Trademark strategies in Asia Pacific
There are two precursors to considering a trademark filing strategy for Asia Pacific. The first is to understand what is meant by “Asia Pacific”, and secondly, what “generic” trademark strategies should be identified irrespective of the country or region under consideration.
So what is the Asia Pacific region? This is considered to be the western perimeter of the Pacific Ocean (that is, excluding the Americas), as well as the island nations within the Pacific. This effectively results in several quite diverse “sub regions”; (a) the northern Asian countries of China, Japan and Republic of Korea – three of the IP5 – as well as Taiwan; (b) the ten ASEAN countries – Singapore, Malaysia, Thailand, Philippines, Vietnam, Indonesia, Cambodia, Laos, Brunei Darussalem and Myanmar; (c) Australia and New Zealand; and (d) the Pacific island nations. Even this latter grouping can be categorized further into (1) Melanesia which includes Papua New Guinea, Fiji, Solomon Islands, Vanuatu and New Caledonia; (2) Micronesia including small island states such as Kiribati, Palau and Nauru; and (3) Polynesia which includes Samoa and Tonga.
World Bank GDP data for 2017 for this region illustrates the enormous diversity in GDP, and thus market, and in turn trademark considerations. The largest economy (China) represents around 15% of the world’s GDP and the smallest (Tuvalu) is 0.00004%. In terms of the groupings, North Asia (including Taiwan) represents 24%, ASEAN 3.5%, Australia and New Zealand 2% and the Pacific Islands 0.05%. All up, Asia Pacific (which contains many of the world’s currently fastest growing economies) is closing in on one third of world GDP.
However, the region is not uniform in economic terms. Six of the members – Brunei Darussalam, Indonesia, Malaysia, Philippines, Singapore and Thailand are more economically advanced than the other members. In fact, Singapore and Brunei Darussalam figure in the world’s top 10 for GDP per capita on a PPP (purchasing power parity) basis.
A major milestone in the regional economic integration of ASEAN occurred in 2015. This was the establishment of the ASEAN Economic Community (AEC). In short, the purpose and vision of the AEC is to create a single market and production base allowing for the free flow of goods, services, investments, labour and capital across the region. A region on the move!
Trademark strategy - Some basics
Before looking at specific issues within the Asia Pacific region, the logical starting point is the global trademark strategy. At the very beginning one must first recognize the “global marketplace” and that trademark rights are recognized on a national basis. Further, in most countries, registration is required to claim and/or enforce trademark rights. Early stage strategy development should be based upon close collaboration between marketing and IP groups to select preferred marks, and although perhaps overly simplistic, then prioritizing the key marks to file. Within this assessment, considerations will include manufacturing locations versus key markets (both current and intended), assessment of where counterfeiting may be more likely, as well as the ability (and cost) to enforce one’s rights. Further, consideration of what competitors are doing (or plan to do) will influence these decisions. Almost certainly, such considerations are likely to result in deciding to file (at least in the Asia Pacific) region) in China, Japan and Korea first, with other jurisdictions likely to follow in possibly a measured approach in accordance with its broader business strategy as well as some of the regional considerations contained herein.
Inherent in this early stage strategy development, including name and brand selection, is the ability to undertake relevant searches. Clearly whilst specific filing recommendations should be based on specialist searching capabilities, there are many options available to freely access registrations in the region as an initial check. WIPO’s global brand database not only contains international marks, but also contains the records many national IP registries including Australia, New Zealand, Japan, Korea, and even Papua New Guinea and Tonga. Whilst many ASEAN nation’s marks are listed in the global brand database, one should also consider using ASEAN TMview which is intended to make ASEAN trademark data accessible for parties considering protection in that region. Further, direct searching of the Chinese trademark office is available through www.chinatrademarkoffice.com.
Trademark strategy - Prioritization
Clearly filing in all possible countries resulting from any initial strategic assessment may be too expensive and possibly too time consuming, and some form of prioritization may be necessary. An immediate factor in the filing decision is therefore the actual application filing cost, the likely costs involved in obtaining registration, as well as the cost (and procedures) for renewing or maintaining the registration. Trademark filings in the countries of the Asia Pacific region involve many different procedures and proceedings in different languages which can add to the total cost. Therefore, at an early stage in strategy development, it is imperative to obtain reasonably accurate estimates of filing, prosecution and maintenance costs. In this way a table can be developed where the tradeoff between cost and expected use of the mark in each country can be generated to assist in the decision process.
Another factor in this prioritization is whether the country under consideration is a “first to file” or “first to use”. A first to use country, like the USA, means registration is not necessarily required to establish ownership in a trade mark, and common law rights actually arise from commercial use of the mark. Accordingly, one automatically has at least some ownership rights in a mark if one is the first to use it (assuming it is used for the relevant goods and/or services), irrespective of whether one has registered it.
On the other hand, many countries in the region, like many countries in Europe, do not consider use as such a factor in ownership, and adopt the approach that the first to register the mark is the owner, even over and above prior users. Accordingly, registration in countries with a first to file system might take priority over first to use countries, and this factor can of course also impact on budgeting decisions. Further, in a first to file country, there is always the potential for some form of trademark squatting where the “squatter’s” mark can block the legitimate user’s ability to register the mark and can result in some form of payment to the squatter to enable the user to use its own mark. Again another factor when prioritizing.
Although not exhaustive, the following countries in the Asia Pacific region adopt the first to use approach: Australia, New Zealand, Malaysia, Singapore, Brunei Darussalem, Fiji, Papua New Guinea and Samoa (Hong Kong also has a first to use system). First to file countries include China, Japan, Korea, Taiwan, Cambodia, Laos, Philippines, Indonesia, Thailand and Vietnam.
