China

 

According to China-based lawyers at Baker & McKenzie, the latest revisions to the PRC Trademark Law and Implementing Regulations are wide-ranging. They have introduced signiicantlyincreased penalties for trademark infringement, the availability of multi-class trademark ilings and significantly-reduced examination/review times for all proceedings.

 

The revisions also include a fundamental revamping of China’s trademark opposition regime, unfortunately including the removal of the opposing party’s right to appeal against a decision rejecting the opposition. This will have signiicant implications for brand owners, making more aggressive and strategic trademark filings essential in building and maintain a strong trademark portfolio in China.

 

The Beijing Intellectual Property Court, which was set up on November 7, 2014, is now handling administrative appeal cases that would previously have been handled by the Beijing No. 1 Intermediate People’s Court, such as administrative appeals against a decision by the Trademark Review and Adjudication Board (TRAB) to uphold the rejection of a trademark application. Similar specialized intellectual property courts dedicated to handling such trials on patents, trademarks and computer software issues will also be set up before the end of the year in two other major Chinese cities, Shanghai and Guangzhou.

 

The establishment of specialized IP courts is a response to criticisms that China is lax in protecting such rights. The courts are expected to be an important evolution in the capacity of the country’s judicial system to deal with IP-related cases.

 

Prosecution

 

Tier 1	CCPIT Patent and Trademark Office King & Wood Mallesons Liu, Shen & Associates Unitalen Wan Hui Da
Tier 2	An, Tian, Zhang & Partners Chang Tsi & Partners China Patent Agency (HK) China Sinda Intellectual Property NTD Intellectual Property Attorneys

 

 

 

 

 

 

 

 

 

 

 

 

 

The Trademark Office of the State Administration for Industry & Commerce has built an online trademark registration system and encourages the applicants to use this online system to register the trademarks. Currently, the trademark office is issuing a “Trademark Digital Certiicate” to the trademark agencies and law firms. However, this new system is not stable yet and crashed in August 2014. The trademark ofice is trying to make the system more stable and user-friendly.

 

The online trademark registration is expected to continue to become more and more popular, says Zhang Haixiao, a partner at Zhong Lun Law Firm in Shanghai.

 

“From a practical perspective, the law irms and agencies may need to learn this new system and response quickly”, she says.

 

Additionally, says Samson G Yu, managing partner at Kangxin Partners in Beijing, the examination criteria in cases involving bad faith is expected to change. “However, it is not clear yet, and we need to wait and see new decisions made on new cases,” he says.

 

Contentious

 

Tier 1	CCPIT Patent and Trademark Ofice King & Wood Mallesons Liu, Shen & Associates Unitalen Wan Hui Da
Tier 2	China Patent Agency (HK) China Sinda Intellectual Property Kangxin Partners LexField Law Offices Peksung Intellectual Property

 

 

 

 

 

 

 

 

 

 

 

 

 

It’s not only the IP Courts that are making China a more attractive place for foreign investment. Free Trade Zones (FTZs) in Shanghai, Tianjin, Fujian and Guangdong welcome investments from outside China, and will also bring challenges to China’s IP enforcement. In Shanghai, a trademark infringement case involving the May 5 seizure of 10,164 pairs of counterfeit shoes worth Rmb5 million (US$807,000), marked the irst IPR infringement case involving imported goods in the Shanghai FTZ.

 

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Hong Kong

 

Practitioners at Smyth & Co in association with RPC tell Asia IP that the infringement of IP owners’ rights in mainland China continues to be a key concern for brand owners and particularly in relation to trademark owners.

 

“The infringement of IP owners’ rights in mainland China is a problem,” says a firm spokesperson. “The situation is luid and, perhaps, getting less worse, but that is starting from a relatively low base. The new trademark reforms in mainland China appear to have tightened-up registration requirements and enhanced the amount of damages available. However, it remains to be seen whether this will make it easier or more dificult for foreign trademark owners to register their brands and resist infringers in mainland China.”

 

Lawyers say peoples’ awareness of IP in Hong Kong is improved, yet online infringement and piracy continues to be a problem faced by global businesses, in particular the entertainment industry, and those in Hong Kong are no exception. There have recently been a number of cases in jurisdictions around the world (notably, the United States and Europe) addressing alleged illegal ile sharing and online copyright and trademark infringement. There have been an increasing number of “blocking injunctions” allowing affected IP rights holders to apply to the court for an order compelling internet service providers to block access to infringing websites.

 

Hong Kong’s Intellectual Property Department (IPD), in collaboration with the business community, launched the Intellectual Property Manager Scheme in late May. The scheme aims to assist Hong Kong enterprises, especially small and medium enterprises (SMEs), in building up their IP manpower capacity so as to grasp the opportunities brought by IP trading, which in turn will drive new forces for the economic development of Hong Kong.

 

Speaking at the launch ceremony, Secretary for Commerce and Economic Development Gregory So, said, “In addition to excellent hardware support, it is equally important to strengthen software support for the holistic development of IP trading. Fostering manpower capacity is an integral part and the IP Manager Scheme launched by the IPD today is the signature programme in this area.”

 

Prosecution

 

Tier 1	Baker & McKenzie Deacons Ella Cheong (Hong Kong & Beijing) Marks & Clerk Wilkinson & Grist
Tier 2	Bird & Bird Mayer Brown JSM Robin Bridge & John Liu Rouse Vivien Chan & Co

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

So said the scheme could nurture and attract talents in IP management, build up a professional community and provide a cluster effect for enhancing the development of IP trading in the long run.

 

Contentious

 

Tier 1	Baker & McKenzie Deacons Hogan Lovells Mayer Brown JSM Wilkinson & Grist
Tier 2	Bird & Bird DLA Piper Robin Bridge & John Liu Rouse Simmons & Simmons

 

 

 

 

 

 

 

 

 

 

 

 

 

 

The scheme encourages enterprises to appoint a staff member in a managerial position as their in-house IP manager, who will be responsible for overseeing the compliance, management, exploitation and commercialization of IP assets. The IPD will provide relevant training and resources on IP management for the IP managers to carry out their duties within their enterprises.

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Taiwan

 

According to Peter Dernbach, who heads the IP team at Winkler Partners in Taipei, Taiwan’s trademark act was last amended in July 2012, and there have been no further proposals made to amend it. However, the TIPO announced in March 2014 that several administrative changes would be made to further protect trademark holders’ rights.

 

“The TIPO plans to make some administrative changes to further protect trademark owners’ rights. In March 2014, they announced that in order to protect rights, they would shorten the administrative remedial process by setting up a dedicated unit within the TIPO to handle objections, hear disputes and speed up the process from objection to ruling,” Dernbach says. “It is unclear as to when these proposals will be announced or indeed implemented.”

 

He adds that the biggest challenge for trademark owners is the sale of online counterfeits. “This makes it particularly challenging to obtain the necessary evidence to take effective enforcement action. The IP police are doing what they can, but we could beneit from more cooperation between the police, the ISPs, and those parties handling the inancial transactions for sites that engage in distribution and sale of counterfeits.” Furthermore, lack of valuing IP companies may be another problem for firms that seek trademark protection, since there is limited professional knowledge.

 

Julia YM Hung, head of the trademark division and a partner at Saint Island International Patent & Law Ofices, adds three points for the current trademark dilemma:

 

An unregistered trademark is not protected by the trademark law. Although an unregistered trademark owner may seek remedies based upon the Fair Trade Law if his or her mark has obtained its reputation in Taiwan, in view of the high threshold requirement generally imposed by the Fair Trade Commission in recognizing the reputation of a trademark, it is quite dificult to seek remedies via this route.

 

Prosecution

 

Tier 1	Lee and Li Saint Island International Patent & Law Ofices Tai E International Patent & Law Office TIPLO Tsai Lee & Chen
Tier 2	Deep & Far Formosa Transnational Rich IP & Co Tsar & Tsai Union Patent Service Center

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Taiwan adopts the post-registration opposition system, under which an opposition action can only be iled within three months from the date of registration of a trademark. The opposition proceeding is conducted on a pleading-and-defense basis, which means that two parties are allowed to alternately present their contentions as well as the relevant evidence until the two parties have exhausted their views and have no further argument to submit.

 

Contentious

 

Tier 1	Formosa Transnational Lee and Li Tai E International Patent & Law Office TIPLO Tsar & Tsai
Tier 2	Baker & McKenzie Eiger Law Saint Island International Patent & Law Ofices Tsai Lee & Chen Winkler Partners

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

It generally takes 12 months or longer to cancel a trademark registration by way of filing an opposition action. Therefore, even if an opposition action has been iled against a registered trademark which should not have been allowed in the irst place, the trademark owner is still entitled to use the mark and restrain others, including the genuine owner of the mark, from using a similar mark until cancellation of the registered mark.

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Japan

 

In 2015, the Japanese law could be revised with respect of the trademarks that are similar to those used by international organizations, says Masanori Hiroe, a partner at Hiroe and Associates in Gifu City. “The purpose of the revision is to protect the trademarks that are similar to those used by international organizations according to Article 6 (3) of Paris Convention.”

 

The bill for partial amendment of the Trademark Act, which enables non-traditional marks to be registered, was enacted by the Diet on April 25, 2014, says Kazuhiko Yoshida, a partner at Nakamura & Partners in Tokyo.

 

The following non-traditional marks are now registrable: colour marks (both single colour and a combination of colours, without delineated contours), sound marks and motion marks (probably including hologram marks).

