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Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an “office” means an office of any such law firm.
Meeting on Great Women – ASEAN Collection Trademark Registration and Protection in ASEAN Bangkok, Thailand | 23-25 March 2015
Say Sujintaya Baker & McKenzie
Trademark Protection in ASEAN
Agenda 1. Trademark Basics 2. Trademark Filing and Prosecution Search and Clearance Trademark Application Cancellation / Renewal
3. Trademark Infringement
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Trademark Basics
What is a Trademark and can be registered?
A sign used to distinguish goods and services of one entity from goods or services of another May consist of words, images, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, shapes and any combination thereof
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Why Register a Trademark?
In most countries it is a precondition: - To obtaining an exclusive right - To enforcing your trademark - To recording your trademark with Customs - To recording a license of your trademark - To advertising or marketing product
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Common Elements of Trademarks Distinctive: Capable of distinguishing owner’s/ holder’s
goods or services from competitors’
Used or intended to be used: To identify goods or services, indicate source of goods
[Typically] Visually perceptible: Visible sign or combination of signs, symbols Note that other types (non-traditional) of trademarks exist:
sound, smell, 3D marks, hologram, etc.
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Certification Marks
Sample Trademarks
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Collective Marks
First to file vs. first to use
First to file First to use First party who files for registration preempts latter applicants
First party to use has a better right
Prior use is generally irrelevant
Prior use must be proved by evidence
No evidence of use or intent to use is required
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Many jurisdictions require applications to be based on trademark use or intent to use
At the time of filing the application: Usually not necessary to submit evidence of use
Typical types of evidence of use of the mark: Product and packaging Marketing and promotional materials (e.g., print and TV
advertisements, website) Business-related materials (e.g., company letterhead,
sales receipts for product)
Use of the mark
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First to file vs. first to use (ASEAN)
First to file First to use Cambodia Brunei Darussalam Indonesia Malaysia
Laos Myanmar Philippines Singapore Thailand Vietnam
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Country Requirements Brunei Darussalam An application may be filed on the basis of actual use OR intent to use
Cambodia An Affidavit of Use and proof of ownership are required to be submitted.
Indonesia Statement of Ownership, stating that the mark applied for is the applicant’s property and it's not an imitation of another person's mark, either in its entirety or in principle is required to be submitted.
Lao PDR No intent to use or actual use is required.
Malaysia Applications can be filed based on intent to use.
Myanmar No intent to use or actual use is required.
Philippines A declaration of Actual Use must be filed within 3 years from the filing date of the application.
Singapore The Applicant is required to confirm that the trade mark is used by the applicant, with the goods or services stated, or that there is a bona fide intention to do so. The Registry, however, does not, at the time of filing, require any Statutory Declaration to such effect.
Thailand Applications can be filed based on intent to use.
Vietnam Intent to use or actual use is not required.
Use requirements Is the applicant required to submit any of the following to demonstrate use of the mark: intent to use, actual use, statement of use or declaration of use, or a foreign registration upon filing of application?
