To prevent trademark infringement, schools must consider registering mark’s foreign language name

09 August 2023

To prevent trademark infringement, schools must consider registering mark’s foreign language name

Lim Siau Wen, Director of Intellectual Property, Drew & Napier, Singapore

Schools, including preschools, should consider whether they need to register the foreign language equivalents of their existing marks both overseas and locally, according to Lim Siau Wen, director of intellectual property at Drew & Napier in Singapore.

Lim spoke in reference to the recent trademark infringement case in China won by a Singaporean international preschool chain.

MindChamps International PreSchool, which has schools and enrichment centres in Australia, Indonesia, Malaysia, Philippines and Myanmar aside from Singapore, had accused a school in China’s Shaanxi province of infringing its trademark by using “MindChamps” and its Chinese name “Maijiesi.” Aside from this, the accused also copied the Singaporean preschool’s logo, school uniform and interior decoration design.

According to the ruling of the Chinese court on June 28, 2023, the use of “MindChamps” and “Maijiesi” by the Chinese school may cause confusion. Thus, the said school was found to have engaged in unfair competition and trademark infringement of MindChamps’s brand and corporate identity.

To better protect their brand, corporate identity and IP including students’ uniforms and interior design from trademark infringement, Lim said that the school should first ensure that it owns all IP rights in its intellectual assets. This is especially so if the IP assets were authored or designed by third parties.

“In addition to registering its existing IP, the school should consider if it needs to register the foreign language equivalents of its existing marks both overseas and locally,” she said.

Online surveillance, issuance of cease-and-desist letters, takedown notices, initiating domain name proceedings and other measures that make up an active enforcement strategy may also be implemented.

“In maintaining its IP portfolio, the school should bear in mind any use requirements that may be applicable. This is especially so in countries where there are no imminent plans to expand into. If there are any administrative bodies overseeing the registration or operation of schools, one approach may be to reach out and understand if there is any other potential recourse going beyond the realm of IP laws,” said Lim.

She added that schools, including preschools, planning to expand overseas should seek advice as soon as possible on how they may park their interests early in the countries where they plan to set up shop.

- Espie Angelica A. de Leon

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