Navigating Asia’s labyrinth of trademark laws is a challenge for the most savvy operation. Laws and regulations in some jurisdictions change without notice, so we asked some of the region’s top IP law firms to bring you up to speed on what you need to do – and where you need to watch out
A common catchry regarding IP and trademark law in asia is “I wished I had’ve known then what I know now”. Marks can be used and abused, and brand owners big and small can be forgiven for thinking that some laws seem designed to help the infringer rather than the hapless mark owners and their legal teams.
So with this is mind, Asia Business Law Journal approached some of the best intellectual property law firms in the major jursidictions within Asia to help us produce this comprehensive regional comparison on trademark laws.
Each firm was asked to provide a list of practical details with regard to the law of the land on trademarks as an at-a-glance, easy-to-read guide for referral and comparison.
In addition, the firms were asked to complete a short precis of the main concerns that they could identify on IP trademark law in their jurisdiction. Issues include areas like trademark protection, squatters, searches and registration, infringements and litigation, and so on. The responses are an eye opener, with each firm offering distinctive advice on mark protection in their part of the region. From advanced jurisdictions like Hong Kong and Singapore to developing ones like Vietnam and Cambodia, we hope you enjoy this comparison.
Intellectual property (IP) is a vital asset for many firms doing business in Cambodia. Whether it be to distinguish goods from those of a competitor, protect the fruits of research investment, or maintain the confidentiality of financial plans, IP considerations surface in virtually all industries.
While the present patent registration system in Cambodia arguably is trying to meet international standards, the trademark system for application, registration and enforcement is much more developed, and has been used extensively.
Prior to application, a search is usually undertaken to ascertain whether or not a trademark can be registered before the application is filed (i.e., to determine whether there are any identical or confusingly similar marks, and whether the mark is capable of registration). The application for a trademark search must be submitted to the Department of Intellectual Property Rights (DIPR) within the Ministry of Commerce. Normally the DIPR will respond in writing stating the result of the search within 50 to 60 working days following receipt of the application.
In order to file an application for a trademark search, the applicant must provide a specimen of the trademark, classification and information regarding previous registrations in other jurisdictions, if any.
The application process begins with filing an application form provided by the DIPR, along with other relevant documents. Cambodia uses a first-to-file system, so the use of a mark is not required when filing an application. A mark has to fulfil the following conditions in order to claim protection. It must be distinctive, it cannot be generic, deceptively similar to a previous or existing trademark, it cannot be a geographical name or surname, it cannot be deceptive or confusing or be scandalous or offensive, and it cannot have direct reference to the character or nature of the goods/services.
There is also a condition that registrations for trademarks must be done only through a local proxy. Applicants not residing or carrying on business in Cambodia must be represented by an agent residing and practising in Cambodia to act on their behalf.
Cambodia still has a long way to go in terms of its IP enforcement, and infringement is rife in all areas of consumer products. While all the relevant laws in Cambodia provide that each IP agency is responsible and able to take action on infringement of IP rights, it is the lack of knowledge and know-how of the officials that has prohibited an effective enforcement effort.
In most cases, the IP officials cannot distinguish the infringed products from the authentic ones. And in most cases, the relevant IP officials have to be accompanied or guided by the rights owners. Meantime, even though Cambodian IP laws stipulate that all disputes on IP must be settled in the Cambodian courts, there is no special court for IP.
Even though the present level of IP-related cases is low, it is, however, a matter that needs to be dealt with in a hope that when the IP system in Cambodia is functional, the judicial system will be ready to handle all related cases.
Produced for Asia Business Law Journal by SokSiphana & Associates
(a member of ZICOlaw)
Although the Chinese government has been taking strong measures to crack down on malicious trademark registrations, registering a trademark as early as possible is the most economical and time-saving way to protect your trademark in China, due to the fact that basically only registered trademarks can be well protected in China, and the principle of first-to-file has been adopted in Chinese Trademark Law.
Compared with the Madrid application designating protection in China, a national application directly filed with the Chinese Trademark Office (CTMO) will take less time for examination and registration.
It is prohibited to use registration symbols such as “®” for unregistered trademarks. Entities shall not use the words “well-known trademark” on their goods, packaging or containers, or in their advertising, exhibitions or other commercial activities. Trademark registrants should file change applications with the CTMO in a timely fashion after their name or address has changed.
For marks that contain artwork and/or creative devices, filing a copyright registration is advised. Certificate of Copyright Registration is useful to claim prior copyright in potential trademark conflict cases.
