Trademark Law across ASEAN – Part One
By: Dezan Shira & Associates
Editor: Felicia Romain
This two part series will take a closer look at four leading ASEAN economies; this article will offer investors a better understanding of the dynamics of trademark laws across the region in Indonesia and Malaysia, while the follow piece will examine Singapore and Thailand.
Trademarks are extremely important when trying to draw a distinction between the goods and services of one producer/service provider from that of others. Thus, it is paramount for investors to register for a trademark first and foremost in order to save themselves and their business from potential confusion with another company.
Trademark laws can be complex nuts to crack depending on jurisdiction. Therefore consulting with a professional services firm prior to entering into a new market in an emerging economic powerhouse such as the ASEAN region is crucial. It is especially important for international companies to understand the country-specific nuances of trademark law in ASEAN.
Trademark laws in Indonesia change frequently in order to fulfill the increasing demands for better protection of well-known trademarks, mostly owned by Western companies. The Indonesian trademark system generally is understood to adopt the first-to-file system in order to protect your trademark and avoid any potential piracy. Those who are the first to file will receive priority over a previous user of the mark in Indonesia.
Trademark piracy in Indonesia due to ‘bad faith’ in business dealings is a serious problem facing foreign investors which must be understood and tackled before entering this emerging market. The term ‘bad faith’ registration refers to a third-party who is not the legitimate owner of a mark, registering for the mark first, thus preventing the legitimate owner from registering it. This act of ‘bad faith’ is very common in Indonesia and opposition to bad-faith registrations through the country’s court system frequently does not end in a favorable outcome for foreign plaintiffs.
Once a trademark is officially registered it is protected in Indonesia for 10 years from the date of filing. The Directorate General of Intellectual Property Rights is the government body responsible for the administration and registration of intellectual property (IP) rights, including trademarks, in Indonesia. The police are legally entitled to investigate any complaints pertaining to trademark infringement.
Stricter penalties for trademark infringement have been introduced in Indonesia. The enforcement of trademark law is being used as a means of improving the business climate and attracting needed investment. Trademark law in Indonesia is modeled to offer equal protection to popular trademarks owned by both foreign and domestic investors, in the hopes of streamlining the ease of doing business in the country. It is also designed to protect consumers of goods and services of well-known marks from buying counterfeit products.
Trademarks in Indonesia are regulated by Trade Mark law No. 15 of 2001. However, in the near future the Indonesian government will introduce several amendments. The Indonesian government will revise Trade Mark Laws in order to accommodate the international registration of trade marks based on the Madrid Protocol, which is scheduled to come into effect in December 2015.
Headquartered in Kuala Lumpur, the Intellectual Property Corporation of Malaysia (MyIPO) is responsible for administration, processing and registration of trademarks in Malaysia. Like Indonesia, trademark registration in Malaysia is valid for 10 years from date of application and may be renewed every ten years. If a mark conflicts with an existing mark or is not in compliance with the requirements of a registrable trademark, the examiner will issue a notice of objection to applicants. In order for trademarks to be solidified in Malaysia, there must be legal evidence of a registration certificate issued by the Registrar office.
A certificate of registration serves as an important document to claim ownership of goods exported to other countries. However, Malaysian certificate registration does not grant investors protection abroad. Trademark rights are territorial in nature. In other words, the rights granted by a trade mark registered in Malaysia extend only to Malaysia. Investors will be required to apply for registration separately in each country for protection of trademark overseas.
The Trademarks Regulations of 1997 and the Trademarks Act of 1976 regulate Malaysia’s trademarks and provides the scope under which a trademark is protected against cases of infringement. Trademark infringement can occur when a person who is not the registered proprietor of the trade mark uses a mark that is identical or closely resembling that of the registered mark to the point where it is possible to deceive and/or lead to confusion. The registered proprietor of the mark has the power to initiate court proceedings against any person who has infringed or is infringing their mark.
Further Support from Dezan Shira & Associates
With over 23 years of experience facilitating FDI across Asia, Dezan Shira & Associates is well placed to advise on all issues related to trademarks and IP protection across ASEAN. For more information, please contact the specialists at email@example.com.
Asia Briefing Ltd. is a subsidiary of Dezan Shira & Associates. Dezan Shira is a specialist foreign direct investment practice, providing corporate establishment, business advisory, tax advisory and compliance, accounting, payroll, due diligence and financial review services to multinationals investing in China, Hong Kong, India, Vietnam, Singapore and the rest of ASEAN. For further information, please email firstname.lastname@example.org or visit www.dezshira.com.
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