A rapidly growing and increasingly vital part of the retail ecosystem is the online retail of goods. Online retailers across Southeast Asia should be mindful of the differing rules and restrictions governing the use of trade marks across their online platforms.
The concept of the "use" of a trade mark attaching to goods is a fundamental one for online retailers:
- For an online retailer and trade mark owner, just as for a traditional retailer, the use of its own trade marks has implications for the registration and maintenance of trade marks as well as any defence against a trade mark revocation action.
- On the flipside, the use of a trade mark which belongs to a third party may open up the online retailer to potential infringement claims by the other party.
- Further, the use of a trade mark in a country where the trade mark is not registered may lead to the user acquiring goodwill and being able to support claims that the trade mark qualifies as a well-known mark in that country.
Online retailers operating across multiple countries in Southeast Asia may find it difficult to navigate the differing rules and restrictions governing the use, or non-use, of trade marks. The region has at least 10 different countries, each having its own legal system and set of laws, and the prospect of legal harmonisation seems unlikely in the near future. As a result of this, an online retailer operating across borders in this region may well face multiple standards when determining whether there was indeed use of a trade mark on its website.
For example, in countries such as Brunei and Vietnam, trade marks available online would be deemed to be in use if the goods in question were offered for sale and directed to consumers located in those particular jurisdictions. Singapore's standard is stricter, requiring active steps that lead Internet users in Singapore to visit the website. Such active steps may include marketing, advertising or other promotional activities. In contrast, Malaysia and the Philippines have standards with a different focus: instead of the offer for sale, the focus is on the availability of goods to customers or potential customers in the respective jurisdictions.
The lack of harmonisation of trade mark laws in Southeast Asia, and in particular, of the laws surrounding use of trade marks online, means that online retailers need to consider each jurisdiction separately, and develop both general and jurisdiction-specific solutions in order to better protect their trade marks.