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What do you need to know?
- There is still no particular statute or law on trade marks or specific provisions regarding registration of trade marks in Myanmar today.
- A practice has developed by which the person purporting to be the trade mark owner may make a Declaration of Ownership with respect to that trade mark and regis that Declaration with the Office of Registration of Deeds in Yangon or Mandalay under the Registration Act 1908. Once the Declaration is registered, it is customary and advisable to publish a Cautionary Notice in local newspapers warning people not to infringe that trade mark.
- In Thailand, three-dimensional signs (shapes) can be registered as trade marks, but few applications have actually been accepted for registration. Further, protection may be obtained for sound marks.
- Under the Trade Mark Amendment that was enforced in Thailand on 28 July 2016, it is now possible to file multi-class applications.
- Because Thailand is party to the Paris Convention for the Protection of Industrial Property, Thai trade marks enjoy a 'right of priority' if the same filing has already bee mde in any other country also belonging to te Convention within a six month period prior to filing of an application in Thailand.
- The application form and other relevant required documents must be submitted in Thai language or accompanied by a Thai translation.
- Trade mark protection may be granted for any sign or combination of signs capable of distingushing he goods or services; the sign or combination of signs must have distinctive character.
- Trade mark applications must be made in English and Lao
- Laos became a member of the Madrid Protocol in December
- 2015, and the Protocol entered into force in March 2016.
- Trade marks are eligible for protection under Vietnamese law provided that these are visible signs in the form of letters, words, drawings or images including holograms, or a combination of these, represented in one or more colours.
- Three-dimensional signs (shapes) can be registered as trade marks, but trade marks based on sound and scent are not recognised.
- Vietnam is a member of the Madrid Protocol and party to the Paris Convention for the Protection of Industrial Property.
- Vietnam operates under a ‘first-to-file’ system.
- All documents of the application must be made in Vietnamese, except for the power of attorney and the evidence documents for right to register and priority right.
- A trade mark may be a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these. Even though not stated explicitly, jurisprudence confirms that shape and colours per se are considered to be marks as well. Marks regis in black and white or grayscale are construed broadly to protect the mark both as registered and in other colour combinations.
- Neither sounds nor scents can be registered as a trade mark (lack of visibility). Furthermore, certain trade marks are prohibted from being registered for a number of reasons.
- Non-conventional trade marks such as three-dimensional signs (shapes), holograms and sounds can also be registered as trade marks; however, trade marks based on taste and scent are not recognised.
- It takes between 6 to 9 months to register a trde mark in Singapore, making it the fastest registration process among the countries in South-East Asian.
- I the absence of a registration under the trade Marks Act, a mark which is used by a trader in the course of trade may still be protected under the common law 'tort of passing off'. However, protection based on this may be difficult to obtain as this would require the owner to establish goodwill and reputation.
- Cambodia's Trade Mark Law was adopted in 2002, followed by a sub-decree on its implementation in 2006.
- Despite legislative enforcement difficultles, the Trade Mark Law does provide effective procedures for the registration of trde marks. Straightforward trade mark applications typically take 9-10 months to attain registration.
- Trade mark protection may be granted for words and symbols that are visually capanble of distinguishing the goods or services of an enterprise. The trade mark law also allows for the registration of collective marks, trade names, and geographical indications and addtionally, three-dimensional trade marks may also be registered.
- Cambodia applies the first-to-file principle to trade marks.
- Cambodia joined the Madrid Protocol for te international Registration of Marks on 5 June 2015, therefore international applications are possible.
- Applications and supporting documents may be in Khmer or English (documents in other languages are accepted if a Khmer or English translation is provided).
- Trade marks qualify for registration as provided in the Trade Marks Order 1999, which is adopted from the English Trade Mark Act 1994.
- If a trde mark is represented as characters other than the English alphabet, a translation and transliteration must be provided.
- Any trade mark considered well-known under the Paris Convention and belonging to a resident of a Paris Convention country, a person domiciled or a person having a real and effective industrial or commercial establishment in a convention country, may be protected whether or not that person carries out any business or has any goodwill in Brunei.
- Applications must be submitted in English language.
- A new law on trade mark and geographical indications became effective on 26 November 2016.
- Three-dimensional signs (shapes), sound marks, and holograms, are registrable in Indonesia, while marks based on scent are not recognized.
- The Indonesian trade mark system is generally understood to adopt the 'first-to-file' system.
- It takes approximately thirty-six (36) to forty-two (42) months to register a trade mark in Indonesia after the application is submitted.
- It is especially important to register your trade mark in Indonesia as soon as possible because trade mark piracy due to 'bad-faith' registration is still a serious problem. Bad-faith registrations exist where a third party (not the lef=gitimate owner of the mark) registers the mark first in Indonesia, thereby preventing the legitimate owner from registering it.
- The registration must be filed in the Indonesian language (Bahasa Indonesia).
- Colour, or combination of colours alone, cannot be registered, unless defined by a given form.
Three-dimensional marks and collective marks can be registered. Certification marks, associated marks or series of marks are not applicable in the Philippines.
- The Philippines is party to the Madrid system since 25 July 2012.
- Foreigners and non-residents can apply but thay must be represented by a duly authorized local agent
Click on each country for more details
In order to be protected, trade marks should be filed and registered in each South-East Asia country that you intend to do business in. However, it is worth noting that some South-East Asian countries have committed to implementing the Madrid Protocol shortly.