 

Prosecution

 

Tier 1	Asamura Patent Office Nakamura & Partners Seiwa Patent & Law TMI Associates Yuasa and Hara
Tier 2	Abe, Ikubo & Katayama Fukami Patent Office Kyowa Patent and Law Office Matsubara, Muraki & Associates Sugimura International Patent and Trademark Attorneys

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Contentious

 

Tier 1	Anderson Mori & Tomotsune Mori Hamada & Tomotsune Nakamura & Partners TMI Associates Yuasa and Hara
Tier 2	Abe, Ikubo & Katayama Hibya Park Law Ofices Kyowa Patent and Law Office Nishimura & Asahi Ohno & Partners

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

However, people should note that colour marks without delineated contours are not expected to be registered easily without acquiring distinctiveness since they are ordinarily used to improve the aesthetic appearance of products, says Mitsuko Miyagawa, a partner at TMI Associates in Tokyo. “Sounds that usually come from the mark’s designated goods or services (such as the sound of a motorcycle engine), single tones, natural sounds and musical compositions will also be considered lacking distinctiveness. But if sound marks contain language elements, they will be taken into consideration in determining distinctiveness.”

 

Scent, texture and taste are not included at the moment, adds Miyagawa.

 

In May 2014, the Japan Patent Ofice (JPO) formed the Trademark Examination Guideline Working Group to determine the examination procedures for non-traditional trademarks; the group is currently working to inalize the trademark examination guidelines and the necessary ordinance to implement the amendment of the Trademark Act, Miyagawa says. “Although the details of the guideline have not yet been decided, it would be advisable for a person who wishes to apply for a non-traditional trademark to collect evidence of their use of such marks so that they can demonstrate acquired distinctiveness in the event that the JPO issues an ofice action due to lack of distinctiveness.”

 

Since there will be no transitional measure in this amendment to modify irst-to-ile principle for applications in this amendment, companies seeking to obtain registration for non-traditional trademarks should ile the application as soon as possible after April 1, 2015, adds Miyagawa.

 

The amended Trademark Act has also expanded the scope of the eligible entities which can register regional collective trademarks, Miyagawa says. “The previous Trademark Act only allows business cooperative associations, cooperative associations which were founded under special Japanese acts and foreign associations corresponding to such entities as eligible entities which can register regional collective trademarks.”

 

These are trademarks which are combined with a regional name and a product name such as Oma maguro (Oma tuna) in Aomori Prefecture, Soka senbei (Soka rice crackers) in Saitama Prefecture, Edo Kiriko (Edo Kiriko handmade cut glass) in Tokyo and Tajima gyu (Tajima beef) in Hyogo Prefecture, Miyagawa says.

 

The amended Trademark Act relaxes this requirement and has added commerce and industry associations, chambers of commerce and industry and speciied non-proit organizations in order to increase and accelerate the popularization and dissemination of regional brands. For example, under the revised Trademark Act, Shodoshima olive oil, which is an olive oil made in Shodo Island in Kagawa Prefecture, will also be protected by the Shodoshima Olive Oil incorporated non-proit organization as a regional collective trademark, Miyagawa says. “This revision is expected to revitalize the local economies and businesses.”

 

Challenges remain in combating counterfeits online. Based on a press release from the Ministry of Finance, as of March 13, 2014, the number of customs seizures conducted in 2013 was 28,135, which is the largest on record, most of which were related to infringing products shipped from China.

 

The government has tried to work with the Chinese government on that issue, but at the moment, the situation does not seem to be improving, says Miyagawa.

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North Korea

 

Following Kim Jong-Il’s death in December 2011, the North Korean regime began to take actions to transfer power to Kim Jong Un, who has now assumed many of his father’s titles and duties. After decades of economic mismanagement and resource misallocation, North Korea has relied heavily on international aid to feed its population since the mid-1990s. The country began to ease restrictions to allow semiprivate markets, starting in 2002, but then sought to roll back the scale of economic reforms in 2005 and 2009.

 

The government often highlights its goal of becoming a “strong and prosperous” nation and attracting foreign investment, a key factor for improving the overall standard of living. In this regard, in 2013 the regime rolled out 14 new Special Economic Zones set up for foreign investors, though the initiative remains in its infancy.

 

North Korea allows for registration of trademarks for goods, service marks, collective marks, and certiication marks, but not by applicants from Japan or South Korea, according to lawyers at Ming & Sure Intellectual Property Law Firm in Beijing.

 

North Korea is presently the only country under the US Sanctions Program for which the Ofice of Foreign Asset Control (OFAC) requires intellectual property owners to obtain a Speciic License to register, maintain, and protect intellectual property rights, notes E Martin Enriquez, a Denver-based associate at Lewis Roca Rothgerber.

 

Companies including Intel have requested such permission from the OFAC, according to Business Korea. The magazine reported that a diplomatic source in Washington said the move “appears to be aiming to pave the way for pushing into North Korea’s market in the event of the lifting of US sanctions.”

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South Korea

 

South Korea’s Supreme Court is expected to render a decision in Pizer v. Hanmi within the next 12 months, which will eventually clarify the scope of colour marks having three-dimensional shapes, says Younggi Hong, a partner at YP Lee, Mock & Partners in Seoul.

 

KIPO has recently proposed some changes to the Korean Trademark Act. If passed by the National Assembly, the amendments should be effective July 1, 2015. The proposed changes are as follows:

 

Acknowledging “Electronic Use” of a Trademark

 

Article 2(1)(vi) will explicitly include “use in an electronic manner” as a recognized type of trademark use.

 

Facilitating Trademark Registrations

 

More trademark choices for new market entrants. Under the current act, a potential applicant must wait a year if he wants to register a mark similar or identical to a registration that is recently expunged from the register. “The purpose of this rule is to protect consumers from potential confusion,” says Jay Yang, senior partner at Kim & Chang in Seoul. “However, the proposed amendment will eliminate this one year bar in order to give new market entrants more choices when selecting their desired trademarks.”

 

Prior users will be given priority in same-day filings. For applications filed on the same day, a lottery is held to decide priority if no other agreement is reached among the applicants, Yang says. “But the amendment will now give priority to the applicant who had previously used the subject mark.”

 

Consent letters will be accepted. KIPO does not currently accept letters of consent from senior registrants agreeing to registrations by junior trademark applicants, Yang says. “However, in the interest of harmonizing with global trademark standards, the act will be amended to recognize consents granted between the parties.”

 

Cancellation Actions – Change in Filing Requirements and Effectiveness of Decision

 

Currently, a petitioner of a non-use cancellation action must have legal standing to initiate an action and, once a cancellation decision is issued, the cancellation of the registration is not considered to be retroactive. Standing is established by having a business in the same industry as the trademark registrant or owning an application that is similar or identical to the trademark. The proposed amendment will eliminate this standing requirement in order to create a larger pool of trademarks for new market entrants, Yang says. “The amendment will also assume that a mark was not in use if the evidence of use is dated within the three months prior to a cancellation petition due to the registrant’s expectation that a petition would be filed. This is to prevent the registrant from producing evidence of token use. Lastly, cancellation decisions will be retroactive under the proposed amendment, such that the cancelled registration will be nullified as of the filing date of the cancellation action.”

 

David Kim, a partner at You Me Patent & Law Firm in Seoul, says that lawyers expect that this revised act will lead to a rise of cancellation actions against registered marks to a greater extent than the country has experienced previously. Trademark owners may also easily lose their trademarks if they have no evidence of usage. “The reason for this amendment is because, in the past, unused trademarks have simply prevented others from using similar marks, and in Korea, there are many unused marks – this revised cancellation scheme will therefore resolve these problems and we strongly welcome this change.”

 

Many other jurisdictions, including Japan, China and Europe have already allowed anyone to initiate cancellation proceedings, says Jeong Yeol Choe, a partner at Yulchon in Seoul.

 

Invalidation Actions – Statute of Limitations

 

Invalidation actions may be filed based on similarity to a senior registered mark, or the fame of a prior used mark, etc. Generally, there is no set deadline to file invalidation actions, except for actions based on similarity only, which must be filed within five years of registration of the adverse mark, Jay Yang says. “In order to protect the current market status, the amendment would introduce a statute of limitations for invalidation actions so that validity claims based on fame must also be initiated within ive years of the adverse mark’s registration date.”

 

Collecting Damages Based on a Trademark Not in Use

 

The amendment will explicitly deny a trademark owner’s claim for damages if the subject registration is not in use, Jay Yang says. “This is to stop parties from registering marks without an intent to use and then demanding damages or royalties from third parties.”

 

Trademark coexistence has also been proposed, but within the limitation that the applicant whose application has been denied due to reasons of identicalness or similarity must submit a consent letter signed by the trademark right holder. “In order for the revised bill to take effect, it must undergo review by related government ministries and the National Assembly, so successful implementation is uncertain,” says Min-Sook Shin, a trademark attorney at Nam and Nam World Patent and Law Firm in Seoul. “However, because the reason to pass the bill is intended to overcome the reason to reject marks in terms of raising the satisfaction level for applicants, it has been gaining a lot of attention.”

 

Other plans include reducing the trademark examination period to five months, David Kim says. “A few years ago, the average examination period was 10 months, while in 2014, the average examination period was 6.4 months.”

 

Prior to all of the above, several amendments to the Trademark Act became effective on June 11, 2014, including:

 

Provisions to prohibit the dilution of famous marks. It is now possible to prevent registrations of third party from filing trademark cases on non-similar products or services that cause confusion to, or damages the reputation and the distinctive mark of existing well-known products or the business of another individual, says Shin.

 

However, a clear bad faith intent filing cannot be challenged unless the rightful owner can prove its fame in any one country. “Given the high standard of proving fame in Korea and the court’s and KIPO’s reliance on traditional fame evidence (e.g., high sales figures and market share), this is not an easy task for new brand owners,” Jay Yang says. “However, this challenge is getting better as we have seen the courts and KIPO becoming more flexible in their review of the submitted fame evidence. For instance, if there is a substantial amount of press exposure and public awareness of the trademark (e.g., celebrity use of the product), there is a trend towards recognizing fame of a trademark despite somewhat lower sales and advertisement figures.”

 

The secondary meaning of the non-distinctive mark acknowledgement requirement has now become lax. “Although it was established that a non-distinctive trademark whose source had been used before the initial filing of the trademark would be allowed approval of its secondary meaning, this condition was extremely hard to achieve as those requirements had to be ‘remarkably’ met,” Min-Sook Shin says. “But in 2014, the word ‘remarkably’ was deleted from the set of amendments and changed to ‘if an individual can identify one’s product by displaying its source.’”