Part of this prioritization using a tradeoff between cost and use will invariably involve consideration of a nation’s membership of relevant international trademark conventions or treaties, as this can influence both timing and cost. If one assumes that once the mark has been identified or selected, and given the first to file scenario in countries such as China, Japan and Korea, then filing quickly is paramount. Utilizing the Paris Convention to claim the priority date for further filing in other member countries within six months is one approach, particularly those first to file countries. This assumes the priority right covers the mark and goods and services as intended for other jurisdictions. In the Asia Pacific region, Taiwan is the notable non-member of the Paris Convention. One of the ASEAN ten – Myanmar – is not a member, although implementation of its new trademark law is expected in the next year and will include the six-month provision. Of the Pacific island nations, only Papua New Guinea, Samoa and Tonga are members.
The foregoing assumes separate national filings form a major part of the strategy. Trademarks can also be protected through use of an international application via the Madrid Protocol. This international application (or IR) is a single application which can cover one or all of the member states of the Madrid Protocol – currently around 100. For most member countries one set of fees is paid which includes filing and registration fees, and the IR requires a basic application in the “home country” for the same mark and for at least some of the goods or services covered by this basic mark. Among the advantages of the IR are clear cost savings upfront. Also countries can be added to this IR if business needs arise later in other member countries. Other administrative requirements can also be simplified by the single IR. However, as part of the “Madrid process”, some member countries may issue adverse reports and any of the upfront cost savings can be lost as it then becomes necessary to appoint local attorneys to address such reports. A further disadvantage is that the IR is dependent upon the basic application remaining for five years from the filing of the IR, and if this basic application/registration fails in this period so too will the IR. This is sometimes referred to the vulnerability of a “central attack” on the basic application or registration. In the Asia Pacific region, Taiwan is not a member of the Madrid Protocol. Of the ASEAN countries the majority are members - Thailand has recently joined, with Indonesia and Malaysia expected to follow. Myanmar is not a member. No Pacific Island nations are members of Madrid Protocol, but the major economies of China, Japan, Republic of Korea, Australia and New Zealand are.
The development of a trademark strategy, irrespective of geographical territory under consideration, has a number of elements of common interest. Those identified include the first to file vs first to use element as well as the treaty membership element, and a number of guidelines relating to the Asia Pacific region have been noted. For larger GDP nations in this region, information on trademark procedures is well documented. However, within the sub-regions of ASEAN and the Pacific Islands, there can be considerable variation in approaches and their treatment is not necessarily uniform.
In the case of ASEAN nations, a major point of difference is the diversity of languages used. Some (e.g., Singapore) are English based, others (like Malaysia) use English or local Bahasa Malaysia, and some – Indonesia, Thailand, Vietnam and Cambodia – are in local language only. Similarly, registration of a trademark in its original Roman characters will not necessarily protect the mark against the use of a similar mark written in local scripts, such as Thai, Lao, Burmese or Khmer. Therefore, any equivalent local trademark needs to be carefully developed with trademark experts in such jurisdictions, and one needs to consider whether to use a literal translation, a phonetic translation, or preferably a combination of a literal and phonetic translation. The ASEAN countries also exhibit differences when it comes to multiclass applications, and in Cambodia, Laos, Malaysia and Thailand, multiclass applications are not permitted. Similarly, there are regional variants with series mark applications, and these are only available in Singapore, Malaysia and Brunei.
Although extremely small compared to other regional neighbors, the Pacific Islands nations exhibit considerable diversity in approaches to trademark protection. In some cases, “nations” are considered territories of another large country and trademark protection from any mark in that “parent” country automatically extends to it. France and New Caledonia is one example, USA and American Samoa, Guam and the Northern Mariana Islands is another. Some nations – Kiribati, Solomon Islands and Tuvalu – require a re-registration process of UK marks. In Fiji, UK marks can also be re-registered, but a separate national registration is available too. Other nations have adopted their own independent systems and these are Tonga, Samoa, Papua New Guinea and Vanuatu. A further category exists where there is no registration mechanism available at all. In such nations the best approach is to alert the public you consider your mark is important by publishing a cautionary notice in a local newspaper. This notice is often required in English and the local language. This notice should of course exist in parallel with use of the mark to establish common law rights. Although there is no fixed requirement it is generally recommended that cautionary notices be published about every two years. Nations where this cautionary notice approach can be used include Cook Islands, Nauru, Palau, Marshall Islands, Federated States of Micronesia, Niue and East Timor.
This article has endeavored to combine both the broader and generic trademark strategy development with some of the nuances and diverse characteristics of trademark regimes in the Asia Pacific region. In summary, a recommended approach is to develop and prioritize filings by using the importance of both the mark and the individual country as a starting point. This needs to be performed on a global basis and is independent of region. Then, where these prioritized countries are located in the Asia Pacific region, some or all of the guidelines outlined in this here can be used to further develop and refine the strategy for Asia Pacific nations.
As a final observation, by definition a global and/or regional trademark strategy requires diverse but coordinated global input. It is therefore important wherever possible to utilize the services of attorneys that have expertise and experience both globally and within the region. Dennemeyer & Associates not only has its own large global network of attorneys, but can provide that direct expertise in Japan, Australia and New Zealand. Where it does not have a direct attorney presence it can draw upon an external network of experienced and trusted agents in other jurisdictions in this region. Further, Dennemeyer’s Australian office can also act directly in Papua New Guinea and Vanuatu, and has experience in preparing and publishing Cautionary Notices in those nations where this is the only approach available.
In a new episode of the Advancements series, Dr. Richard Brunner, Chief Legal Officer at the Dennemeyer Group, explains why protecting IP is of the utmost importance for innovators and how blockchain technology works to their benefit.