ASEAN and Madrid: Six Down, Four to Go

23-05-2017

Ed Conlon

The ASEAN region has embarked on a ten-year IP plan, with accession to the Madrid Protocol one of the core aims. Ed Conlon analyzes progress so far.

Many experts have said ASEAN has fallen short of its potential to be a unifying force in Southeast Asia.  

However, trademark specialists might disagree.

That’s because the ten-member Association of Southeast Asian Nations (ASEAN) region, home to more than 620 million people, has embarked on a ten-year strategic IP plan that involves close collaboration and a rotating presidency. These are heady times for IP owners in this vibrant and diverse region.

Launched last year, the IP Strategic Action Plan 2016–2025 has a number of major goals, including strengthening the ASEAN’s IP offices, building IP infrastructure, and establishing regional IP platforms.

The plan, which is overseen by the ASEAN Working Group on IP Cooperation, also seeks to expand the region’s IP system, and promote asset creation and commercialization.

The working group comprises the IP offices of the ASEAN member states—Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand, and Vietnam. In February 2017, INTA addressed the group’s 52nd Meeting, in Vientiane, Laos.

Regional Initiatives

Isabelle Tan, Director, Registry of Trade Marks, Intellectual Property Office of Singapore, says that even before the IP plan was launched, a special ASEAN Trade Mark Task Force was set up to oversee and coordinate the completion of trademark-related initiatives in the region.

One of these was the ASEAN TMView, developed in 2013. Ms. Tan explains that it enables companies to rely on a single online tool to conduct prior trademark searches across ASEAN Member States.

“With the ASEAN TMView, anyone can freely access information on nearly 3.6 million pending or registered trademarks throughout the ASEAN bloc.

“Such regional trademark information is important to companies, as it can significantly impact their brand and trademark filing strategies,” she says.

The tool is currently hosted on the ASEAN IP Portal, which is an online platform created to provide public access to IP-related data and information in the region, Ms. Tan explains. The Portal was revamped in late 2016 and is currently hosted and managed by Singapore.

A second feature is the ASEAN TMClass, a free multilingual online tool for the classification of goods and services.

As Ms. Tan notes, the database contains terms accepted by all ASEAN IP offices for identifying goods and services during trademark registration, and users can also obtain translations of the terms into their working languages. 

Examination is another area that has witnessed changes, with the working group developing the ASEAN Common Guidelines on the Substantive Examination of Trade Marks.

This was to achieve quality, consistency and transparency in common areas of trademark examination in the ASEAN Member States’ IP offices, says Ms. Tan.

“The Common Guidelines are still being discussed with plans for translation into the various ASEAN languages, including Bahasa Indonesia, Thai, Khmer, Lao, and Vietnamese. 

“There are also ongoing discussions on the development of an ASEAN Common Filing Form for the purposes of trademark application and registration within ASEAN,” she adds.

Going to Madrid

A central aim under the ten-year action plan is for all ASEAN countries to join the Madrid Protocol, which is administered by the World Intellectual Property Organization (WIPO).

Brunei, Cambodia, Laos, Philippines, Singapore, and Vietnam are all members, leaving Indonesia, Malaysia, Myanmar, and Thailand still to join. At the time of writing, there are 98 Madrid Protocol member states.

Chew Phye Keat, President of the ASEAN Intellectual Property Association, a private sector organization, says: “One by one they are coming through—Malaysia should be this year, others are on board, and the others are coming soon,” but he questions whether the infrastructure of some of the IP offices is ready.

Commenting on the strategic plan, Mr. Phye Keat says that, while there is a serious intent to improve the area’s trademark systems, “things are never moving quickly enough.” But, he adds, “we are getting there slowly but surely in a consensus-based way.”

Ms. Tan says that differences in IP regimes and domestic considerations across the Member States inevitably bring challenges when joining international treaties such as the Madrid Protocol.

“As one of the earlier adopters of the Madrid Protocol and seeing the advantages it brought to local as well as foreign rights owners, Singapore will continue to share with fellow ASEAN Member States our experiences on Madrid Protocol accession,” she says.

One of the challenges is language proficiency, according to Ms. Tan.

She says that while companies file their trademarks in a language that works best for their business strategy, there are benefits from using English as a common filing language, especially in terms of filing internationally.

“As ASEAN Member States become more proficient in the English language, we will be able to reap the benefits from using English as a common filing language and become more efficient.”

A second difficulty stems from the region’s differing levels of development, she adds, noting that Member States are at different stages of economic and legal development, and have different priorities with regard to building IP expertise, IT infrastructure, and examination know-how.