 

Despite the present and future law amendments, there are still challenges for trademarks.

 

Prosecution

 

Tier 1	First Law Kim & Chang Lee International IP & Law Group You Me Patent & Law Firm YP Lee Mock & Partners
Tier 2	Bae, Kim & Lee Cho & Partners Lee & Ko Nam & Nam World Patent & Law Firm Yoon & Yang

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Under the current trademark act, if a trademark conflicts with another’s copyright, the trademark registrant may only use the mark if the owner of the copyright agrees to the use of the trademark.

 

Contentious

 

Tier 1	Bae, Kim & Lee Cho & Partners Kim & Chang Lee & Ko/First Law Lee International IP & Law Group
Tier 2	Central Intellectual Property & Law Yoon & Yang You Me Patent & Law Firm YP Lee Mock & Partners Yulchon

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

However, there are no articles in the law to refuse or invalidate trademarks that have copied the copyright of another. “In this regard, I believe that trademarks that have been copied from another’s copyright should not be registered in the first place,” David Kim says. “I believe that refusal and invalidation grounds based on copyright are needed.”

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Brunei

 

Brunei is making preparations to take the next step in the development of its IP regime.

 

The Brunei Economic Development Board says that the country will accede to the Madrid Protocol for the International Registration of Marks by the end of 2015, showing its commitment to implement the initiatives set out in the ASEAN IPR Action Plan 2011-2015.

 

“Much progress has been achieved since the establishment of BruIPO, through the concerted efforts of the relevant enforcement agencies and government departments, as well as BruIPO’s continuous drive to promote public awareness on the importance of IPR protection,” said Hasnah Ibrahim, acting chief executive oficer of the Brunei Economic Development Board, at the opening of the 46th Meeting of the ASEAN Working Group on IP Cooperation.

 

Hasnah said that BruIPO is drafting a roadmap for accession that will include the review and amendment of the current Trademarks Act and Rules.

 

One of the biggest challenges faced by trademark owners in the country is a lack of awareness of their rights, as well as how to protect those rights, according to On Hung Zheng, senior associate at CCW Partnership.

 

“That’s why, in recent years, the Brunei Intellectual Property Office has been raising awareness of IP rights by holding conferences for individuals and companies,” he says. “Also, it would be helpful if the Registry would list trademark details online so as to enable applicants and current owners of trademarks to search easily. This would save time and costs.”

 

The current administrative framework is something that can be improved upon.

 

“An improvement would be to enable the general public to do a trademark search online instead of the manual search system at the moment,” says On. “This would save time and costs for everyone concerned. Perhaps in the future, we can do e-filings as well.”

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Cambodia

 

Cambodia achieved a major milestone in its IP regime when it joined the Madrid Protocol for the International Registration of Marks in March 2015, giving brand owners in Cambodia quicker and cheaper access to internationally recognized protection.

The Protocol entered into force in the country on June 5, 2015, making Cambodia the 95th member of the Madrid System.

One thing which needs to change about the legal framework currently in place concerns the renewal of trademarks, according to Nearirath Sreng, an advisor at Tilleke & Gibbins in Phnom Penh. “The grace period for trademark renewal has been cancelled in Cambodia. However, the registrar has kept non-renewal mark registration to be used against the registration of a confusingly similar mark, which is not time limited,” says Sreng. “This kind of practice should be changed to create fair procedures for all trademark applicants.”

There have been several important cases in Cambodia involving trademarks over the past year.

In one case, a French pharmaceutical company tried to file two trademarks with the Department of Intellectual Property Rights for goods including cosmetics, soaps, shampoos and perfumes. The DIPR issued a Notice of Preliminary Rejection of Mark Registration, saying that both trademarks wee descriptive and asking the applicant to provide supporting arguments and evidence to show that the marks were distinctive.

The applicant submitted the registration certificates for the two marks in more than 15 jurisdictions, after which the DIPR accepted the application for one of the marks.

The other mark was rejected again for being descriptive. The registrar asked the company to disclaim the word in question, and upon doing so successfully, the company was granted protection.

In another case, an international operator of hotels claimed that its service mark had been infringed on by a travel and tour business in Cambodia because its name contained a word which was similar to its own company name. An administrative procedure was launched at the DIPR.

Lastly, a multinational manufacturer of bicycle components, fishing tackle and rowing equipment submitted an application to register its mark. The application was rejected for being too similar to another previously registered mark.

Lawyers for the applicant argued that the marks were not similar because they were pronounced differently, and requested a Letter of Consent from the owner of the other mark, who agreed to grant the letter. The DIPR thus accepted the letter and began making preparations for the issuance of the relevant certiication for the mark.

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With regard to the year ahead, Sreng says that one difficulty lies in the fact that submission of a non-use declaration of a trademark registration can prevent a cancellation action against the registration of such a mark. “This system would be beneficial for trademark owners who do not have a plan to use a mark registered in Cambodia,” he says. “However, this system would be problematic to a trademark owner who cannot obtain a mark similar to an unused mark and who wishes to cancel such a registered mark based on the non-use ground.”

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East Timor

East Timor, the newest country in Asia, is now entering into a new stage of development, as it sees heavy investment from China.

More economic development has pushed the country to move development of its legal system forward, particularly on IP. Section 60 of the Constitution of 2002 provides that “the State shall guarantee and protect the creation, production and commercialization of literary, scientific, and artistic works, including the legal protection of copyright.” East Timor is slowly putting into place individual laws to implement its constitution. The Civil Procedure Code came into effect in 2005 and the Penal Code in 2009, but no specific IP legislation exists yet.

Following East Timor’s independence from Indonesia in 2002, there was a period where IP assets could be extended from their Indonesian counterparts in order to protect them in the Timorese territory by means of re-registration, but this method is no longer valid.

The country currently has no international treaty memberships or IP office, so there is no copyright protection. However, the Constitution specifically refers to copyright so it might be possible to argue some level of protection arises, says Nick Redfearn, the Jakarta-based deputy CEO of Rouse. “Copyright is specifically referenced in the Constitution, but [there is question as to whether] it had meant IP generally rather than only copyright. It might be possible that for copyright to arise, there must be local creation, but there is no present clarity on this,” said Redfearn, writing in a firm client alert.

IP specialist Inventa Timor-Leste said that IP protection has been done in the form of cautionary notices. “The legal validity of the cautionary notice publications is two years, and while there is no IP office the same must be republished every two years,” the firm notes on its website. A cautionary notice must be published in an East Timor official newspaper and published in English and Portuguese.

Representatives from Inventa say that the firm is working with East Timor’s authorities to establish the national IP office, relying on its IP expertise in Portuguese-speaking territories around the world.

“It is the usual problem that business booms, goods and services are traded, while the government tries to catch up. But with the country stable and the economy booming, then perhaps 2015 will see IP protection arrive at last,” Redfearn said.

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Indonesia

Trademark is the most common intellectual property application in Indonesia; some 62,813 applications were iled in 2013. “Among ASEAN countries, this igure places the country irmly at the top in terms of the number of applications iled,” says Somboon Earterasarun, director of the Jakarta ofice of regional law irm Tilleke & Gibbins. “In view of this, the Directorate General of Intellectual Property (DGIP) is revising the trademark law and implementing regulations to improve its services and legal certainty.”

There are 37 of 159 bills being prioritized for 2015, and the trademark bill is one of those 37, says Fabian Buddy Pascoal, a partner at Hanaiah Ponggawa & Partners in Jakarta. The bill contains several significant changes.

Procedure for trademark applications. Law 15/2001 currently provides that, following the iling of a trademark application, all applications must undergo a substantive examination period. Those applications that pass the substantive examination, are then subject to a publication period during which the trademark application can be opposed.

“This current procedure will be changed under the proposed draft law to provide that, following the iling of a trademark application, all applications will progress directly to a publication period for three months. During the publication period, any third parties who object to an application may file an opposition. Once the publication period ends, the trademark application will be subject to a substantive examination period,” says Adolf Martua Panggabean, head of the IP practice at Hiswara Bunjamin & Tandjung in Jakarta. “Further, the draft law will shorten the period for substantive examination from nine to six months.”

Protection of non-traditional trademarks. “The new law will cover non-traditional marks including 3D, hologram, sound and smell marks,” says Panggabean.

Renewal period. The draft law will include changes as to when a trademark owner can renew its mark registration.

“Currently, a mark owner can renew its mark during the 12 months before the expiration date of its registration until the day the protection ends – renewal application cannot be iled once the protection period ceases,” Panggabean says. “The draft law provides that the renewal period will start six months before the expiration date of a registered trademark and continue for a further six months after the expiration date. At the end of the renewal period, a trademark owner will not be able to renew its trademark registration. Further, for the irst six-month period, it is expected that there will be no additional fees incurred for renewing except for the usual oficial fees. However, additional fees may be incurred if a renewal is iled within the second sixmonth period.”

Provision with respect to the Madrid Protocol. One of the purposes of amending the law is to recognize Indonesia’s accession to the Madrid Protocol, which will become effective in 2015. “The Madrid System should ultimately be a positive development in the ongoing maturation of Indonesia as a trademark jurisdiction. It should beneit countless domestic companies that are starting to expand outside of the Indonesian market, while increasing the number of foreign applications iled in Indonesia,” says Januar Jahja, managing partner at Januar Jahja & Partners in Jakarta. “However, early challenges are expected and those with business interests in Indonesia (current or future) are advised to closely monitor these developments.”

 

Prosecution

Tier 1	AMR Partnership Biro Oktroi Roosseno Hadiputranto, Hadinoto & Partners Paciic Patent Multiglobal Rouse/Suryomurcito & Co
Tier 2	Acemark Am Badar & Partners Januar Jahja & Partners K&K Advocates SKC Law

Criminal penalties. Criminal penalties will be increased for infringement. The term of imprisonment will remain the same, except when counterfeits threaten the health or safety of human lives or the environment, in which case, the criminal sanction of imprisonment will be increased by one-third of the normal term, says Earterasarun.