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Trademark Filing and Prosecution
Search and Clearance
Conducting Search and Clearance
• To assess availability of a proposed mark for use and registration in relation to the intended goods/services
• To anticipate, by-pass and overcome in advance any
potential conflict with prior marks before commencing use of the proposed mark so as to avoid possible risk of infringement claim
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Unofficial/Online Search
‒ Instant online access to trademark database enables shorter turnaround time for reporting search results to the client
‒ Search criteria can be expanded or adjusted on a case by case basis
‒ Unofficial search usually provides more comprehensive results but the downside is the Registrar’s view may not be accurately ascertained
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Some available online searches Cambodia http://www.cambodiaip.gov.kh/SearchMark.aspx Singapore http://trademarksearch.ipos.gov.sg/etrademarkSearch Philippines http://www.ipophil.gov.ph/trademarksearch Taiwan http://tipo.hinet.net/TIPO_DR/GoodsIPO.htrademarkl Madrid http://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp
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Trademark Application to Registration
Trademark Application Flowchart Filing of TM Application
Formal Examination
Substantive Examination
Office Actions
Response to Office Actions
Allowance for Registration
Publication (for opposition)
Issuance of certificate of registration
•Disclaimers •Amendments to application •Other actions
•Maintenance requirements •Recordal of assignment •Renewal of registration
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Application – Requirements Submit completed form to the Trademark Office Required information:
Name and address of applicant, nationality/place of domicile Appoint a representative, name and address of representative, if any Translated / Notarized and/or Legalized Power of Attorney Address for service (where required) Copy of the priority document Other information on trademark: Color claim? 3-dimensional mark? Reproduction of the trademark and facsimiles Transliteration or translation of the mark or parts of the mark Names of goods or services for which registration is sought, according to Nice
Classification, Class number Declaration of use or intent to use, where applicable Signature, self-identification of applicant Filing fee
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Online Applications Applications may be filed online in the following jurisdictions: Cambodia Malaysia Philippines Singapore
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Publication and Opposition • If an application meets all requirements, it will be
published for opposition purposes
• An interested party may oppose the application within the publication period
• Possible Grounds: Trademark is not capable of distinguishing goods/services, prior use, foreign mark entitled to protection as internationally well-known mark, likelihood of confusion between marks, better right
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Professional fees / Official fees
Action Professional fees Official fees Filing Reporting to Office Action Responding to Office Action* ** Publication Registration
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*There may be more than one office action **Depends on the Office Action
Fees for Filing and Prosecution (Cost Estimates)* Countries Filing (for 1 class) Prosecution Total**
Brunei Darussalam 288 465 938
Cambodia 550 390 940
Indonesia 650 135 758
Lao PDR 635 285 920
Malaysia 326 510 836
Myanmar 400 320 720
Philippines 391 689 1,080
Singapore 700 577 1,277
Thailand 450 560 1,010
Vietnam 403 358 761
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*In US Dollars and includes both Professional and Official fees. **Estimates for basic and straightforward trademark filing up to registration. Data excludes costs for search and clearance, substantive advice in the course of trademark examination and prosecution, and renewal and maintenance costs.
How long it takes to register a mark
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0 10 20 30
VietnamThailand
SingaporePhilippines
MyanmarMalaysia
LaosIndonesiaCambodia
BruneiEstimated No. of Months
Registration Period ‒ Initial registration period is 10 years from filing date or
registration date
‒ Renewable every 10 years
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Renewals
Renewals and Post Registration ‒ Trademark management does not end with registration ‒ Renewals File renewal prior to lapse of registration If allowed to lapse: abandonment of trademark May be tedious to undergo revival of registration
‒ Other post-registration maintenance work: In some jurisdictions evidence of (actual) use and
declarations may be required
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Madrid System
Madrid System ‒ ASEAN members pledged accession to Madrid by 2015
Governed by two treaties: the Madrid Agreement Concerning the International
Registration of Marks (55 party states), and Protocol Relating to the Madrid Agreement, which was
adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996 (93 member states)
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Trademark protection can be obtained in several
countries at the same time through a single application Registration of an international mark is equivalent to
registration directly in each of the designated countries
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Madrid System
Why choose to file TM applications under the Madrid system?
Advantages + Single application + Multiple jurisdictions + Single administrative body + One set of fees + One renewal date + One set of amendments + Can add other jurisdictions + No agents
Disadvantages - 5 year link to basic
registration - Central attack - Assignments
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COUNTRY YES NO COMMENTS Brunei Darussalam
√
Cambodia √
Indonesia √ Likely by the end of 2015.
Lao PDR √
Malaysia √
In the next 12 months
Myanmar √
Philippines √
Singapore √
Thailand √ Thailand has committed itself to becoming a member of the Madrid System by 2015. However, given the current political situation, this may be delayed.