Under the Madrid System, it is possible to file a single application in order to seek trade mark protection in multiple member countries since beginning or by later designation. As of May 2017, the following South-East Asian countries have implemented the Madrid Protocol: Brunei Darussalam, Cambodia, Laos, Singapore, the Philippines and Vietnam. Thailand recently amended the Trade Mark Act entering into force on July 28, 2016. The Thai Department of Intellectual Property is in the process of drafting Ministerial Regulations that will allow Thailand to become a member of the Madrid Protocol.
Domestic Registrations in each of the South-East Asian countries are available for foreign companies willing to protect their mark there.
A pre-filing trade mark search is always recommended to check availability for registration. It would avoid a situation where your product launch is blocked, because of a local conflicting trade mark registration that was not previously known.
Some South-East Asia trade mark registries provide online searches or you could use the online search tool called ‘ASEAN TMview’. Engage a local agent to undertake pre-filing searches as such online facilities may not be complete and the local agent should have the experience to advise you which of the prior marks would be problematic to your proposed application.
The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of trade marks worldwide.
Some countries require separate trade mark applications to be filed in separate classes of goods and services, while other countries accept “multi-class” applications.
If there is no existing character name for your brand in a local script, it is likely that one might be adopted by local consumers which is not necessarily the right connotations or meaning that you would wish to convey.
Choosing a local script equivalent trade mark is important because not only the meaning, but also the sound, tone and look of local wording chosen can affect the brand’s reputation.
Your local equivalent trade mark should be carefully developed with the help and guidance of IP practitioners and both marketing and PR experts, as well as native speakers and/or translators.
As a general rule of thumb, the trade name should be protected first. You should protect the part of your branding that can be spread by word of mouth rather than a graphical symbol or logo that cannot be verbally articulated.
It is possible to register both at the same time in one single registration, which is called a ‘composite mark’ or register them in separate registration.
Please consider that:
• Separate registrations generally reduce the risk of objection.
• There can be an infringement where only the trade name portion is taken.
Another option worth considering is to protect your logo under copyright law to add layered protection to the logo.
Formality Examination - completeness of submitted application and details provided
Most South-East Asia Trade Mark
Offices require the appointment of a local attorney to submit the application if the foreign company has no legal entity registered in the country
An examination of the application is usually required to determine whether the mark meets the requirements for registration. A mark might be rejected for a number of reasons including lack of distinctiveness or if the mark is descriptive or deceptive in nature.
This procedure may take between 9 and 18 months.
If an objection is raised, the applicant will be given a certain period of time to respondwith an argument or alternative proposal such as narrowing down the specified goods/services. The given time to respond varies from one country to another, usually 30 days or 90 days given and extensions of time may be available upon request.
Publication for third parties to oppose the registration
A third party who wishes to oppose the
registration of a trade mark should file the opposition within the stipulated period
(opposition period) applicable for the specific
country. The opposition period may be 30 days
(i.e.the Philippines), two months (i.e. Singapore),
Malaysia, Indonesia) or three months (i.e.Brunei Darussalam) from publication.
If no oppositions are filed against the application within the stated period, the trade mark will proceed to registration.
Registration/Issuance of the Trade Mark Certificate
The authorities require the original
certificate of registration before they will
enferee rights against any trade mark
infringements. A trade mark registration
lasts for a 10 year duration and is
renewable for successive 10-year periods
there are four main avenues of enforcement which can be considered:
infringements especially in those South-East Asian countries where predictability of Court decisions is still challenging. Often mediation and settlement are preferred.
research into one of the South-East
Asian markets, they soon discovered
that a prior registration for their brand
existed in that market, having been
submitted by a local party 5 years
systems and electronic radios. The
European company was advised by a
local attorney that the application put
forward by the European company will
registration made by
the local party would
block any application
that we put forward!
• Register your mark in advance if you are
planning to expanding in a market.
• Perform trade mark searches before you
decide to apply for trade mark
protection, otherwise you may later
encounter a prior registration that
conflicts with your trade mark and this
can affect commercialization of your
products as well.
• Remember that once you obtain trade
mark protection, use it for the classes in
which you received protection otherwise
you risk cancellation due to lack of use.
TAKE AWAY MESSAGES
- Take steps to register your trade marks as soon as possible.
- Seek the advice of a local lawyer or trade mark agent to ensure adequate protection in relevant classes.
- Register broadly in South-East Asia countries of interest. Do not just consider the immediate class for the product to be sold, but consider whether the same trade mark could be used on related items and services such as packaging, advertising or merchandising.
- Consider registering key trade marks in local alphabets of the South-East Asia region (such as Thai or Lao) to preempt unwanted registrations and to prepare the way for sales in the country of interest at a future date.
- Instruct local attorneys to conduct searches if you intend to launch the product before the mark is accepted for registration.
Sorry, you are wrong!
you are right!
It’s Answer A because:
A formality examination will not be allowed as it is the beginning of a trade mark registration process.
You can consider additionally registering the trade mark in local scripts right after you register in Roman characters
Sorry, you are wrong!
you are right!
The statement is False because:
A trade mark registration in South-East Asia usually lasts for a duration of 10 years and is always renewable.
Sorry, you are wrong!
you are right!
The statement is False because:
As of May 2017, the Madrid Protocol applies to only 6 South-East Asian countries including Brunei Darussalam, Singapore, the Philippines, Cambodia, Laos and Vietnam.
Visit the South-East Asia IPR SME Helpdesk website for further relevant information, such as how to deal with business partners in the South- East Asia region – http://www.ipr-hub.eu
Visit the Helpdesk blog http://www.yourIPinsider.eu for related articles on IP in South-East Asia and China.
World Intellectual Property Organisation (WIPO) – http://www.wipo.int
Nice Classification System - www.wipo.int/classifications/nice/en
Madrid Protocol - http://www.wipo.int/madrid/en/guide/