Contentious

Tier 1	AMR Partnership Hadiputranto, Hadinoto & Partners K&K Advocates Rouse/Suryomurcito & Co SKC Law
Tier 2	Biro Oktroi Roosseno Fortun Alvariza IP Inter Patent Ofice Januar Jahja & Partners Paciic Patent Multiglobal

 

The imposed ines will be much higher in certain instances, such as infringement involving a forgery of a mark in its entirety, in which case, the maximum ine will be Rp2.5 billion (US$193,000), as opposed to Rp1 billion (US$77,000). The ines for a mark similar in its essential part to a registered mark shall be capped at Rp2 billion (US$154,000), instead of Rp800 million (US$62,000).

“These tougher criminal sanctions should — if the trademark owner undertakes a serious enforcement action — help alleviate the problem of counterfeits, as well as improve the country’s image,” says Earterasarun.

Association of marks in case of assignment recordal. The concept of an “association of marks” will be introduced as it relates to the assignment of registered trademarks. Although trademark owners are not required to register two or more of their marks in association, the proposed law states that, in an assignment of more than one registration under the same IP owner, the registered marks that have similarities (in large part or in entirety) and have similar goods/services can only be assigned when all of the registered marks are transferred to the same party. “The beneit of this new practice is that consumers will be less confused as to who is the owner of a registered trademark, as a similar mark for similar goods or services cannot be owned by two different entities,” Earterasarun says. “This will also ensure that consumers will not suffer from vastly different levels of product or service quality rendered by an identical or similar brand.”

It is important to note, however, that this provision involves subjective consideration of the similarities of the registered marks to be assigned, Earterasarun says. “It is therefore possible that there may be further complications and confusion in drafting an assignment agreement between two parties, as the assignor and assignee must ensure that the list of assigned marks is complete and exhaustive to avoid a rejection of the assignment by the examiner.”

Another complication may arise when mergers and acquisitions occur. The proposed assignment changes may result in limitations being placed on acquiring or selling parts of a company’s business or IP, as an assignment of registered trademarks must form part of the deal, adds Earterasarun.

Preliminary injunctions. The proposed bill provides greater details on the steps and procedures for obtaining preliminary injunctions from the court. “This is a welcome development, as the current provisions on preliminary injunctions lack clarity and are unenforceable,” says Earterasarun.

Deletion of cancellations by the DGIPR. The bill will remove the provision that allows the DGIPR to cancel registrations at its own initiative based on the owner’s non-use for three consecutive years.

“In reality, however, such cancellations by the DGIPR were extremely rare so this change is more symbolic,” Earterasarun says. “When this change is implemented, cancellation actions will only be initiated by a third party in the form of a suit commenced at the Court of Commerce.”

Trademark owners continue to face challenges protecting their marks in Indonesia. For example, the trademark ofice is still operated manually, says Lia Alizia, a partner at Makarim & Taira S in Jakarta. “A similarly long turn-around applies to applications for assignment recordation, opposition, etc.”

It takes a minimum of 14 months (administrative and substantive examination, publication, issuance of certiicate) to obtain registration, says Pascoal. “But in practice, the owner will receive the certiicate in a longer time.”

Also, to cancel a trademark registration in Indonesia requires the plaintiff to ile a civil suit with the Court of Commerce, which is both costly and time-consuming. “In many jurisdictions, such cancellation can irst be brought to the trademark ofice, which will allow the trademark owner to ile the cancellation against a bad-faith registration at considerably lower costs (at least in the irst stage),” Earterasarun says. “Thus, it would be beneicial if the law were to be amended in a way so that the cancellation can irst be initiated at the trademark office.”

The transparency of the trademark ofice needs to be enhanced as well, says Risti Wulansari, a partner at K&K Advocates in Jakarta. “In this digital era, we believe that it is time for the trademark ofice to put every decision or ofice action for the public to see – simply posting on its website.”

Moreover, the government must have the willingness to recognize well-known marks, especially those involving different goods and services. “The government has issued the provision on well-known marks since Trademark Law of 1992 followed by another provision in the Trademark Law of 1997. However, it is not yet implemented,” Panggabean says. “This also results in the unwillingness of the trademark ofice to reject a conlicting trademark application for different goods/services while courts can apply different criteria for different cases.”

MNCs should be particularly alert to trademark trolls in Indonesia, says Risti Wulansari, a partner at K&K Advocates in Jakarta. “This poses a signiicant challenge for the real trademark owners to enter into the Indonesian market. There is no signiicant improvement in the trademark ofice’s database system, and the quality of the trademark examiners have exacerbated this situation.”

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Laos

Laos is currently not part of the Madrid Protocol, but the groundwork is being laid for that, according to Nitipong Boonsong, a senior advisor at Tilleke & Gibbins in Vientiane.

“The Lao Department of Intellectual Property has commenced discussions to prepare to join the Madrid Protocol by passing regulations and gradually changing practices to meet the standards under the protocol,” he says. “One of the changes has been to publish trademark applications before issuing trademark certiicates, which are now published after being granted.”

Other changes expected in the months to come include the expiration date for trademarks being changed to 10 years from the registration date, and multi-class applications being accepted, according to Monmany Yaganegi, vice general director and IP expert at Lao Interconsult in Vientiane.

Two of the main challenges trademark owners in Laos have to face are the general public’s lack of IP knowledge and their culture of reaching a compromise, says Boonsong. “In practice, the Lao authorities only seize counterfeit goods for further destruction and warn infringers to not repeat the offence. However, after Laos’ IP law was enacted over three years ago, we found that, from 2013 to 2014, the IP ofice successfully resolved trademark infringement cases for 12 different brand owners through the application of administrative remedies and raid actions,” he says. “Once Laos’ IP oficers develop further expertise by undergoing more rigorous IP enforcement training and the IP law is clariied to a greater extent, brand owners with business interests in the country will feel more at ease with the prospect of IP infringement.”

Yaganegi says that another dificulty has to do with the attitude towards infringement. “There is a lot of infringement in Laos of all well-known brands,” she says. “But the owners ignore it and don’t take action against it because Laos is a small market in their view.”

In order to improve the situation, Boonsong says the provisions of the IP law should have a narrower scope. This would help the country’s IP oficers, especially since the number of registrations is rapidly increasing.

“The cases they have to deal with are also consistently becoming more complicated as transactions and business operations are expanding over Southeast Asia in light of the ASEAN Economic Community. The unsystematic and unstable practices of the [IP ofice] are the result of too much reliance placed on the discretion of inexperienced officers,” he says. “We believe that narrowly-scoped provisions will be more informative and of greater practical use to IP officers. The revision will also make the number of applications and cases more manageable.”

One recent major enforcement action consisted of raids at local markets in the provinces of Vientiane, Savannakhet, Khammouane, Salavan, Luang Prabang, Oudomxay and Champasak, where vendors were found to be selling imitation monosodium glutamate products bearing the trademark of a Thai seasoning powder company.

Recommended

DFDL Laos Kenfox IP & Law Ofice Lao Interconsult Company Lao IP Agency Lao Premier International Law Ofice Tilleke & Gibbins Vientiane International Law Co

 

In another infringement case, unauthorized distributors were found to be unlawfully using at a showroom and in advertisements a mark which was identical in colour and design to that of a Japanese automotive manufacturer.

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Malaysia

Trademark counterfeiting has evolved into a much more lucrative business in very sophisticated ways in Malaysia, hurting everyone, including individuals and businesses. Lawyers say a number of different things contribute to the phenomena that trademark counterfeiting often happens across borders.

The enforcement of IP rights is a huge challenge with counterfeiters becoming more sophisticated and rampant. “Customs oficers should be accorded more powers to prohibit the import and export of counterfeit goods at the border, as they are in the most strategic position to deal with such goods. It is also hoped that border measure provisions are amended to remove the requirement to provide shipment details and provide security in order to make it easier to invoke these provisions. More involvement of customs at the entry points into the country is also desired as a means of curtailing counterfeit goods,” says Wong Sai Fong, co-head of the intellectual property practice at Shearn Delamore & Co.

Prosecution

Tier 1	Henry Goh & Co Rahmat Lim & Partners Shearn Delamore & Co Skrine Wong & Partners
Tier 2	Advanz Fidelis Marks & Clerk Mirandah Asia Shook Lin & Bok Wong Jin Nee & Teo

Linda Wang and Su Siew Ling, partners at Zaid Ibrahim & Co, hope to see further changes in trademark laws, including amendments to the existing Trade Marks Act 1976 or for a wholly new trademarks act to be passed. “At the least, amendments are needed to give effect to provisions to enable iling under Madrid. Malaysia is obliged to change the law to allow iling under Madrid by 2015,” Wang says.

Contentious

Tier 1	Rahmat Lim & Partners Shearn Delamore & Co Skrine Wong & Partners Wong Jin Nee & Teo
Tier 2	Raja, Darryl & Loh Shook Lin & Bok Sreenevasan Tay & Partners Zaid Ibrahim & Co

 

“It is hoped that the government and attorney general’s chambers will adopt the recommendation of MyIPO for a whollynew Trade Marks Act to be passed. The existing act needs an overhaul to bring it up-to-date, including, among others, to permit registration of non-traditional marks such as colours, sounds, shapes, smells, etc., as well as multiple class ilings,” Wang says. “This would be a more satisfactory approach than piecemeal amendments to give effect only to provisions to satisfy obligations for Madrid ilings. As it is, Malaysia will increasingly be left behind in its law for trademark protection.”

Karen Abraham, co-head of the IP practice at Shearn Delamore & Co, notes that the Intellectual Property Corporation of Malaysia (MyIPO) issued a consultation paper on proposed changes to oficial fees for trademark and patents in December, which will include a reduction in fees for certain areas and also a fee increase in other aspects wherein the fee increase is within a range of 5% to 50%. A signiicant change put forward in the consultation paper is the proposal to have an upfront fee wherein applicants will have to pay the oficial fee for advertisement of the trademark application at the same time they pay the oficial fee for iling the application. Previously, the advertisement fee was only payable at the point when the mark was accepted for registration and before it was advertised in the gazette.

