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Trade marks can be words, logos, devices or other distinctive features which can be represented graphically. In some countries, also 3D mark, sound or smell can be protected as marks.
Trade marks help deliver brand recognitions, i.e. they distinguish your company from the competition. They also help to build trust, reputation and goodwill for your company as well as play an important role in marketing.
This means that the first person or entity to file a trade mark application in a particular South-East Asia country will own that right in the country once the registration is granted.
Trade marks need to be registered in a specific country in order to be valid. Certain South-East Asia countries, such as Singapore, allow protection of unregistered trade marks based on laws which protect rights against ‘passing-off’ or rights against unfair competition.

Given the increasing prominence and attractiveness of South-East Asian markets, it is advisable that trade mark owners give these countries serious consideration for registration, even before the goods or services are commercialized or before immediate plans to expand into the negion one made.

Note

What do you need to know?

Myanmar Thailand Laos Vietnam Vietnam Vietnam Malaysia Malaysia Singapore Cambodia Brunei Indonesia Indonesia Indonesia Indonesia Indonesia Indonesia Indonesia Philippines

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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.

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There are four considerations to take into account before proceeding to a trade mark application
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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.

Please select for Mr. Businessman one of the houses on the road
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In the case where a trade mark is being infringed upon,
there are four main avenues of enforcement which can be considered:
Criminal raids are possible with the help of the police and investigators. In most South-East Asia countries, police or administrative raids are usually the quickest way to end the infringement.
If the enlorcernenl is caused by a small competition or when it needs to be stopped right awway, an administrative action is the most efficient. If the opposile party is a medium or large company as well as too much damage has been caused, a judicial route (court procedure) might be more suitable.
Generally, few cases are brought to court this way, as civil litigation is seldom the preferred option when dealing width trade mark
infringements especially in those South-East Asian countries where predictability of Court decisions is still challenging. Often mediation and settlement are preferred.
Border controls is another option in cases where the infringing goods are believed to be imported and exported. Border control through custom authorities in question have adequate recording systems or it they allow claims upon IP right holders request; like Singapore, Thailand, the Philippines and Vietnam.
1 - An European
electronics producer
with an
internationally
recognized brand
for personal
computers is
interested in
setting up
business in
South-East Asia.
2 - Upon carrying out their initial
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
before.
3 - The local registration covered stereo
systems and electronic radios. The
European company was advised by a
local attorney that the application put
forward by the European company will
be blocked.
Sir!! The trade mark
registration made by
the local party would
block any application
that we put forward!
5 - It was discovered that the local party had not actually been using the registered mark. The European company therefore initiated a cancellation procedure of this registration in a local court owing to a lack of use of the mark.
6 - The process of cancelling the earlier mark was expensive as a market survey was required and the local party defended the cancellation vigorously. An appeal was subsequently submitted to a higher court despite the fact that the European company had already succeeded in the initial hearing.
Lesson learned:

• 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.
Please answer all the questions.

Sorry, you are wrong!

Congratulations,
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!

Congratulations,
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!

Congratulations,
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.

Further information

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/

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