The Administrations for Industry and Commerce (AIC) and Customs may impose penalties on trademark infringers. Compensation for damages can be claimed and shall be calculated based on the following elements, in order:
1) The mark owner’s actual loss;
2) The benefits gained by the infringer from the infringement;
3) Multiples of the royalty for trademark licence;
4) In case the infringer’s bad faith is found, the amount can be one to three times the value as calculated above;
5) Up to RMB3 million in statutory compensation;
6) The trademark owner’s reasonable expenses in stopping the infringement must also be included.
In the following cases, despite the nature of the infringement being ascertained, damage can be avoided if:
1) The trademark owner has not used its trademark during the past three years, and it has suffered no loss or damages; or
2) The infringer only sold the infringing goods without knowledge of infringement, and it can provide evidence to prove that the goods have been obtained legally, and it is able to identify the supplier.
Certain trademark infringement behaviour can constitute a crime. Available defences against a claim of trademark infringement may include but are not limited to:
1) Arguing dissimilarity or absence of confusion relating to the trademarks or goods/services;
2) Fair use without bad faith;
3) Prior and continual use of the trademark within the original scope of use, if the trademark has established certain influence through use, before the filing date of the trademark and before the use of the trademark by the registrant; and
4) Trying to invalidate or cancel the trademark.
Produced for Asia Business Law Journal by Longan Law Firm
Brand names are protected by the Trade Marks Ordinance if they are registered as trademarks in Hong Kong. Owners of registered trademarks can prevent unauthorized parties from selling or dealing with goods using their trade marks.
Brand name owners may obtain injunctions from court to restrain the unauthorized use of the registered trademarks, and claim damages. They may also request the Hong Kong Customs and Excise Department to take raid action against the infringing activities in relation to the registered trademarks.
To be able to enforce the above rights in Hong Kong, the brand name owners have to register their brand names and/or signs used to distinguish their goods or services as trademarks in Hong Kong.
More than 95% of Hong Kong consumers (including tourists from Mainland China) use and speak Chinese. It is very likely that a trademark will be referred to in Chinese by consumers. Registration in Chinese will secure the ownership of the official brand name in Chinese for the owner and prevent it to be registered by another party. Simplified Chinese characters and standard Chinese characters can be registered in a series of two marks in one application.
A trademark owner has the exclusive right to use the registered trademark in the course of trade or business, and has the right to take legal action under the Trade Marks Ordinance against any infringing or unauthorized use of that trademark.
The unauthorized use of any mark similar or identical to a registered trademark, and which causes confusion to consumers (in the case of similar marks or similar goods/services only), constitutes trademark infringement. The above use includes, among others:
(a) Applying the mark to goods or their packaging;
(b) Offering goods for sale under the mark;
(c) Putting goods on the market under the mark;
(d) Stocking goods under the mark for sale;
(e) Supplying services under the mark;
(f) Importing or exporting goods under the mark; and using the mark on business papers or in advertising.
Squatters usually identify trademarks of upcoming brands in Europe and the US, and register the marks for selling to brand name owners at high price. An early registration of trademark by the brand owner is the most effective way to protect a mark from squatting.
In the case of bad faith registration of a company name, the Hong Kong trademark registration will be the prima facie evidence that the brand owner is the trademark owner in Hong Kong. The brand name owner may rely on its registered trademark to take court action against such misuse of the brand name in company name and obtain an injunction.
Dispute in relation to domain name registration in bad faith can be effectively dealt with by arbitration. What the arbitrator looks for in the first place is whether the disputed keyword in the domain name has been registered as a trademark, which shows that the claimant has proprietary interests in the domain name. A trademark registered owner can effectively rely on its trademark registration to demand the domain name squatter to transfer or deregister the domain name which has been registered in bad faith.
If the trademark user has used the marks for a period of time without registering the mark, it may rely on the common law rights established from its use to deter others from using the mark in the related business.
An owner of a Hong Kong registered trademark can prevent others from registering an identical or similar trademark in Hong Kong, including bad-faith registration, as the Hong Kong Trade Marks Registry will conduct a search for identical or similar registered trademarks as a standard procedure before approving the registration, and reject the application if identical or similar marks in identical and/or similar classes are located. Unregistered trademarks are not within the scope of its search.
Produced for Asia Business Law Journal by ONC Lawyers
The Indian Trademarks Law is undergoing a radical change with the implementation of the national IPR policy formulated by the Indian Government, the provisions of which have also taken shape under the Trade Marks Amendment Rules. There are several positive developments that have come into effect from 6 March 2017.