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Myanmar

Foreign brands face a market in Myanmar which, for the moment, has very little modern intellectual property protection, although a plethora of IP laws are – and have been for some time – in the drafting stage. Lawyers and investors have been expecting new IP laws since at least December 2013, but the government has missed targeted dates on numerous occasions. A Bangkok-based lawyer who works extensively in Yangon said that the present delay is thought to involve the forthcoming copyright law, about which some stakeholders apparently hold reservations.

Other rumours within Yangon’s tightly-knit community of foreign and local lawyers indicate that perhaps some high-level interests within Myanmar are not completely supportive of the changes to the IP law. “Perhaps some entrenched business interests would prefer the status quo,” the lawyer says. “We’re in limbo until there’s enough pressure to move the bills out of the attorney general’s ofice and into Parliament.”

The IP laws are being crafted by the Ministry of Science and Technology (MOST) with input from both local and foreign experts, before ending up in the attorney general’s ofice for review. Most high proile lawyers in Myanmar have been consulted in some form.

Most lawyers seem to believe that the IP laws will be introduced as a package deal – as separate trademark, copyright, patent and design laws – rather than one-by-one, and tell Asia IP that it’s virtually impossible to predict when the suite of IP laws will debut. While many say that the laws will likely be rolled out sometime in 2015, Rouse partner and deputy CEO Nick Redfearn, writing in a January 13, 2015, client alert, says he believes that it is unlikely for the government or Parliament to make a push for the laws to pass before the 2015 general election. “It seems probable that no new trademark law will be enacted in 2015,” he wrote.

The World Trade Organization (WTO) has already given Myanmar two extensions of time on its deadline to produce a trademark law, which was originally due in 1996. In June 2013, WTO members agreed to extend until July 1, 2021, the deadline for all least developed countries – including Myanmar – to protect intellectual property under the TRIPS agreement, with a further extension possible when the time comes. As a result, Redfearn notes, “the pressure on Myanmar to enact IP/trademark laws has significantly reduced.”

The fact that Myanmar lacks modern IP laws doesn’t mean that brands are without protection. “It doesn’t mean there are no avenues to enforce IP rights,” says Michael Ramirez, a consultant at Tilleke & Gibbins in Yangon. “You can use common law laws. It’s just that in Myanmar, those laws are very, very old.”

Very, very old is no hyperbole. Laws used in IP rights enforcement include the Copyright Act of 1911, the Merchandise Marks Act 1889, the Registration Act No. 16 of 1908, the Sea Customs Act No. 8 of 1878, the Code of Criminal Procedure (1898) and the Myanmar Penal Code of 1860. “Many of the substantive and procedural laws introduced by the British are still in force,” says Thein Aung, an advocate at Myanmar Trademark and Patent Law and secretary general of the Intellectual Property Proprietors’ Association of Myanmar. British rule of Burma lasted from 1824 to 1948, irst as a province of British India and later as an independently-administered colony.

At the moment, Myanmar has no IP ofice and no oficial search process (though at least one firm has developed a functional search system). Trademarks are not officially registered, though a system has been developed whereby trademarks are “registered” through the Ministry of Agriculture and Irrigation’s Settlement and Land Records Department, which is the same ofice where mortgages are recorded.

Dan Greif, a senior counsel at Bangkok-based Siam Premier International who heads the IP teams at that irm and at its Yangon-based affiliate, Myanmar Premier International, says the process involves a “Declaration of Ownership of Trademark” which declares that the mark is being used for speciied types of goods which are being manufactured and distributed for sale, that the mark was created by the applicant, that the mark is not an imitation of another person’s trademark and that the mark has not been used for any goods of the same type.

Registration takes approximately six weeks. Following registration, trademark owners typically publish notice of the registry in local newspapers. Infringement is punishable under the country’s penal code.

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DFDL Myanmar Kelvin Chia Yangon Khine Khine U Law Firm LawPlus Myanmar MN Associates Myanmar Premier International Rouse Tilleke & Gibbins U Myint Lwin Associates U Nyunt Tin Associates

“It’s a standard process,” says Ramirez. “Not a trademark recordal process, but just a recordal process. You get a recordal number, and then publish that in local newspapers, because there is no oficial gazette. It’s not mandatory, but you can use the process to put third parties or infringers on notice.”

Pedro Jose Fausto Bernardo, principal consulting attorney at Kelvin Chia Yangon, says that while “IP laws are effectively non-existent, in the modern sense,” foreign IP owners use this registration method to have “at least a veneer of protection.”

While registering and publishing a cautionary notice will put infringers and other people on notice that a particular trademark is owned by the party publishing the notice, court cases come down to use, says Bernardo. “When it comes to absolute legal principals, it’s really just the old common law principal of intent to use,” he says. “First to use has superior rights in Myanmar. When international clients seek advice on prior use, we tell them they need to create a presence to show use in Myanmar.”

Use is very important in Myanmar, says Ramirez. “If you have a mark with recordal in 1965, for example, but you don’t use it and someone else does, the priority right is with the person who uses it. There is no examination process and no cancellation process. Courts can and will cancel a mark based on first use.”

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The Philippines

In 2015, IPOPHL is striving to streamline its trademark examination procedures in order to reduce turnaround time, and to build the new ASEAN TMview Database along with the enhancement of all online services such as online payment, says Edmund Baranda, managing partner at Baranda & Associates in Manila.

Baranda has high hopes for IPOPHL meeting these goals: there were 102 Madrid applications iled in the Philippines by October 2014 and there were also approximately 6,000 Madrid applications designating the country – 44% of which had already been given grants of protection, says Baranda.

The Director General of IPOPHL has drafted and revised the Rules and Regulations on geographic indications after consulting with the public, says Mila Federis, managing partner at Federis & Associates in Manila. “These rules are expected to be formally promulgated and implemented soon.”

“Hopefully, the indigenous peoples in the Philippines will be able to leverage the GI Rules to protect their traditional knowledge, if not commercially gain from their culture,” says Bayani Loste, a partner at Fortun Narvasa & Salazar in Manila.

IPOPHL is also proposing to amend some provisions of the IP Code. The deinition of trademark will be amended to include any indication that can be graphically represented. “The new deinition is intended to accommodate the registration of non-traditional trademarks. It was not clear which speciic non-traditional marks will be covered,” Federis says. “Another amendment will be the elimination of the third-year Declaration of Actual Use and the requirement of home registration as a condition for the registration of applications claiming convention priority.”

Prosecution

Tier 1	ACCRALaw Baranda & Associates/Rouse Romulo SyCip Salazar Hernandez & Gatmaitan Quisumbing Torres
Tier 2	Bucoy Poblador & Associates Castillo Laman Tan Pantaleon & San Jose Cruz Marcelo & Tenefrancia Hechanova Bugay & Vilchez Sapalo Velez Bundang & Bulilan

 

In dealing with counterfeits, the Philippine authorities have carried out a series of raids. One of the largest recently is the seizure of P1 billion (US$23.2 million) worth of counterfeits, mostly footwear and apparel of high-end brands, from 17 warehouses in Parañaque City, says Baranda.

Contentious

Tier 1	ACCRALaw Cruz Marcelo & Tenefrancia Poblador Bautista & Reyes Quisumbing Torres SyCip Salazar Hernandez & Gatmaitan
Tier 2	Baranda & Associates/Rouse Bengzon Negre Untalan Castillo Laman Tan Pantaleon & San Jose Hechanova Bugay & Vilchez Sapalo Velez Bundang & Bulilan

 

Members of the National Committee of Intellectual Property Rights also seized counterfeit products worth P500 million (US$11.6 million) of clothes, batteries, perfumes and seasoning granules from eight warehouses in Manila, adds Baranda.

“There is still a proliferation of counterfeit products, especially in lea markets, but the number has been signiicantly reduced considering both the public and private sectors have been very active in enforcement,” Baranda says. “But to better protect trademarks, a well-known mark registry could be established instead of getting well-known mark declarations from administrative cases iled with IPOPHL, the courts and other administrative agencies.”

“I would also suggest to include a ‘landlord liability’ provision,” says Joseph Lyle K Sarmiento, a partner at Betita Cabilao Casuela Sarmiento in Manila. “Such provision is currently in the copyright law which imposes liability, potentially upon mall owners and lessors of commercial spaces, for proiting from counterfeiting activities of their tenants.”

The Supreme Court has upheld the validity of the provisions of Republic Act No. 10175, known as the Cybercrime Prevention Act of 2012, relating to cyber-squatting. “The law was enacted in 2012 but was suspended due to a number of petitions questioning the constitutionality of certain provisions,” Baranda says. “The court’s decision was promulgated in February 2014.”

In line with its goal to provide speedy, quality and effective legal remedies for trademarks, IPOPHL has issued Ofice Order No. 14-068, in order to achieve a more eficient resolution of inter partes cases in the Bureau of Legal Affairs, says Maria Theresa Gonzales, a partner at VeraLaw in Manila.

The first part of the order is to require only the original of the opposition or petition to be iled, rather than duplicate copies, says Federis.

For opposition ilings, IPOPHL clariied that the opposers may attach to the opposition, in lieu of the originals or certified copies, photocopies of afidavits of witnesses, documentary or object evidence, and other supporting documents mentioned in the notice of opposition together with English translation, subject to the presentation or submission of the originals and/or certified true copies under Sections 13 and 14 of the Rules, says Federis. IPOPHL also extended the deadline to cure defects in the notice of opposition and answer from ive to 10 days, with additional ive days’ extension, which can be requested twice, for a total of 20 days cure period.

