How to protect Intellectual Property across the ASEAN Bloc
The ASEAN Economic Community (AEC) officially launched in December 2015, ushering in the dawn of a single 630-million strong consumer market. The implementation of the AEC Single Window for Customs means any goods arriving from outside the AEC can enter the ASEAN market via one customs entry point. Such goods can then be freely distributed throughout the 10 member countries – Brunei, Indonesia, Malaysia, Philippines, Singapore, Thailand, Cambodia, the Lao People’s Democratic Republic, Myanmar and Vietnam
When it comes to IP protection, however, the AEC currently lacks a unified registration system for the protection of trademark rights. Interviewed by HKTDC Research, Kelvin Kee, Director of the International Engagement Department for the Intellectual Property Office of Singapore (IPOS), explained how Hong Kong and Chinese mainland companies can register their brands and trademarks in ASEAN.
“Trademark protection, as is the case with most intellectual property (IP) matters, is territorial in nature. This means that businesses need to file separately in each country where protection is required.” said Kee. “In addition, most ASEAN countries, including Singapore, adopt a first-to-file approach to trademarks. This means that the first to file a trademark application in any given country will secure and own that right in that country once the registration is granted.”
When asked how businesses can secure brand protection in each individual ASEAN country, Kee suggested an effective means is by recourse to the Madrid Protocol, the international trademark filing system. He said: “This allows a brand owner to protect his trade mark in up to 98 contracting parties simultaneously by simply filing one application in one language and by paying just one fee.” Without opting to use this system, businesses will need to separately register their brands in every ASEAN member nation.
Clarifying the application of the system, Kee said: “At the moment, Cambodia, Laos, Philippines, Singapore and Vietnam are parties to the Madrid Protocol, with Brunei acceding in January 2017.” Businesses will be able to seek simultaneous trademark protection under the Madrid Protocol by selecting these contracting parties.
If a company subsequently finds that its trademark has been registered by a third party, it may be able to apply to have any such registration invalidated. With specific regard to Singapore, Kee said: “The success of any invalidation depends on a number of factors, including whether the company can establish that it had rights in Singapore before the third party’s trademark registration, and demonstrate that the third party registered the trademark in bad faith.
“Invalidating a trademark and registering a trademark are separate actions. When a trademark is invalidated, the trademark is regarded as never having been registered in the first place. As such, it is advisable for the actual brand owner to apply to register the trademark at or around the same time that invalidation proceedings begin.”
At present, although there is no indication that an AEC-wide IP protection system is being considered – one that would help significantly reduce costs for SMEs – the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC), has played a driving role in a number of strategic regional IP initiatives, including the ASEAN IP Rights Action Plan. Established in 1996, the group comprises the heads of all the individual ASEAN Intellectual Property Offices.
“The ASEAN Patent Examination Cooperation (ASPEC) is seen as one of the AWGIPC’s key initiatives. Under terms of the programme, search and examination results can be shared among ASEAN member nations, reducing costs and accelerating processing times for those looking to secure a region-wide patent. This is seen as an important development for ASEAN, given that the number of patent applications in the region is on the rise. Over the past decade, the number of applications has increased by around 50%, rising from 25,000 applications in 2004 to more than 40,000 in 2014.” said Kee.
In an additional move, the ASEAN IP Portal (www.ASEANip.org) was launched in 2013 as a means of sharing IP-related information, hosting regional e-services (such as e-ASPEC, ASEAN TMview, ASEAN TMclass) and to create an online community for the region’s policy makers and industry practitioners to network and exchange best practice concepts. The portal also provides web links to all of the ASEAN IP Offices.
Highlighting one particular system, Kee said: “ASEAN TMview is an online search portal that holds details of more than 3.4 million pending or registered trademarks in IP offices throughout the ASEAN bloc. An undeniably powerful platform, it allows businesses and trademark agents to easily conduct free simultaneous pre-filing searches in multiple countries. Such pre-filing searches enable businesses to get an early indication of potential conflicts and allow them to strategise their filing decisions accordingly.”
“The ASEAN TMclass, meanwhile, serves as a classification tool for any business looking to identify the classes and terminologies used for goods and services in the classification databases of all participating ASEAN IP offices. Users can also obtain translations of a particular term in the working language of the selected IP office. The ASEAN TMclass was designed to boost the success rate of trademark applications and help to avoid the unnecessary costs accrued by applications filed under the wrong class.”
As a final word of advice to companies concerned about the issue, Kee said: “All businesses should remember that IP registration is not just a legal issue, it also makes sound commercial sense. A good business strategy requires looking beyond protection and, instead, involves an informed consideration of the potential monetisation of any company’s intangible assets, including its IP. All business owners with strong brands are thus encouraged to secure the rights to their brands as well as to clarify any other IP issues with regard to their target markets. It is of primary importance to properly integrate intellectual property issues as part of the overall business strategy from the very outset.”
For those companies looking to break into the ASEAN market, it is advisable that they fully bear in mind the diversity of the region, as well as the practical and logistical realities of each country. In most countries, for instance, registration of a trademark in English will not protect the transliteration of the trademark in the local language. This, then, needs to be factored into budgetary considerations as additional applications may have to be filed for the transliteration of the trademark in any local language.
Businesses should also allow sufficient time to complete the registration before entering the market. In a number of ASEAN countries – most notably Vietnam and Indonesia – a huge number of applications have been lodged, inevitably slowing down the overall registration process. Additionally, in several ASEAN countries there are a number of time-consuming filing formalities that have to be factored in. In all such instances, it is advised that companies should secure the services of a qualified IP partner, one who thoroughly understands the various IP registration requirements and procedures in the different ASEAN constituent countries.