“With varying levels of capacity, accession to international treaties such as the Madrid Protocol will naturally progress at different speeds in different countries.”

Mr. Chew, whose organisation meets the ASEAN Working Group on IP Cooperation once a year to discuss IP strategies in the region, says that in future there could be a pan-ASEAN system for businesses to use instead of Madrid.

“We are assessing whether you need to go to Geneva—why can’t a Malaysian applicant go to the Malaysian Intellectual Property Office (MyIPO), file in other ASEAN countries and MyIPO will send the application there?

“There is the Madrid process but why can’t we revisit the idea of having an ASEAN trademark system?” he asks.

The idea of a regional trademark system was previously rejected, he explains. As early as the late 1990s, the working group considered the issue but faced practical difficulties “with differences in language, jurisdiction, jurisprudence, and basic law across the member states.”

But now, with Madrid as a “backbone,” the idea seems more plausible, he says.

“If Madrid works across the region then we could just piggyback onto that, so it should not take so long.”

Other expected ASEAN trademark developments include the switch from manual to e-filing, which will increase efficiency, Ms. Tan explains.

“In tandem, ASEAN Member States are also working towards shorter pendency and to reduce the average turnaround time (from filing to registration) for the registration of trademarks without objections or opposition.

“These developments will make trademark filing easier and faster in the fastest growing economic market in the world,” she says.

Despite what some experts say about ASEAN’s lack of strategic vision, in the IP arena at least, those fears appear to be unfounded. 

INTA’s Asia-Pacific Office 

INTA’s newest office, opened in March 2016, supports the nearly 18 percent of the Association’s members who live and work throughout the Asia-Pacific region. Established as a branch office in Singapore, the Asia-Pacific office is active in education, policy advocacy, and member services. Seth Hays, INTA’s Asia-Pacific Chief Representative, currently heads those efforts, and Queenie Zhao, Associate, Asia-Pacific Office, joined the office on January 2, 2017.

Seth has been with INTA since March 2011. His first role was External Relations Manager–Asia-Pacific, and he was subsequently INTA’s China Chief Representative. Today, he heads up and works out of the Asia-Pacific office. “It’s all about the members,” Seth says. A good day for him involves as much member interaction as possible, whether assisting INTA’s policy committees to advocate INTA’s positions to governments in the Asia-Pacific region, supporting the Education Department in organizing events, or pitching INTA’s services to current non-members. 

Ms. Zhao is tasked with fostering and increasing membership in the Asia-Pacific Region (AP) for the Association. Her daily work spans from assisting with implementing and conceptualizing programs in Asia-Pacific, in the form of roundtables, seminars, and leadership delegations, to increasing INTA’s corporate membership in the region and providing strategic advice on membership recruitment. 

ASEAN Impact Study

At the end of December 2016, INTA’s Impact Studies Committee (ISC) commissioned a study to determine the impact of trademark-intensive industries on the economies of Indonesia, Malaysia, Philippines, Singapore, and Thailand. The study focuses on trademarks’ contribution to gross domestic product (GDP); external trade; tax revenue; foreign direct investment and job creation, and on their benefit to employment and wages. ISC’s project lead, Ai Ming Lee (Rodyk IP, Singapore) and team are working closely with Seth Hays on the study, which is expected to issue in August, 2017.

Madrid Protocol by Numbers

Membership of the Madrid Protocol now stands at 98. ASEAN Member State Brunei was the last country to join the 125-year-old treaty, in 2016, the accord entering into force in January this year.

Those 98 members cover 114 territories, all of which can be protected by filing just one international trademark application. Users pick one language and select one set of fees (in a single currency).

In 2016, the number of Madrid applications (52,550) was up 7.2 percent year-on-year, according to WIPO. U.S. applicants accounted for the most (7,741), with Germany (7,551), France (4,132), China (3,200), and Switzerland (3,074) taking the next four country spots. Of the ASEAN countries, Singapore ranked highest with 879.

L’Oréal was the biggest filer, with 150 applications, while Glaxo Group (141), BMW (117), and Lidl (112) were close behind. Novartis, the most prolific applicant in 2015, filed 100 fewer applications last year (94) and now holds fifth spot.

Applicants were most likely to specify computers and electronics (9.4 percent), ahead of business (7.6 percent), and technological services (6 percent).

China, with 22,314 designations, was the most popular destination country, followed by the European Union (21,526) and United States (20,979). 


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ASEAN, INTA, Madrid Protocol

WIPR