---

Singapore

Lam Chung Nian, a partner at Wong & Partnership, tells Asia IP that amendments to the Trade Marks Rules and Trade Marks (International Registration) Rules came into operation on November 13, 2014. The amendments are intended to implement the launch of IPOS’ integrated e-services portal, IP2SG. Some of these changes include introduction of electronic iling for all forms, merger of related forms into a single form and the imposition of a fee for the third request for extensions of time and beyond, in matters not involving trademarks dispute resolution to encourage a more expeditious trademark prosecution process.

One of the main challenges facing trademark owners, Lam says, is the issue of trademark border enforcement. “For example, currently a trademark proprietor is unable to request Customs to interdict exports of suspected trademark-infringing goods – this is only done on Customs’ volition. This has been a longstanding issue which may be addressed by recent proposed amendments to the Trade Marks Act. In addition, the border enforcement rules require a lot of information to be provided by the right holders before Customs will detain or seize infringing goods – this is not anticipated to change.”

Therefore, he says changes as to the requirements imposed on right holders in relation to the trademark border enforcement measures could be considered. “Currently, the regime is seldom used as the trademark proprietor must have detailed information to identify when the infringing goods expected to be imported, time and place of expected importation, details of the vessel, etc. Very often, the proprietor will not have such information readily at hand. Reducing or reining the information required to be provided by the right holders may see a greater uptake of the border enforcement regime.

Prosecution

Tier 1	Allen & Gledhill Amica Law ATMD Bird & Bird Baker & McKenzie.Wong & Leow Drew & Napier
Tier 2	Donaldson & Burkinshaw Ella Cheong Marks & Clerk Rajah & Tann Rodyk & Davidson

 

“Singapore also does not have a general recordal system where the Customs will monitor shipments. Instead, the trademark owner must ile a written notice to Customs for detention of each suspected shipment. A general recordal system could be implemented such that right holders can record their intellectual property information with Customs and thereafter they can apply to have infringing products detained by Customs. Customs will notify rights holders of any suspect items, asking them to submit an application in order to detain those products. This would be an improvement over the current system where the trade mark owner has to obtain extensive information regarding a suspected shipment in advance to have a chance at detaining the shipment.”

Contentious

Tier 1	Allen & Gledhill Amica Law ATMD Bird & Bird Baker & McKenzie.Wong & Leow Drew & Napier
Tier 2	Donaldson & Burkinshaw Lee & Lee Rajah & Tann Ravindran Associates Rodyk & Davidson

 

Practitioners at Allen & Gledhill add that the High Court is likely to dispense further guidance on the thresholds of evidence that need to be satisied when an applicant seeks to invalidate a registered trademark. Besides, newly-appointed adjudicators in IPOS will also begin to issue decisions in 2015 and beyond.

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Thailand

The Thai Department of Intellectual Property has submitted two draft bills to reform the current Trademark Act B.E. 2534 – the draft Trademark Act Amendment Bill and the draft Trademark Act Amendment Bill to Facilitate Joining the Madrid Protocol. This move is in line with Thailand’s obligations under the ASEAN Intellectual Property Rights Action Plan 2011-2015, which states that all member states agree to join the Madrid Protocol by the end of 2015.

According to Say Sujintaya at Baker & McKenzie in Bangkok, the first bill deals with the introduction of sound and smell marks and the criteria for distinctiveness, and reduces the allotted time to respond to notices from the Registry, while the second bill introduces multi-class applications, a grace period for renewal, a central attack system, removes association requirements and separate assignment of rights, and deals with other issues speciic to the Madrid Protocol.

“The fundamental need for the bills was acknowledged by the Cabinet on November 12, 2014, which then subsequently instructed the Council of State to consolidate them into a single bill for resubmission and consideration,” Sujintaya says. “Once the cabinet ultimately approves the draft bills, they will then be submitted to the National Legislative Assembly of Thailand, which will consider the bill over three readings. If inally approved in the third reading, it will be presented for the King’s endorsement and subsequent publication in the Royal Thai Government Gazette. We are hopeful that the bills will be enacted into law during the course of 2015.”

The amendment to the Trademark Act also changes the law on reilling, according to Darani Vachanavuttivong at Tilleke & Gibbins in Bangkok.

“One of the key issues of concern to trademark owners is when companies refill a brand owner’s genuine containers with the company’s own products in order to mislead consumers in regard to the origin of the goods,” she says. “In order to address this serious counterfeiting issue, the proposed amendments to the Trademark Act include a new provision on refilling.”

The section in questions provides: “If a person uses any packaging or container bearing a trademark, certification mark, or collective mark of a third party which has been registered in Thailand with their goods or others’ goods, in order to cause the public to believe that the goods are those of the owner of the trademark or collective mark, or that the goods are under a license to use the certification mark, such person shall be liable to imprisonment for a term not exceeding four years, or a ine not exceeding B400,000 (US$11,900), or both.”

Another change is a procedural one and involves trademark registrars. “Over the past two years, trademark registrars in Thailand have refused petitions to amend filed goods that increase the number of goods originally filed for, even if the amended goods are within the scope of the broader goods,” says Vachanavuttivong. “As justification for this, trademark registrars are invoking Clause 14 of the current Ministerial Regulations, which requires applicants who want to make a significant amendment to their registered trademark or add more items to the list of goods in the same class to file a new application, as opposed to amending an existing registered trademark. The Ministerial Regulations haven’t changed, but rather, trademark registrars have altered their interpretation.”

Vachanavuttivong says that this change of practice has been costly for some registrars, and that it has affected the duration of the whole process, since trademark owners are having to wait more than a year for examination, only to be told that the goods are not allowed to be in the original application and that they must reile a new application altogether.

There have been several major trademark cases in Thailand recently. One involved the travel website TripAdvisor and its corresponding owl logo. The Trademark Board decided that the word TripAdvisor was the essential element of the mark and that it was descriptive of travel information services. The whole mark was therefore rejected for lack of distinctiveness. A suit was filed against the Thai IP Office on the grounds of erroneous instruction and decision. The IP court had a different opinion from the registrar and the board. It dissected the mark into various elements and considered the distinctiveness of each element separately, ruling that the overall mark was distinctive.

In another case, a leading US-based multinational involved in the design, manufacture and sale of computer networking equipment filed a case against a supplier of computer routers with the Economic and Technological Crime Suppression Division of the Royal Thai Police, claiming that the routers sold were counterfeit. However, the relevant authorities disagreed and took no action.

The company subsequently pursued the case directly with the Central Intellectual Property & International Trade Court. The defendant claimed that the routers in question were genuine but refurbished products, and that they were legitimately supplying these routers to a number of leading banks in Thailand for use with ATMs. Testimony was given from both parties and expert technicians were brought in to verify the authenticity of the routers. Eventually, the IP&IT Court held that all of the 639 impounded routers were counterfeit and imposed a fine on the defendant.

Dissatisfied with the IP&IT Court’s decision, the defendant appealed. In November 2014, the Supreme Court upheld the decision of the IP&IT Court, holding that the defendant had indeed imitated the plaintiff’s trademarks and the products were thus counterfeit. The impounded routers were then destroyed.

There are several major difficulties trademark owners have to overcome with the current system, says Sukhprem Sachdecha at Satyapon & Partners in Bangkok.

“The Thai Registrar and the Trademark Board are very reluctant to allow registration of a descriptive trademark on grounds of acquired distinctiveness, unless a huge amount of use in Thailand is submitted,” he says. “This is getting worse, as the registrar has stopped issuing instructions asking the applicant to submit evidence to prove acquired distinctiveness. In the past, when the registrar considered a mark not inherently distinctive, they would allow the applicant a chance to prove acquired distinctiveness. However, now the registrar will reject the mark straight away. The applicant does not have a second chance.”

Additionally, proving damages in a civil trademark infringement suit is also a big challenge. “As the trademark owner must prove actual damages, criminal infringement is usually the preferred choice,” he says. “The trademark owner is not entitled to any profits of the infringer. There is no possibility of punitive damages, and there are no statutory damages.”

Vachanavuttivong says that long pendency periods for trademark, design, and patent registrations have beset the DIP for numerous years, but that it will now hopefully take measures to reduce the time spent on registering trademarks, designs, and patents.

“Numerous office actions and granting of trademark and design applications have been issued to clear the backlog in the past five months. For the backlog related to the granting of patents, the new director general has recognized that it will take a relatively longer period of time to clear, due to the inherently complicated nature of patents and the low number of examiners – currently, there are only 42 examiners responsible for handling the more than 20,000 pending applications,” she says. “In order to cope with this problem, the director general has requested more than 80 patent examiners to join the team, which is awaiting government approval. Once the new examiners are added, the patent examination process will be expedited.”

For Sujintaya, one of the most pertinent difficulties relate to the rejection of marks by the Trademark Office. “Marks are regularly rejected for being non-distinctive or of direct reference to the character or quality of the products to which they are applied. This is despite the fact that these English language marks have very often been registered in many other jurisdictions, including those where English is the official language, such as Australia, New Zealand, the United Kingdom and the United States,” she says. “Overall, the situation seems to be deteriorating rapidly, and improvements need to be made to resolve this issue. It would aid greatly if the relevant agency was more international in their outlook and approach, and were more inclined to follow international precedents and recognized practices with regard to mark registrations.”

One final problem, according to Vachanavuttivong, lies in the limitation on an IP owner’s ability to pursue legal actions against landlords for contributory infringement, even though trademark law doesn’t explicitly have a provision for this offense.

“Notably, the Office of Public Prosecution believes that court actions against landlords can be pursued according to Section 86 of the Penal Code as contributory infringement,” she says. “However, IP owners have faced difficulties and require great effort in acquiring supporting evidence to initiate court cases against landlords. Collaboration among IP owners to jointly pursue an action against a landlord should be discussed.”

Regardless of the challenges, Vachanavuttivong says more needs to be done to support brand owners. “The single most important improvement to current Thai trademark law would be the introduction of a specific passing off or unfair competition law, independent of the Trademark Act and the general principles of civil law,” she says.