Vietnam √
Update: Accession to the Madrid Protocol
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Non-Traditional Marks 34
Registrability of non traditional marks – ASEAN Jurisdiction Sound Marks Three-
dimensional Marks
Color-only Marks Scent Marks Number Marks
Slogan Marks Holograms
Brunei Darussalam
N Y Y N Y Y Y
Cambodia* N Y N (No for Single Color)
N Y Y Y
Lao PDR* N Y N (No for Single Color)
N Y Y N
Malaysia N Y N N Y Y N
Myanmar* N N Y N Y Y N
Philippines N Y Y N Y Y N
Singapore Y Y Y Y Y Y Y
Taiwan Y Y Y Y Y Y Y
Thailand N Y Y N Y Y N
Vietnam N Y Y N Y Y N
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Trademark Infringement
Brunei
Criminal: fine of up to B$5,000 Civil: compensation for damages and account of profits and seizure of
infringing goods
Cambodia
Civil: Provisional measures Criminal: fine of from one to 20 million riels, or imprisonment from one
to five years, or both
Infringement – Remedies and Penalties
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Indonesia
Civil: Interim relief and injunctions Criminal: maximum of five years’ imprisonment and/or a fine of Rp1
billion for forgery; a maximum of four years’ imprisonment and/or a fine of Rp800 million for imitation; and a maximum of one year’s imprisonment and/or a fine of Rp200 million for trade in such goods
Infringement – Remedies and Penalties
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Laos
Criminal: Fine of up to 3 times the value of the property, plus consideration of profits. Fines may be doubled for second infringement, and imprisonment of 3 month to 2 years
Civil: compensation for losses and expenses; injunctions, seizure and destruction or disposal of goods
Infringement – Remedies and Penalties
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Malaysia
Civil : Preliminary remedies (Anton Piller Order, Mareva injunction), final injunction and damages
Criminal: Under the Trade Descriptions Act 2011 - Applying a false trade description [including counterfeiting activity], supplying, offering to supply, or having in the possession, custody or control for supply of counterfeit products are subject to a fine of up to RM 15,000 for each item infringed by an entity; and imprisonment of up to 3 years or to a fine of up to RM 10,000 for each item infringed by an individual. Penalties increase for second offenses
Infringement – Remedies and Penalties
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Philippines
Administrative: Fine from at least PHP5,000 up to PHP150,000, with an additional fine of not more than PHP1,000 for each day a violation continues to be committed;
Criminal: Penalty of two (2) to five (5) years of imprisonment and a fine ranging from PHP50,000 to PHP200,000
Civil: Preliminary remedies, Damages
Singapore
Civil: Preliminary injunction; Final injunction and damages Maximum limits for statutory damages are SGD100,000 up to SGD 1 million
aggregate except where trademark owner is able to prove that actual loss exceeds SGD1,000,00
Criminal: Fine of up to SGD10,000 for each infringing item (subject to a maximum aggregate fine of SGD100,000) and/or a prison term of up to five years
Infringement – Remedies and Penalties
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Thailand Criminal: Imprisonment not exceeding one year or fine not exceeding
Baht 400,000, or both Civil: Temporary injunctive orders; Permanent injunctions and damages
Vietnam Administrative: Fines of up to VND250 million (approx. USD12,500) for
individual infringer, or up to VND500 million (approx. USD25,000) for infringing entity
Civil: Injunctive relief and monetary damages Criminal: Loss of certain civil rights, fines ranging from VND50 million
to VND1 billion, three years to life imprisonment, and even capital punishment
Infringement – Remedies and Penalties
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ASEAN Expansion
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makro story ASEAN Expansion
• CP All PLC acquired Siam makro PCL to expand its business and distribution channels in ASEAN
• makro is leader in operating membership cash and carry trade in Thailand and neighboring countries
• Total consideration acquisition was THB 188,800 million (approx. US$ 5,740 million)
• More than 600 trademarks and service marks in more than 30 classes of goods and services
Thank you.
Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an “office” means an office of any such law firm.
46