The official fee for filing a trademark application in India has increased by 100%, and the Indian Trademarks Office in their drive to go completely electronic has given a concession for filing trademark applications online. In a physical paper filing of a trademark application, the applicant will have a slightly increased fee. With the drive to go completely electronic, the trademarks office is also starting electronic services for provisional refusals, office actions, oppositions, counter statements, registrations and renewals. Electronic filings and services for all documents will considerably reduce the backlog and make the trademark prosecution system in India more time and cost effective.
With the new rules, the Indian Trademarks Office has become stricter in allowing user claims in a trademark application. The Indian system allows an applicant to file a trademark application either on a “proposed to be used” basis, or with a prior user claim in India. Previously, an application filed on a user claim would be allowed for registration without any proof, and this may have resulted in frivolous user claims being allowed. However, now the trademarks office mandatorily requires an affidavit of use to be filed along with the trademark application claiming prior use. Documents substantiating the user information also need to be filed along with the affidavit of use.
The Trademarks Amendment Rules have also introduced a system of filing petitions for declaration of a mark as well known. The Trade Marks Act, 1999 contains provisions for declaration of a mark as well known. In India, a trademark could be declared as a “well known mark” either by a court in an infringement, or in passing off proceedings, or by the Registrar of Trade Marks in opposition/ rectification proceedings.
While considering whether a mark is well known, the court or the registrar is required to consider the factors listed under section 11 (6) of the act. The amendment rules now allow an interested party to file a petition before the Registrar of Trademarks to declare its mark as “well known”. The registrar and the constituted committee for declaration of well known trademarks, upon consideration of the factors listed under section 11 (6) of the Trademarks Act, will adjudicate whether a mark can be declared as well known in India.
Once a decision is made by the adjudicating committee, the mark will also be published in a journal for any objections within a period of 30 days. If no objections are received, the mark will be entered in the register of well-known trademarks maintained by the trademarks office. There are currently 81 marks declared as well known and entered in the register.
The Indian legal system for protection of trademarks is becoming stronger and progressive. The time taken from filing to registration of trademarks has already reduced significantly, which is encouraging applicants to seek statutory protection.
Produced for Asia Business Law Journal by Anand and Anand
On 25 November 2016, Indonesia’s new Trademark Law (No. 20 of 2016) took effect, ushering in a host of changes to the administration, registration, renewal and protection of trademarks in Indonesia. While the previous Trademark Law (No. 15 of 2001) continues to apply to pending applications filed before 25 November 2016, the new law applies to all applications filed on or after that date, as well as all registered marks. Among the numerous changes brought by the new law, three stand out so far.
First, under the new Trademark Law, the opposition period has been placed before substantive examination so that applications are to be published for two months within 14 days of filing. Marks will then be examined substantively, along with any oppositions that were filed. This is quite different from the system under the old Trademark Law, where marks were published for three months but only if they had already passed the substantive examination period. As a result, the number of trademark applications in Indonesia being published for opposition has increased dramatically, which also increases the importance of trademark watching/monitoring services.
Second, the new Trademark Law establishes a grace period for the late renewal of trademark renewals. Previously, under the old Law, there was no such grace period, so that if a trademark registration was not renewed during the 12-month period that immediately preceded the mark’s expiry date, the registration would lapse irrevocably. Now, marks can be renewed either six months before or six months after the expiry date, though the official fees for renewal during the grace period are higher.
Third, the new Trademark Law does not contain provisions under the old law that required the use of a mark to exactly match how the mark was registered. Under the relevant provisions of the old law, even small differences in font size or type, colour, etc., could be considered significant enough to bring a mark’s use outside the scope of protection of the mark as registered, creating the potential for non-use cancellation. Now that those provisions are not included in the new Trademark Law, such small differences should not create non-use vulnerability for registered marks.
There are other changes contained in Indonesia’s new Trademark Law, including: registrability of holograms, sound marks and three-dimensional marks; reduction of the overall prosecution time from filing to grant to nine months (from 14 months under the previous law); doubling of criminal penalties for infringement; and confirmation that Indonesia will join the Madrid Protocol, though this is subject to implementing regulations to be issued within the next two years.
Produced for Asia Business Law Journal by Januar Jahja & Partners
On the prosecution front, the registrability of non-traditional marks is expected to be the focal point of developments in Malaysian trademark law in the coming years. Last year, in Kraft Foods Schweiz Holding GmbH v Pendaftar Cap Dagangan , the Malaysian High Court made the first judicial pronouncement that shape marks are registrable subject to the usual requirements of registration, e.g., distinctiveness. At the same time, the Intellectual Property Corporation of Malaysia has been preparing substantive amendments to the Trade Marks Act 1976, which are anticipated to introduce the registrability of other non-traditional marks, e.g., sound and smell marks.