For Sachdecha, there should be more clarification as to the specific acts that amount to infringement, and the scope of infringement should be widened. “Pursuant to Section 44 of the Thai Trademark Act, the registrant shall have the exclusive right to use the trademark for goods for which it is registered. The Supreme Court has interpreted this section very narrowly,” he says. “Using a mark with goods or services similar to those for which the trademark is registered is not considered a trademark infringement. Moreover, using the trademark on a name card, price list, catalogues, business paper or in advertising is not considered an infringement under the Trademark Act.”

Prosecution

Tier 1	Baker & McKenzie Domnern Somgiat & Boonma Rouse Siam Premier International Tilleke & Gibbins
Tier 2	Ananda Intellectual Property Chavalit & Associates LawPlus S&I International Satyapon & Partners

 

This is why a provision similar to Section 27 of the Singapore Trade Marks Act or Section 10 of the UK Trade Marks Act may be very useful in avoiding infringement, he says, particularly when a trademark is used on business papers or in advertising or is used in goods or services similar to those for which the trademark is registered.

Contentious

Tier 1	Baker & McKenzie Domnern Somgiat & Boonma Rouse Siam Premier International Tilleke & Gibbins
Tier 2	Ananda Intellectual Property Chavalit & Associates International Legal Counsellors Thailand LawPlus Satyapon & Partners

Aside from specific legislative changes, Sujintaya says she thinks more systemic changes would help to facilitate a more streamlined approach with regard to the registering of marks. “The registration process should seek to be more efficient and the agency should attempt to extol an outlook that is more in line with global norms and practices,” she says. “Furthermore, the skills of registrars should be developed, particularly in regard to English language proficiency and their general exposure to international methodologies.”

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Vietnam

The Vietnam Ministry of Science and Technology and the International Trademark Association have launched “The Well-Known Trademark Project” as part of a Memorandum of Understanding signed between the two organizations in March 2015.

The project, according to INTA, aims to “build links for cooperation between government and the private sectors through research activities, collaborative programs and exchanges focusing on well-known trademarks.”

The project will be split into three parts: a research stage, a discussion stage and a training stage. Participants, who include IP organizations, law firms and trademark owners, will look at whether Vietnam’s current legislation is compatible and compliant with international commitments and best practices. They will also work together to improve the overall effectiveness of enforcement measures by coming up with possible amendments to the relevant legal provisions.

The issue of counterfeiting continues to be a widespread problem in Vietnam, posing a significant hurdle to lawyers and IP owners alike.

In 2014, there were 17,396 instances of production and business of counterfeit and infringing goods. This was an increase of 3,388 cases, or 24.2%, compared to 2013. The total value of the seized goods also increased by 12.1% to D3.9 billion (about US$180,530).

Counterfeit goods in Vietnam are manufactured both abroad and domestically, but most of them originate in China and are smuggled into the country, with false declarations stating that they come from countries such as Vietnam, Korea or Japan. The counterfeit goods seized in 2014 covered a wide range of consumer products, including motorcycle parts, washing powder, seasoning powder and spices, fertilizers, cosmetics, clothes and shoes.

One high-proile case was Videojet Technologies Inc v. Nam Trinh JSC. Videojet, a US-based manufacturer of ink and printing equipment for industrial purposes, sued Nam Trinh, an authorized distributor of Videojet-branded products in Vietnam. Nam Trinh’s contract with Videojet ended in 2012, but the company continued afterwards to present itself as an authorized distributor and continued to use Videojet’s registered trademarks without permission. Nam Trinh was also suspected of distributing counterfeit Videojet products.

Administrative raids were conducted at Nam Trinh’s ofices in Hanoi and Ho Chi Minh City, which led to the coniscation and destruction of fake products. Videojet sought damages and attorney’s fees from Nam Trinh. It also wanted a public apology. It was dificult to determine the actual damages that Videojet had suffered as a result of the counterfeiting, which included the loss of proits and the loss of business opportunity.

Because Videojet could not identify how many counterfeits Nam Trinh had sold, it used the value of the goods that had been seized plus the legal fees for the raid actions to come up with a igure of roughly US$10,000 in damages. This was one of the largest amounts of damages ever claimed by an IP owner in Vietnam.

At trial, the Ho Chi Minh City Court ruled in favour of Videojet and awarded the full amount of US$10,000, plus an additional US$10,000 in attorney’s fees.

Another case involved power supply company Santak, which has a well-known trademark and which has a large portion of the Asian market. In early 2015, lawyers cooperated with the IP Enforcement and Anti-Counterfeiting Department within the General Customs Office and the Haiphong Customs Office to investigate and detect a shipment of 162 products bearing the sign SANTAKUPS, imported from China by a Vietnamese company.

After the discovery, the lawyers requested the competent authorities to suspend the import procedures of the shipment. The Haiphong Customs Office decided to keep the shipment under custody according to administrative procedures. SANTAKUPS was written as one word, but the intent was to make a customer think that this was a combination of the words Santak and UPS. In this context, UPS is an abbreviation of uninterruptible power supply, so UPS did not create a distinction. Because of this, a comparison was only made with the word Santak which was identical to the protected trademark.

In another case, the Japanese company Panasonic brought an opposition action against an application for the trademark PASIONSONIC. Because many trademarks contain the suffix “sonic,” it was considered too common and so did not create distinctiveness. However, Panasonic argued that the prefix “Pa” was likely to contribute to confusion, and that because of the fame of Panasonic, the application for PASIONSONIC had been made in bad faith.

Prosecution

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Tier 2	D&N International Hogan Lovells InvestConsult Lê & Lê Rouse

 

The National Office of Intellectual Property of Vietnam agreed and issued a decision recognizing that Panasonic was a well-known trademark in the country and refusing to protect the trademark PASIONSONIC.

Contentious

Tier 1	Baker & McKenzie Hogan Lovells Pham & Associates Tilleke & Gibbins Vision & Associates
Tier 2	Banca Intellectual Property D&N International Gintasset Intellectual Property Lê & Lê Rouse

Sesto Vecchi, partner at Russin & Vecchi in Ho Chi Minh City, says that although there are signs to show that the government wants to deal with IP infringement, enforcement against infringers, especially small infringers with high mobility, is not very effective. “The lack of human resources of enforcement bodies makes the fight against piracy very difficult,” he says. “In many cases, enforcement needs to be conducted promptly. However, delay is common and is often due to time-consuming procedures and the caution of enforcement bodies. Those elements undermine efforts against piracy.”

Linh Thi Mai Nguyen, an attorney at Tilleke & Gibbins in Hanoi, says that there are two major challenges for trademark owners in Vietnam. “The first is to protect their trademark rights from infringement and bad-faith ilings,” she says. “And the other is to prove that their marks are suficiently well-known.”

Another change, according to Nguyen, concerns the concept of mala fides, or bad faith. “We would clearly provide that bad faith is grounds for opposition and cancellation, as well as an important element in infringement,” she says. “This may help to effectively prevent multi-filing and colourable imitation.”

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Bangladesh

The current trademark laws of Bangladesh are supplemented by the Trademark Rules 1963, says Al Amin Rahman, a partner at Fox Mandal Associates in Dhaka. “However, a new rule will be implemented soon as it is currently in progress in the cabinet for inal approval.”

The major change due to be implemented in the next 12 months is the amended timeline stipulated for concluding applications for opposition of trademark registration. “The time has now been proposed to be extended from 120 days to one year,” Rahman says. “The previous requirement for concluding all the issues related to the opposition notice for trademark registration was deemed to be rather unrealistic and inconvenient.”

The registration fee structure may also be reformed, Rahman adds. “The current slab-system based on the number of goods under each class may get changed to a fixed registration fee for the trademark.”

In January 2015, the Department of Patents, Designs and Trademarks (DPDT) signed the Service Level Agreement with the World Intellectual Property Organization in order to create a Technology and Information Support Centre.

“This is a substantial advancement in the area of laws related to trademarks,” Rahman says. “This centre shall be implemented to provide better service to business systems for ofices as well as national and regional institutions. It also enables people to participate more freely in the global intellectual property framework and protect their businesses from potential trademark infringement.”

Other changes include the replacement of Trade Mark Act, 1940 by Trade Mark Act, 2009 in which the registration of service marks and provisions of the Paris Convention are incorporated, says Md Solaiman Munshi, a lawyer at Munshi & Associates in Dhaka.

Despite the existing and prospective amendments, trademark owners still face insufficient awareness in businesses regarding the need to acknowledge and respect trademarks that are already in use. “The concept of the protection of trademarks under the intellectual property laws is at times ignored in our jurisdiction. Moreover, since there is a significant proportion of the population who do not have adequate knowledge about trademarks and how they can protect their trademarks from imitation and exploitation, there is a larger scope for breaches of trademark,” Rahman says. “However, in the recent years the laws related to trademarks and other IPRs have largely developed. The relevant authorities have streamlined the procedural steps required for obtaining trademarks and the detailed procedural guidelines are also available in the government website, so it is now easier for mark owners to get protection and the increased awareness along with the simplified procedures is making the situation much better.”

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Nevertheless, there is still room to improve. If lawyers could bring one change to the trademark laws, it would be to incorporate a multi-class filing system, Rahman says. “The implementation of this system would eliminate the need to file separate applications for different classes of goods and services. This would reduce the costs of the applicants, provide wider protection and also streamline the procedures.”

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India

Indian prime minister Narendra Modi, who was elected in May 2014, has said that India is “open for business,” but concerns remain, particularly in the US, about whether Modi will fulil his promises to resolve long-standing intellectual property concerns.

Modi met with President Barack Obama for a private dinner during Modi’s late September 2014 visit to Washington.

Prosecution

Tier 1	Anand and Anand K&S Partners Lall Lahiri & Salhotra Remfry & Sagar Singh & Singh Lall & Sethi
Tier 2	DePenning & DePenning DP Ahuja & Co Inttl Advocare Kan & Krishme RK Dewan & Co

According to a White House statement, the two leaders discussed Modi’s plans to extend basic inancial services to all India’s citizens, helping them to more fully participate in India’s growing economy. Obama and Modi reportedly committed to work through the Trade Policy Forum to promote a business environment attractive for companies to invest and manufacture in India and in the United States, and to establish an annual high-level intellectual property working group with appropriate decision-making and technical-level meetings as part of the Trade Policy Forum.

