering the IKEA trade mark), Ratania alleged that IKEA had not been using the trade mark.

After the District Court ruled in Ratani’s favour and ordered that IKEA cease using the IKEA trade mark, IKEA appealed to the Supreme Court.

The Supreme Court affirmed the District Court’s decision, finding that because IKEA had not actively used their trade mark for commercial purposes for three consecutive years, the IKEA trade mark could be removed from the trade marks register for non-use.

The relevance of non-use to Australia

This case highlights the importance of carefully choosing the description of goods and services when applying for a trade mark, because if you apply for a description that is too wide, and the trade mark is granted for those goods and services, you may find yourself subject to a ‘non-use’ action.

The laws surrounding non-use in Australia are similar to those in Indonesia. Under s 92 of the Trade Marks Act 1995 (Cth), a person may apply to the registrar to have a trade mark removed from the register for non-use on either or both of the following grounds:

1. if, when the application for registration of the trade mark was filed:

(a)   the applicant had no intention in good faith to use or authorise the use of the trade mark in Australia or to assign the trade mark to a body corporate for use by the body corporate in Australia; and

(b)   the trade mark had not been used up to 1 month before the non-use application was made in relation to the goods and/or services to which the application relates; or

2. if the trade mark was registered for a continuous period of 3 years and 1 month before the date on which the non-use application was filed and:

(a)   at no time during that period did the owner use the trade mark in Australia in relation to the goods and/or services to which the application relates; or

(b)   at no time during that period did the owner use the trade mark with good faith in Australia in relation to the goods and/or services to which the application relates.

So, no matter how well-known your business or brand may be, if you do not use a trade mark for the specific goods or services specified in your granted trade mark, a lesser known business and/or competitor could bring a non-use action and end up with the rights to use your trade mark instead.

Therefore, it is important to:

  1.  register your trade marks promptly to ensure that no one else registers them first;
  2.  carefully choose the goods and/or services you would like your trade mark to protect; and
  3.  ensure that your trade mark registration is kept up to date by paying renewal fees when necessary and making changes to the trade mark if and when required.

For more information or for advice about trade marks or trade mark registration, please contact Tony Conaghan.