It would also appear that the Malaysian High Court is more willing to consider factors such as the consistency and predictability of the international presence and trademark protection of certain brands. In GS Yuasa Corp v GBI Marketing Malaysia Sdn Bhd , the High Court held that it should not take “a blinkered view” regarding the protection and enforcement of IP rights. While foreign judgments are not binding on the Malaysian courts, it was held that Malaysian courts should consider such judgments when deciding on similar issues. This decision undoubtedly boosts the importance of a robust worldwide trademark portfolio for businesses with a stake in Malaysia.
For trademark enforcement and dispute resolution, the Plaintiff in X1R Global Holding & Anor v Y-Teq Auto Parts (M)  joins a short list of proprietors of well-known marks in Malaysia, further expanding on the non-exhaustive criteria for a well-known mark in regulation 13B of the Trade Mark Regulations 1997 and the past case of Dabur India v Nagasegi & Ors . Amongst others, factors which contributed towards the finding of X1R’s mark being well-known were: (i) its use of the mark in more than 30 countries; (ii) its extensive trademark registration portfolio; (iii) its “Product Research & Development Centre” in the US; (iv) the fact that its goods bearing the mark had been tested and certified by countless institutions worldwide; (v) its efforts in promoting, advertising and publicizing its goods bearing the mark; (vi) its past enforcement efforts; and (vii) the clear value associated with the mark.
In light of the above-mentioned, it would appear that Malaysian trademark law is making gradual steps towards rewarding proprietors with extensive registration portfolios with the commensurate levels of protection. This would undoubtedly be welcome news to rights holders in other jurisdictions and serve as incentive for Malaysian businesses to expand overseas.
Produced for Asia Business Law Journal by
Lee Hishammuddin Allen & Gledhill
One of the primary challenges today is the march of technology and transformative innovation, and its impact on the architecture of the global IP system – the evolving architecture of the global IP system was one of the themes at Singapore’s 2015 Global Forum on Intellectual Property.
The impact of technology was also a central theme in our Chief Justice’s speech at the opening of our Legal Year 2017, where His Honour noted that one of the challenges for lawyers is that some of us are notoriously resistant to change. The Chief Justice also recognized that this is “perhaps an inevitable characteristic of a profession whose principal function is to uphold an enduring and stable system of rules around which society can structure its interactions”.
However, increasingly, the legal profession is itself challenged to ensure that the framework within which we provide our suite of trademark services continues to be relevant and applicable to the way businesses operate commercially, and that our trademark laws can properly apply to meet the new demands of innovation and the changing complexion of global commerce.
In this light, some important trends in trademark law include:
(a) Mapping out new brand protection strategies. Because the digital age means that brand owners now operate in a much wider global environment driven by online marketing and social media. Given the borderless nature of the internet, and the globalization trends in business, this makes it even more challenging to effectively and efficiently manage and protect trademarks.
(b) Monetisation as the end-game. Because with the increasing globalization of businesses, brand owners are operating in a more competitive global economic climate with increasing opportunities for strategic partnerships, business collaborations and global licensing of brand assets.
On a broader note, another challenge we all face today is the tide of uncertainty, heightened by terrorism and political changes around the globe. As we brace ourselves for a period of “transition” in Europe and the US, we are already beginning to see some impact on the political and economic state of play in Asia, particularly with key players like China, Japan and the Philippines.
The Trump administration’s decision to withdraw from the Trans-Pacific Partnership is but one example of how political change can, and will continue to, impact our IP landscape. From Singapore’s perspective, it is important that we continue striving to play a pivotal role providing stability as an international IP hub, with a transparent, efficient and effective IP framework.
Produced for Asia Business Law Journal by Bird & Bird ATMD
Member countries of the ASEAN Economic Community (AEC) have jointly agreed to enter the Madrid protocol for a centralized trademark registration system. In order to join the Madrid Protocol, Thailand has amended its Trademark Act, effective from July 2016, aiming to be in line with the Madrid Protocol trademark registration system standards. Currently, the ministerial regulations on the accession are being reviewed at the Council of State.
It is worthwhile to point out the major amendments from the 2016 Thai Trademark Act, as follows:
1. Filing a multiple-class application. Both single-class application and multiple-class applications are now available in Thailand.