Contentious

Tier 1	Anand and Anand Lall Lahiri & Salhotra Remfry & Sagar Saikrishna & Associates Singh & Singh Lall & Sethi
Tier 2	Amarjit & Associates Inttl Advocare K&S Partners Ranjan Narula & Associates WS Kane & Co

“There are no reports detailing the content of discussions on intellectual property between Prime Minister Modi and President Obama,” says Ashwin Julka, managing partner at Remfry & Sagar in Gurgaon. “However, the primary concerns of the US and other Western countries are well-known. Mr Modi has expressed a strong commitment to improving the business environment and has made known that the government will come out with a comprehensive IP policy in the next few months. Whether this policy will fully address issues raised by Western nations is debatable, for Mr Modi is unlikely to be in a position to ignore domestic compulsions. Let us wait and watch.”

Raja Selvam, managing attorney at Selvam & Selvam in Chennai, tells Asia IP that Modi’s government is ready to cooperate with the Indo-US bilateral dialogue mechanisms under the US-India IP working group. “It is my opinion that India need not or will not do anything just to satisfy US or the Western countries, but [instead will act] for the beneit of businesses in India and across the globe. India will be also be coming out with a comprehensive IPR policy very soon as part of its Make in India policy,” Selvam says.

The Department of Industrial Policy and Promotion (DIPP) has set up a think tank to, inter alia, draft a National IPR policy, says Rahul Chaudhry, managing partner at Lall Lahiri & Salhotra in Gurgaon. “The think thank would identify the areas in IPR where research needs to be conducted and it would inform the government about the various developments in IPR cases which have an implication on the India’s IPR policies. The think tank would also suggest the best practices to be followed by the government whilst dealing with IPR,” he says.

“The formation of an IPR Think Tank to advise the government is very welcome and will ensure that policy decisions affecting IP are taken after proper research and discourse,” he says. “This is likely to result in tremendous implications for India’s intellectual property laws and their implementation.”

Lawyers in India expect an adjudication on the issue of Section 124 of the Trade Marks Act, 1999. “Section 124 of the Trade Marks Act envisages a situation where a mark of a party is challenged on the ground of invalidity in a suit for infringement of trademark,” says Sagar Chandra, managing partner of Sagar Chandra & Associates in New Delhi. “The bone of contention in this regard is whether permission from the court is required to file a rectification proceeding before the Intellectual Property Appellate Board or not. The issue is presently under challenge before a full bench of the Delhi High Court and the judgment has been reserved in this regard.”

India’s trademarks registry remains overburdened, lawyers report. “The Trademarks Registry in India is staff-starved and due to that reason, there is huge backlog of pending matters,” says Gunjan Paharia, managing partner at ZeusIP in New Delhi. “The Registry is taking steps by appointing new examiners, however, the number of new examiners appointed is still [inadequate] as compared to the backlog and, as such, the Trademarks Registry needs to increase its staff strength more.”

Paharia says the Trademarks Office has assured lawyers that the backlog will be cleared. “If that happens, then the time duration from filing until registration will be greatly reduced.”

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Pakistan

Trademark infringement is an immense problem. Between 1992 and 1995, it was estimated to cause a loss of 30% per capita sales and market share. Swift and timely enforcement of trademarks remains one of the biggest challenges, says Seema Shahid Mansoor, a senior associate at Vellani & Vellani in Karachi.

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Tier 2	Irfan & Irfan Kursheed Khan & Associates Remfry & Son Sheikh Brothers Surridge & Beecheno

Contentious

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Tier 2	Ali & Associates Irfan & Irfan Kursheed Khan & Associates Remfry & Son Surridge & Beecheno

 

“The court process is lengthy, expensive and ineffective. There has been slight improvement, but, still, much is to be desired,” says Salim Hasan, a partner at Meer & Hasan in Lahore. “We suggest appointing specialized judges, which will make enforcement predictable and expedient.”

Meanwhile, insufficient enforcement and deterrent penalties have generated numerous disputes wherein companies with similar names, or manufacturing the same types of products, have adopted similar or identical domain names, says Huma Ejaz Zaman, a partner at Mandviwalla & Zafar Advocates in Lahore.

Another issue is the huge registration backlog that has existed for years. “Delays in approving registrations of trademarks can take five to seven years,” says Bilal Shaukat, a partner at RIAALAW in Karachi. “In addition, when the Trade Mark Registry conducts a search report of a mark to ensure that the mark is not identical to any registered mark on record, it sends the client a report of any trademark that uses the same word as an objection. Using the same word in a mark as an already registered mark is bound to happen, and so often it means contesting every single registered mark with the same name, which could be avoided if a more careful selection of marks considered to be identical were selected.”

In view of the above, it would be desirable for a mandatory time limit to be adhered to, and a more careful selection of proposed identical marks, by the Trade Mark Registry, adds Shaukat.

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Sri Lanka

New procedures for trademark recordal with Customs are expected in 2015, says John Wilson, managing proprietor at John Wilson Partners in Colombo. “A relevant challenge faced by trademarks owners, especially those outside of Sri Lanka, is that there is a tendency for local agents or distributors to apply for registrations in their own names. This effectively destroys the ability of the trademark owner to change agent/distributor since the registration can often be used by the agent or distributor to prevent a new distributor or agent from importing.”

The time taken for an assignment of ownership to be recorded is another issue. It is presently taking two or more years for an assignment of ownership to be recorded and under the provisions of Section 123 (5) of the Intellectual Property Act. An assignment should be recorded to have effect against third parties, adds Wilson.

Other challenges remain to be the continued use by third parties of others’ registered domain names and the continued low of counterfeits into Sri Lanka, says JM Swaminathan, senior partner at Julius & Creasy in Colombo.

The users of many of the infringing marks in Sri Lanka do not apply for trademark registration, and the marks themselves are typically used by small business establishments, so the probability of the genuine trademark owners encountering them is low, says Wilson.

Dissanayake Karunaratna, director of IP services at Nithya Partners in Colombo, adds that even enforcement officers are often unaware of the presence of infringing marks. Prosecution-wise, a speedy examination procedure with payment of an additional fee should be considered, because clients nearly always encounter delays in getting their trademarks registered, says Karunaratna.

Prosecution

Tier 1	FJ & G De Saram John Wilson Partners Julius & Creasy Neelakandan & Neelakandan Varners
Tier 2	DL & F De Saram Nithi Murugesu & Associates Nithya Partners Shaam & Associates Sudath Perera Associates

 

“It is presently taking eight years or more for a trademark to be registered from the date of application. NIPO has taken steps to give priority to the most recently-filed applications, so the owners of trademark applications who filed many years ago have been further disadvantaged,” Wilson says. “If one thing could be changed, I would introduce a provision which makes it mandatory for NIPO to complete a mark examination within two years.”

Contentious

Tier 1	FJ & G De Saram John Wilson Partners Julius & Creasy Neelakandan & Neelakandan Sudath Perera Associates
Tier 2	DL & F De Saram Nithi Murugesu & Associates Nithya Partners Shaam & Associates Varners

 

But for that, the number of employees at the Intellectual Property Office will have to be increased, says Swaminathan.

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New Zealand

The New Zealand Trade Marks Act 2002, accompanied by the Trade Marks Regulations 2003, governs the administration of rights to trademarks in New Zealand.

Prosecution

Tier 1	AJ Park Baldwins Intellectual Property Henry Hughes Hudson Gavin Martin James & Wells
Tier 2	Bell Gully Buddle Findlay Kensington Swan Minter Ellison Rudd Watts Simpson Grierson

Amendments to the Trade Mark Regulations 2003 made it mandatory from December 10, 2012, for information and documents to be filed electronically through the case management system of Intellectual Property Office of New Zealand (IPONZ). Information or documents means any evidence, application, authority, request, form, certificate, statement, notice, or any other type of information or document that is (a) referred to in the Trade Marks Act 2002 or the regulations; and (b) relates to any trademark application or registration, or proceedings.

Contentious

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Tier 2	Bell Gully Chapman Tripp Hudson Gavin Martin Kensington Swan Simpson Grierson

New Zealand joined the Madrid Protocol on December 10, 2012. Trademark applicants can designate New Zealand in their international trademark applications, and New Zealand businesses are able to take advantage of the worldwide trademark system through IPONZ to protect their brands internationally.

Sue Ironside, a partner at Baldwins IP in Auckland, says one issue that tends to be onerous for owners of certification trademarks in New Zealand is that the regulations that need to be submitted when filing an application need to be considerably detailed. “It would helpful to certification trademark owners if the regulations did not need to be so detailed,” she says.

New Zealand trademark law tends to follow UK trademark law more closely than those of Australia.

 

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Papua New Guinea

The Trade Marks Act (Ch.385), the oldest IP legislation administered in the country – was derived from the Australian Trade Marks Act of 1955.

The Trade Marks Act came into full implementation in 1980 and has been in existence since. The trademark office was established in late 1970s under the Ministry of Justice and, upon independence, the trademark registrations under the Australian regime were transferred to the PNG Trade Mark Register. All applications which were not on the Australian Register prior to independence were registered after the implementation of the act.

The act has been recently amended and is currently under review to make it fully TRIPs-compliant. Other issues taken into consideration under the amendments and review are geographical indications, collective marks and well-known marks. The current duration for a trademark registration is 10 years, which is renewable. The application fee to register a trademark or series of marks for goods or services in a prescribed class is K250 (US$94). For each additional class the prescribed fee is K200 (US$75).

The Intellectual Property Office of Papua New Guinea is in the process of establishing an electronic registry. When complete, the electronic registry will allow not only electronic iling, but also trademark and patent searching, said Dan Ward, a partner at Rockwell Olivier in Sydney.