How To Protect Your Trade Mark In South-East Asia

4 January, 2017

 

With the arrival of the new year, many SMEs are planning to start new business endeavors in the lucrative markets of South-East Asia. However, with all this new year’s enthusiasm, it is very easy to forget that counterfeiting and other IP violations are still commonplace in South-East Asia. Thus, it is very important to have a robust IP strategy in place when entering the promising markets of South-East Asia. In today’s blog post, we are, therefore, taking a closer look at trade mark protection in South-East Asia, focusing on trade mark registration, protection and enforcement. 

 

Generally speaking, a trade mark is a sign which serves on the market to distinguish the goods and services of one undertaking from others, and over which the owner has an exclusive right. Trade marks are words, logos, devices or other distinctive features which can be represented graphically. In some South-East Asia countries, such as Singapore, Malaysia, Brunei, Laos, Cambodia, Vietnam and Thailand, they may also consist of the shape of goods or their packaging in three-dimensional form. As of now, Singapore is the only South-East Asian country to recognize trade marks based on sound.

 

Trade marks are an essential part of the identity of goods and services. They help deliver brand recognition, 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 and advertising. A trade mark can become an important asset with significant monetary value for a company and should, thus, be protected.

 

Trade Marks in South-East Asia 

 

The trade mark regimes in the South-East Asia region are generally understood to adopt the ‘first-to-file’ system, which means that the first person 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. Thus, if an SME does not apply for protection on time, others may do so first and benefit from the trade mark creator’s investments and reputation.

 

In the South-East Asia region, in order to protect your trade mark, registration is required. Certain South-East Asia countries, such as Singapore and Indonesia allow protection of unregistered trade marks based on laws which protect rights against passing off (i.e. someone misrepresenting their goods or services as being affiliated with another brand, even if that trade mark is not registered but has built up a reputation and goodwill) or rights against unfair competition. However, it is recommended to register your trade mark even in those countries local judges may prefer to recognize establishment of trade identity protection through national registration.  

 

Trade Mark Registration 

 

Most ASEAN countries such as Brunei, Cambodia, Laos, Vietnam, Myanmar, Singapore, Thailand and the Philippines take a relatively short time for trade marks to be registered – about one to two years. In countries such as Indonesia, the process will take as long as two to three years for an application that does not encounter any objections.

 

Trade mark applications are normally filed with the local trade mark offices and most South-East Asia Trade Mark Offices require the appointment of a local attorney to submit the application, except for Brunei Darussalam.

 

After submitting the application, the registrar will perform formality check followed by substantive examination. 

Substantive examination may take between 9 and 18 months. If an objection is raised, the applicant will be given a certain period of time to respond with 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 is given and extensions of time may be available.

 

If the substantive examination is successful, the trade mark will be published for third parties to oppose the registration. A third party who wishes to oppose the registration of a trade mark should file the objection within the stipulated opposition period applicable for the specific country. The opposition period may be 30 days (Philippines), two months (Singapore and Malaysia) or three months (Brunei) from publication.  If there are no oppositions the registrar will issue the registration certificate, which is always requested by local authorities when SMEs try to enforce their IP rights.

 

Benefitting from the Madrid System 

 

In order to be protected, trade marks should be filed and registered in each South-East Asia country that SMEs intend to do business in. However, it is worth noting that ASEAN members have committed to implementing the Madrid Protocol (an international system of registration administered by the International Bureau of the World Intellectual Property Association or WIPO). Under this treaty, it is possible to file a single application in order to seek trade mark protection in multiple member countries. So far, the following five ASEAN member countries have implemented the Madrid Protocol: Singapore, Cambodia, Laos, Vietnam and the Philippines. Furthermore, Brunei Darussalam is in the process of implementing and Thailand is in the process of acceding to the Madrid Protocol.

Under the Madrid Protocol, it is important to maintain the registration in the country of origin for five years because the life of the overseas registration depends on the registration in the country of origin being kept intact from challenge. The international registration under this system ceases to exist if, before the expiration of five years from the date of the international registration, the basic application or the registration resulting from it, or the registration in a country of origin no longer enjoys legal protection because it has been withdrawn, has lapsed, has been renounced, or has been the subject of a final decision of rejection, revocation, cancellation or invalidation. This dependence is absolute. It is therefore important to undertake a thorough trade mark search to see if there is any risk of a third party challenge in the home country before embarking on an international application.

