Trade Mark Protection in Southeast Asia for SMEs – Registration and Trade Mark Search
By the ASEAN IPR SME Helpdesk
Trade marks are an essential part of the identity of goods and services. They are signs that serve the specific and primary purpose of identifying the goods or services of a producer, thus allowing the consumers to distinguish the products of one producer from those of another. They also help to build trust and reputation for your company, as well as playing an important role in marketing and advertising. A trade mark, thus, can become an important asset with significant monetary value for a company.
A rapid rise in disposable income has signaled a shift whereby local businesses in Southeast Asia are now steadily increasing their product mix in order to meet the growing demands of a rising middle class. It is increasingly common for local businesses to look outside of the Southeast Asian region for ‘inspiration,’ a tendency that could easily lead to imitation of products branded and/or developed in other markets. Many trade mark owners are confronted with this harsh reality too late, and only when their branding has been already copied or registered to local parties – possible as many Southeast Asian countries follow the ‘first-to-file’ rule (the first party to register, rather than use the mark is granted the legal rights). Thus it is advisable that trade mark owners give these countries serious consideration, even if they do not have immediate plans to expand into the region.
The current state of trade mark protection amongst Southeast Asian countries varies, though many 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) by 2015. Under this treaty, trade marks registered in other signatory countries will be granted automatic protection. In the meantime however, trade marks should be filed and registered to be protected.
- A trade mark is a sign which serves to distinguish the goods and services of one undertaking from others, and over which the owner has an exclusive right.
- In most Southeast Asian countries, a trade mark can be a brand, heading, label, device, ticket, name, signature, word, letter, numeral or any combination of these.
- The shape of goods or their packaging in three-dimensional form can be registered as a trade mark in some Southeast Asian countries, such as Singapore, Vietnam and Thailand.
The time required to obtain a trade mark registration varies in each Southeast Asia country from 1.5 to 4 years. Countries such as Singapore and the Philippines take a relatively short time for trade marks to be registered – about 1 to 2 years. In countries such as Indonesia, the process will take as long as 2 to 3 years for an application that does not encounter any objections.
A trade mark application needs to specify the goods for which protection is required. For example, Levi’s is protected for clothing, in particular jeans, so its trade mark registration is unlikely to cover poultry products. In order to make the application process manageable, a classification of goods and services is necessary. There are 45 classes that most Southeast Asian countries follow, under the WIPO international classification system, though some countries (Cambodia, Laos, Malaysia, and Thailand) require that separate trademark applications be filed for separate classes of goods and services.
An examination of the application is usually required to determine whether the mark is acceptable. A mark might be rejected for a number of reasons, including if it is too basic as a description, lacks distinctiveness, or is deceptive in nature. A mark is distinctive if it can fulfil its essential function to guarantee the identity of the origin of the marked goods or services by enabling the consumer, without confusion, to distinguish the goods or services from others of a different origin. Non-distinctive features include simple geometrical devices (such as rectangles, circles, etc.), simple words that are too frequently used to distinguish goods and services (such as “extra”, “mini”, ultra”), or common symbols, such as @. Descriptive marks are those that limit themselves to provide information about the goods and services in question (such as a word “fresh” for fruits and vegetables, “speedy” for vehicles, an expression “one litre” for drinks, etc.). Deceptive marks are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services (for instance, “leather wonder” for shoes made of synthetic materials). If issues are raised, applicants are usually given a three-month period in which to respond to arguments or proposals in order to overcome any objections, for example by narrowing down the classifications and or changing the trade mark.
Registering your trade marks in local languages
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 Southeast 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 country of interest. Furthermore, if there is no existing character name for your 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 you 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 have unique characteristics, and therefore, your 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:
- Creation of 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.
- Creation of a phonetic translation
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.
- 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 Southeast Asian country of interest.
Trade mark search
Due to the long registration period many businesses launch their trade-marked goods or services before they are accepted for registration. In such cases it is advisable to instruct local attorneys to conduct searches. 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. It would be a wasted investment if you were prevented from using your chosen mark because it was discovered some months down the line that there was a conflicting registration that rendered your continued use an act of infringement. It is also advisable to use a local agent as different countries have different considerations, for example in determining the similarity between the trade marks applied for and the opposing ones.
Some Southeast trade mark registries provide online searches, and these can be good facilities to get an initial indication. It is however still advisable to engage a local agent to undertake 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 protection of trade marks in Southeast Asia has been greatly enhanced over the last two decades, to the point whereby even relatively small-sized foreign trade mark owners are frequently able to successfully enforce their intellectual property rights. However, it is still an environment in which a very pro-active approach is necessary to gain sufficient protection; to overlook trade mark searches or registration in local languages could potentially lead to costly legal conflicts and the end of a venture for a small- or medium-sized enterprise. Additionally, the existence of the ‘first-to-file’ rule exacerbates the dangers of intellectual property theft and conflicts, and reinforces the point that businesses should be pre-emptive in protection. For any business looking to enter Southeast Asia, intellectual protection should be among the most important aspects of their business strategy.
The ASEAN IPR SME Helpdesk, co-funded by the European Commission’s Directorate-General for Enterprise and Industry under the Competitiveness and Innovation Framework Programme, supports European Union (EU) small and medium sized enterprises (SMEs) to both protect and enforce their Intellectual Property (IP) rights in or relating to ASEAN, through the provision of free information and services. These take the form of jargon-free, first-line, confidential advice on intellectual property and related issues, plus training, materials and online resources.