2. Reduced timeframe for responding to office action and opposition period. The Thai trademark registration process normally takes around 12-18 months from the date of filing. The amendment has reduced the deadline for responding to office actions and the opposition period from 90 days to 60 days in an effort to speed up the registration process.
3. Change of government fee calculation. The government fees for filing, registration and renewal have changed. In particular, the designated goods in the application are no longer solely calculated based on the number of goods/services covered by the mark. Under the new system, government fees are also calculated per class for applications filed with more than five items of goods or services. Allowance of partial assignment and abolishment of associated marks. The new Trademark Act has removed the association of marks requirement in case the applicant has filed similar marks under related classes. The amended act aims to provide a more flexible approach in case assignment of marks needs to be done to business partners. The marks therefore can now be assigned separately and individually.
4. Refilling offence. A new offence has been introduced in the amended Trademark Act for refilling genuine containers and packaging bearing the mark of a legitimate trademark owner. In order to establish fault on the ground of refilling, one would have to reuse or refill the packaging or the container on which another trademark is affixed to mislead the public as to the owner of the product. If found guilty, the infringer will be subject to imprisonment and/or a fine.
Produced for Asia Business Law Journal by Tilleke & Gibbins
The Intellectual Property Office of the Philippines has conducted at least two rounds of consultation on proposed amendments to the Trademark Regulations. The amended Trademark Regulations are expected to be issued within the year. Among the proposed amendments, the most significant are:
1. Removal of the requirement to submit a copy of the priority application. Only the submission of the home registration is required prior to the registration of the mark.
2. To maintain the registration, submission of a Declaration of Actual Use, together with the proof of use, will be required within one year from the date of renewal. This is in addition to the current requirement to submit Declarations of Actual Use within three years from the filing date, and within one year from the fifth anniversary of the registration or renewal date.
3. Pending applications may be divided at any time prior to publication of the mark. The request to divide may be filed only before examination of the initial application, or within two months from the mailing date of the first office action.
4. Amendment by addition of goods and/or services related to those originally filed and falling under the same class may be allowed.
Produced for Asia Business Law Journal by ACCRA Law Offices
Outside IP experts’ assessment opinions have played a critical role in settling trademark infringement in Vietnam. Enforcement authorities have recourse to these opinions while handling enforcement cases, to mitigate liabilities. There are, however, drawbacks in obtaining expert opinions in trademark enforcement activities.
The IP Law strongly encourages those who satisfy certain criteria to establish an agency providing expert IP assessment services. Vietnam has, to date, only a handful of licensed trademark assessors and one licensed agency providing trademark infringement assessment services, that is, the Vietnam Intellectual Property Research Institute (VIPRI) under the Ministry of Science and Technology. The expert assessment opinions are considered a point of reference, and do not have legal binding effect. This said, expert opinions by the VIPRI now significantly influence many local enforcement authorities’ decisions on whether or not to initiate an action against alleged infringers. Once the VIPRI issues a conclusion confirming an alleged sign is not infringing upon a mark, trademark holders may have little chance of success in pursuing a claim of trademark infringement through administrative or civil routes. Assessment conclusions can be challenged and even rejected, yet enforcement authorities normally elect not to do so. Due to the absence of comprehensive assessment guidelines, the VIPRI’s opinions can vary from case to case.
While known as a quasi-governmental agency specializing in providing industrial property expert opinions, (including, inter alia, trademark, patent, trade name and industrial design), the VIPRI does not provide its assessment services in respect of trade name matters. There have been many cases where third parties use commercial indicators that have caused confusion with other trade names, and where they have incorporated others’ trademarks into their trade names. Unfortunately, right holders find it difficult to launch legal action against these acts because they have failed to obtain assessment opinions from the VIPRI as a condition to bring the case before enforcement authorities.
Until now, administrative actions remain the most straightforward route to pursuing a trademark infringement claim. To tap this practice, trademark holders must proactively seek the VIPRI’s favourable assessment opinions to be used as supporting evidence. If the marks in dispute have not been registered, it is almost impossible to approach the VIPRI for opinions because: (1) the Trademark Office has yet to launch an official list of well-known trademarks; and (2) the VIPRI hesitates and sometimes refuses to provide its assessments of whether or not an unregistered mark is well known in Vietnam. As a result, an unregistered mark cannot be cited against an alleged infringing sign in an opinion by the VIPRI, which obstructs enforcing the rights over well-known trademarks conferred by the IP Law.
Where the IP Law and its implementing regulations remain unclear, there is a great need for enforcement authorities to augment their independence without having to entirely lean on assessment opinions from outside expert.
Produced for Asia Business Law Journal by Baker McKenzie