 

Trade Mark Search Prior to Filing

 

It is advisable to instruct local attorneys to conduct preliminary searches if SMEs intend to launch the mark before the mark is accepted for registration. A product launch might be blocked because of a local conflicting trade mark registration that was not previously known. It is important to know this early. A pre-filing trade mark search would avoid this problem and help SMEs to re-consider the choice of mark or make adjustments, for example adding additional elements to further distinguish their marks from the uncovered conflicting registrations. It would be a wasted investment if SMES were prevented from using their chosen mark because it was discovered some months down the line that there was a conflicting registration which would preclude the use of their intended mark in the country due to the risk of trade mark infringement.

 

Some South-East Asia trade mark registries provide online searches. Only Laos, Cambodia, Myanmar and Brunei Darussalam don’t currently provide online searches. It is however still advisable to 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 SMEs which of the prior marks would be problematic to their proposed application. Some businesses use such facilities to get initial indication of potential conflicts and develop a range of alternatives for local agents to advise further.

 

Don’t Forget to Register your Trade Mark also in Local Script 

 

As the registration of a trade mark in original Roman characters does not automatically protect the trade mark against the use or registration of the same or similar trade mark written in local scripts used in particular countries of South-East Asia, such as Tamil, Thai, Lao, Burmese or Khmer, it is highly advisable to additionally register a version of your trade mark in the script used in the South-East Asia country of interest. Furthermore, if there is no existing character name for SME’s brand in a local script, it is very likely that one will be adopted by local consumers either by way of translation or by transliteration, and not necessarily with the right connotations or image that the SME would wish to convey.

 

Choosing a local script trade mark equivalent is particularly important, not only because of the meaning, but also the sound, tone and look of local characters chosen for a trade mark name can affect the brand’s reputation. Local scripts, such as Thai, Lao, Tamil, Burmese or Khmer, used in certain countries in South-East Asia have unique characteristics, and therefore, SMEs’ local equivalent trade mark should be carefully developed with the help and guidance of trade mark, marketing and PR experts, as well as native speakers and translators.

 

There are three ways to choose a trade mark name in local scripts. SMEs could use a literal translation.  A literal translation works when the trade mark has a specific meaning. The disadvantage of this method is that local characters will sound different from the original trade mark. It is also possible to create a phonetic translation trade mark. A phonetic translation involves creating a local character name that sounds like your original trade mark. This method is preferable when the trade mark already has a reputation amongst local language speaking consumers.

 

The third option is to use a combination of a literal and phonetic translation. The best translated trade marks are those that sound the same as the original ones and also make reference to a defining characteristics of the brand or have a positive meaning in the culture of the South-East Asia country of interest.

 

Trade Mark Enforcement in South-East Asia 

 

In the case where a trade mark is being infringed upon, there are four main avenues of enforcement which can be considered: criminal prosecution, administrative action, civil litigation and customs seizures.

 

Criminal raids are possible with the police or administrative departments. In most South-East Asia countries, police or administrative raids are the quickest way to end the infringement. Response time to action varies between countries and can range from one week to three months. The longer period could be due to bureaucratic steps such as verification of trade mark registration, the examination of suspected counterfeits and even legal opinion from the local intellectual property office.

 

Prior to any raid action, for practical reasons, it is important to first establish whether the infringer has an association with any person of influence that can undo or disrupt the raid.

 

Civil litigation is more suited to addressing large scale infringements. However, very few cases are brought to court this way, as civil litigation is seldom the preferred option when dealing with trade mark infringements. In such cases, trade mark owners usually rely on criminal raids to stop infringement, and then negotiate for civil statements in return for not proceeding further with the case. Civil litigation is likely to be more expensive than carrying out criminal raids. Thus, raids seem to be more effective in bringing the infringement to a quick end. Moreover, it is usually easier to secure compliance through government enforcement agencies than through the service of a court order demanding compliance.

 

Warning ‘Cease and Desist’ letters can still be effective to some degree against infringers operating out of a permanent address where the business is retail in nature. Warning letters work best where monitoring of compliance is possible. Such businesses would be those that rely on walk-in customers rather than B2B businesses that may deal only with known business associates and are closed to, or wary of, new approaches.

 

Border control is another option in cases where the infringing goods are believed to be imported and exported.

 

Border control through customs detention is possible if the customs authorities in question have adequate recording systems. Countries that have such systems are Singapore, Thailand, Vietnam and the Philippines. These systems allow trade mark owners to record with customs their trade marks so that customs will be on the lookout for possible infringements. The trade mark owner or his/her attorney will be contacted to examine the detained goods to confirm whether these are counterfeits for permanent seizure. In Brunei, no such recording system exists.

 

However, trademark owners may give written notice to the Controller of Customs requesting him to detain infringing goods that may come under customs control. However, such notice shall only be in force no longer than 5 years.