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A Giant Step Towards Global Harmonization in the ASEAN Trademark System

Intellectual Property Rights (IPRs), in particular trademarks have taken on increased importance in the current Internet-driven, knowledge based society, due in part to the growth of the Internet as an information/technological medium. Association of Southeast Asian Nations (ASEAN) notes that IP and IPRs creation, commercialization, and protection have assumed an increasingly profound and unprecedented influence on the social, economic and technological progress of interdependent economies around the world[1]. Whilst the importance of copyright and patents (the other limbs of IPRs) cannot be discounted, trademarks arguably have a wider audience as people are increasingly ‘brand harmonized’ through advertisements and other marketing instruments including the Internet.

Brands such as Coca Cola and Microsoft are common palace to the normal consumer.

The trademark, which also serves as the name of the brand, is extremely valuable as the reputation gained through use of the name, over decades are contained in it. A study undertaken by Interbrand in 2003 ranked; Coca Cola (valued at US$70 billion), Microsoft (valued at US$65 billion) and IBM (valued at US$52 billion) to be the world’s top three brand names. The question may be whether, such ‘values’ are justified but bearing in mind the cost spent by these companies in research, development, advertising and marketing are astronomical (figures show that Coca-Cola and Microsoft, spent US$2.774billion[2] and US$11.455billion[3] in 2007 on sales and marketing expenses), logically they should be granted the right to use and protect their name against others who sought to capitalize on their reputation.

Such is the importance of the value of IPRs, it is a topic now always found in most intra-trade agreement discussions between policy makers (Singapore-US Free Trade Agreement[4]). The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 1994, whilst not the first global international agreement (Paris Convention and Berne Convention came before it) on the protection and enforcement of IPRs, it was and still is, one of the most comprehensive international agreements relating to IPRs today. TRIPS functions as a basic standard for countries to follow and countries are free to accord higher thresholds of protection and enforcement if they deem necessary which poses a huge problem for brand owners who are faced with different levels of protection with different national versions of trademark legislation in different countries with different type of legal systems. The problem is further compounded as trademark law is inherently territory bound which means, brand owners need to continue to register their marks in different countries to have protection in those territories.

The formation of the World Intellectual Property Organization (WIPO) and the subsequent conception of the Madrid Agreement and Madrid Protocol have provided options for international registration. Brand owners now have the option to apply for registration in as many countries as they wish (as long as the country is a signatory of the respective agreement; Singapore is a signatory of the Madrid Protocol) however, the International Registration System under the Madrid Agreement or Protocol, only serves as a one-stop-shop for registration application. The actual registration and examination process is undertaken by the respective national registry. Clearly this does not fully solve the problem faced by brand owners as countries tend to have different laws, furthermore, not all countries are signatories of Madrid. The European Union (EU), have managed to adopt more enhanced, but scaled down (in terms of countries) version of the International system. The Community Trade Mark System (CTM) allows the single registration of a trademark, if successful, has effect in the entire EU territory. The EU further provides the brand owner with both national and EU-level enforcement avenues. This reduces time as well as cost, allowing brand owners to manage their trademarks effectively instead of requiring a huge portfolio for the same trademark.

Following the success of the CTM, the ASEAN have also considered the potential of such a system within the ASEAN region. In 1995, the ASEAN Framework Agreement on Intellectual Property was signed to foster closer co-operation in IP and common Patent and Trademark system within ASEAN. More recently, the ASEAN and EU declared in Nuremberg on 17 March 2007; then signed a joint declaration in Singapore, 22 November 2007, agreeing to enhance cooperation on IPRs in the fields of legislation, enforcement and capacity building to build and strengthen awareness on intellectual property.

The intention and direction that ASEAN aims to take is to adopt and replicate the success of the CTM system within the ASEAN region. While there are similarities between the situation faced by the EU during the interception and implementation of the CTM system and that currently facing the ASEAN, ASEAN arguably faces a tougher time of the two. When the EU was considering the CTM system, the Member States of the EU had their own individual trademark protection systems and the infrastructure in terms of trained personnel were mostly in place. The situation in ASEAN is wholly different. While all the members making up ASEAN, were signatories of WIPO and most were signatories of TRIPS, not all the countries have in place, a trademark registration/enforcement system. The time frame for an application to progress to registration also highly varies. It ranges from 3-6 months (Cambodia) to 24 months (Philippines and Vietnam). In addition, the types of marks accepted also differ; Singapore, Thailand and Indonesia accept colors to be able to function as trademarks whereas Brunei, Cambodia, Laos, Malaysia and Vietnam only accept colors if it is used in combination with other distinctive element(s). Similarly, the cost and structure also show a wide range. More interestingly, Myanmar has yet to implement trademark legislation and does not have an official trademark database. Publication is undertaken after the examination stages so that interested parties may voice their objection(s) in opposition. In countries such as Singapore, publication is made in the official trademark journals but in Myanmar, the publication is done usually in the ‘New Light of Myanmar’, a popular local newspaper and even so, it is not compulsory, merely being a common practice in the industry.

The current position of the ASEAN is that Member Countries have pledged to work together to help accelerate the pace the scope of IP asset creation, commercialization and protection; to improve the regional framework of policies and institutions relation to IP and IPRs, including the development and harmonization of enabling IPR registration systems; to promote IP cooperation and dialogues within the region as well with the region’s Dialogue Partners and organizations; to strengthen IP-related human and institutional capabilities in the region, including fostering greater public awareness of issues and implications, relating to IP and IPRs[5].

The task facing the ASEAN is therefore apparent; firstly, implementation of critical infrastructure, corresponding legislation; secondly, recruitment/training of highly trained professionals to carry out the registration/enforcement needs of IPRs. It will be an improbable task to ensure that ALL Member Countries will have the same system given the huge differences currently. However, it is possible to adopt a system akin to that of the EU, whereby the CTM exists separately from national regimes but it also likely means that members also have to be willing to subject themselves to possible devolution of their sovereign powers and accept the ASEAN court’s decision on trademark matters.

Regardless, ASEAN have taken the first few steps towards the ASEAN Trade Mark System (ATMS) by the act of conceptualization. Currently, the Experts Group on Trademark has finalized the ASEAN Filing Form for Trademarks and the Notes of the completion of the application, as well as the consolidation of the ASEAN list of ethnic goods and services. With most countries in ASEAN already utilizing the NICE International Classification of Goods, this represents a further step towards realizing the ATMS however given the current state of affairs in ASEAN, much has still to be done but it can be said, if the ASEAN is successful in implementing a working ATMS, it may finally pave the way for a total harmonization of world wide trademark regimes. Certainly, with WIPO and the International Trademark Association (INTA) already in place, the background infrastructure is already present; what remains is AN AGREEMENT on a worldwide scale.

[1] ASEAN IPR Action Plan 2004-2010, para 1A

[2] http://finapps.forbes.com/finapps/jsp/finance/compinfo/secfilings/SECFilingsFullFiling.jsp?cn=COCA+COLA+CO&tkr=KO&secn=0001193125-08-041768, at page 49

[3] http://finapps.forbes.com/finapps/jsp/finance/compinfo/secfilings/SECFilingsFullFiling.jsp?cn=MICROSOFT+CORP&tkr=MSFT&secn=0001193125-07-170817, at page 29

[4] Also see footnote 1 and; Rhonda Steele, Trademark Issues in Regional Trade Agreements/Free Trade Agreements

[5] Excerpt taken from ASEAN website, Intellectual Property