Around Asia in three weeks

As part of the Association’s 2013 Spring Policy Tour, INTA representatives spent three weeks in the Asia-Pacific region meeting with government officials and rights holders from different countries to discuss the challenges that brand owners face. The wide range of topics covered highlights the diversity of the region and the need for INTA’s work in promoting rigorous trademark policies in the area.

China was one of the major stops on the tour, where the promise of the largest market in the world is tempered by continuing IP-related challenges that brands face there. The China delegation included Alan C. Drewsen, INTA Executive Director, Susan Crane from Wyndham Worldwide, John Motley from Columbia Sportswear, David Butler from GlaxoSmithKline, and Charles Hoskin from Procter & Gamble, as well as INTA staff members.

The IP environment in China has markedly improved in the past few years, and the government has been working to continue strengthening laws to help protect brand owners’ rights. To this end, INTA’s delegation met with State Administration for Industry and Commerce (SAIC), which oversees the China Trademark Office and the Trademark Review and Adjudication Board (TRAB), and the China Trademark Association, to discuss the most recent draft revision to the Trademark Act.

One important issue for INTA is the proposed procedural changes to trademark oppositions. Under the current law, either party can appeal the initial Trademark Office decision to the TRAB, and after the TRAB can appeal to the court of first instance. The draft revision would eliminate the opposing party’s right to appeal an unfavorable decision. Instead, the only option will be to start cancellation proceedings.

While some lawyers say the proposed change benefits rights holders by eliminating drawn-out proceedings, Seth Hays, External Relations Manager for INTA, explained that the concern is that rights holders are also often the opposing party, and eliminating appeal options may make it difficult to protect their brands.

“I was speaking with a representative from one foreign brand who told me that as a whole, she has been the opposing party more often than the applicant,” Hays said. “Overall, the proposed change is about the efficiency of the system and INTA appreciates that concern, but what it would like to see is improved examination so that the Trademark Office makes the right decision at the first instance.”

In addition to the SAIC, the delegation also met with the IP Tribunal of the Supreme People’s Court, the Ministry of Commerce (MOFCOM) and China Customs to discuss issues such as free trade agreements. It also presented INTA’s model FTA, and compared it with FTAs currently in force around the world.

Any discussion of IP rights in China must also take into account China’s position as the manufacturing center of the world and the role Customs plays to stop the shipment of counterfeit goods. INTA hosted a roundtable in Shanghai with rights holders and Customs officials from around the country discussing the challenges brand owners face.

Hays described the session as a very helpful high-level discussion: “Generally members enjoy working with China Customs; it is very professional and the officials are often some of the best in the world to work with.”

In spite of IP-related horror stories coming out of China, Hays says that INTA members see improvement there.

“Judging from members’ reactions, they feel that there is improvement in China and the message from the top is positive,” Hays noted. “We appreciate the message from the central government about trademark issues; it’s largely the practical and enforcement aspects that cause frustration for members. In part, it’s because it’s such a big country. China is also the world’s manufacturing center, and it just has a lot of unique practical challenges.”

Though discussions about the region are often dominated by China, Southeast Asian countries are also growing markets where brand owners see considerable opportunities and frustrations. INTA’s delegation to Indonesia, headed by President Toe Su Aung (BATMark, UK), spent two days meeting with government officials and discussing the development of IP protection. The delegation met with judges from the Supreme Court and the Commercial Court to discuss recent IP-related judgments and rights holders’ perspectives on the legal system in the country.

The INTA delegation also visited with the ASEAN Secretariat in Jakarta to discuss the work of the ASEAN Working Group on IP Coordination (AWGIPC). Central to this is the ASEAN Economic Community (AEC) plan, which seeks to form an EU-like economic body by 2015. The plan includes IP-related targets, including the accession of all 15 ASEAN member states to the Madrid Protocol by December 2015, as well as targets for states to join the Hague Agreement.

INTA’s delegation also met with officials from the trademark division of the IP Office. As part of the AEC goal to join the Protocol by 2015, the trademark office is working to improve prosecution times and to digitize records in order to comply with Madrid requirements. The delegation offered INTA’s assistance to this project, such as its Model Trademark Examination Guidelines.

The delegation also visited Thailand where it along with the Department of Intellectual Property (DIP) co-hosted a roundtable on fighting counterfeits. The delegation, with Hays and External Relations Manager Candice Li along with a number of INTA member representatives, met with Pajchima Tanasanti the Director General of the DIP, and Sirasak Tiyapan the Director General of the Department of IP and International Trade Litigation of the Office of the Attorney General. Other participants included representatives from Customs, the Economic and Crime Division, as well as the US Embassy.

This topic is particularly pertinent in Thailand; a number of lawyers say that counterfeit goods are an important issue here. Not only do counterfeits enter the country for the local market, but infringing goods from China often ship through countries such as Thailand in order to obfuscate their origin.

The delegation also stopped in Myanmar, where the opening market presents great opportunities for businesses. In Yangon, Ms. Aung delivered a speech at the ASEAN IP Association Annual General Meeting about the need for increased harmonization and cooperation on IP matters in the ASEAN community.

The delegation also met with the Ministry of Science and Technology (MOST) to discuss the drafting of the country’s first trademark law. The first draft of the law has been circulated, and passage of the law is expected by the end of the year.

INTA has been following the law’s progress and has submitted comments, explained Hays. “INTA has a generally good working relationship in Myanmar with MOST, and it seems like it took the comments to heart.”

Though the ASEAN Economic Community goals of cooperation and harmonization are welcomed, practical challenges remain. The ASEAN community encompasses such a diverse region, explained Hays. “There is this normative goal of coming together and we have seen progress; for example the Philippines recently joined Madrid and Indonesia is planning to do so.”

Still, Hays says that more cooperation on IP protection is needed especially once the economic barriers between the countries are lowered, as increased trade will result in more goods crossing borders. Similarly, awareness of the importance of trademarks can still be improved, though he said that INTA has been in discussions with the Indonesia Chamber of Commerce to promote the importance of trademarks for Indonesian companies.

These challenges and the continuing work to be done throughout Asia have guaranteed that INTA will be increasing its presence in the region.