Cambodia and Thailand have made modifications to the rules and regulations related to their trade mark application filing procedures as part of the ongoing south-east Asia region-wide trend towards electronic IP processes.
Cambodia
From May 25 2017, applications for registration of marks in Cambodia can be filed using a new online filing (e-filing) platform.
Access to the online filing platform is available by making a written request to the Department of Intellectual Property Rights (DIPR) for a username and password. Access is only available for applicants with permanent residence or commercial establishments in Cambodia and trade mark agents residing and practising in Cambodia. Foreign applicants without residences or commercial establishments in Cambodia cannot file trade mark applications in their own name under the paper-based system, and thus access to the e-filing platform is also not granted to such entities, but to their legal agents instead.
At this stage the e-filing platform can only be used to file new trade mark applications, allowing users to upload application forms and related documents directly onto the system. However, where original documents are required, such as a notarised power of attorney or priority documents, it is not possible to upload scanned copies of the relevant documents, and the originals are still required to be filed in hard copy within two months of the (online) filing date. All post-application-filing correspondence with the DIPR, such as office action responses, are also still required to be submitted in hard copy, in person. Communications issued by the DIPR, such as notices of provisional refusal or of acceptance and original registration certificates, will remain paper-based. Application fee payments for applications filed online are made online via electronic payment services of three cooperating banks: ACLEDA, Canadia and Foreign Trade Bank.
Importantly, the DIPR's new online trade mark services also include a new searchable database of prior trade mark registrations and applications accessible to the public. Prior to the platform's launch in May, searches for prior identical or similar marks in Cambodia were undertaken exclusively by the DIPR, and the only channel to conduct such searches was to submit a search request to the DIPR directly. Now, the public, including professional trade mark agents, can conduct searches in the online database themselves, reducing turnaround time and increasing efficiencies.
Thailand
Online filing has been available in relation to trade mark applications in Thailand since 2005, and the Department of Intellectual Property (DIP) is constantly making improvements to its online filing platform. At present, trade mark applications, as well as communications with the DIP, such as office action responses, can be filed through the online platform, while relevant office fee payments must be made within 24 hours and submission of hard copies of documents as filed online must be effected within 15 days of the online document filing date.
On June 23 the DIP, in its Notification on Trademark, Service Mark, Certification Mark and Collective Mark Application and Other Official Forms, announced the replacement of all trade mark official forms with new versions designed to be conducive to the electronic filing process. Although the short notice of this change has created some challenges for trade mark practitioners, the new forms, effective from July 3 2017 in relation to paper filings, are in a format that allows faster information extraction by the DIP, bypassing the time-consuming outsourced data-entering function, resulting in reduced prosecution time. The same new forms will also be applicable in relation to online filings soon, allowing a more efficient interface.
Increasing IP efficiency
The changes that Cambodia and Thailand have implemented are aligned with the general IP field trend of moving towards electronic processes for IP in the countries of south-east Asia. WIPO's involvement in Cambodia's new online trade mark platform signifies international acknowledgement and positive cooperation in the region's system modernisation efforts. Finally, the further enhancements in the Thai electronic filing processes are a positive step in increasing IP efficiencies.
Daniel Greif |
Dhanasun Chumchuay |
Spruson & FergusonNos. 496-502 Amarin Plaza BuildingUnit Nos. 1806-1807, 18th Floor, Ploenchit Road, Lumpini Sub-District, Pathumwan District, Bangkok 10330 ThailandTel: +66 2 305 6893mail.asia@spruson.comwww.spruson.com
