The Association of Southeast Asian Nations, commonly known as ASEAN, is home to more than 630 million people of varying ethnicities, religions and social classes. It is also one of the largest regional economies. In 2017, the gross domestic product (GDP) of the 10 member states amounted to more than US$2.8 trillion, and this figure is anticipated to rapidly increase within the next decade. Yet the respective governments of the member states have often been viewed in the past as not being serious enough about developing firm intellectual property frameworks and systems within their countries and across the region. This has raised many eyebrows especially when one considers that IP-intensive industries in the region generate approximately 27% to 60% of exports, comprise 17% to 50% of the collective GDP, and employ 13% to 29% of the total ASEAN workforce.
A new outlook
The relaxed approach to IP shown by ASEAN is, however, quickly being replaced by a brisker pace, as key players in the region, from governments to industry leaders and investors, rapidly appreciate IP's enormous economic potential. ASEAN, which was founded in 1967, has put in motion a series of initiatives and programmes to accelerate the region's ability to tap into this vast potential. In fact, it was way back in 1995 that Brunei Darussalam, Indonesia, Malaysia, the Philippines, Singapore, Thailand and Vietnam signed the ASEAN Framework Agreement on Intellectual Property Cooperation. Recognising that IP rights were an integral part of trade and investment in member states, this agreement aimed to enhance closer cooperation in all things related to IP in ASEAN and sought, among others things, to enhance and strengthen IP legislation, enforcement, administration and awareness through coordinated and effective activities involving the member states.
To realise the aims and ambitions of the ASEAN Framework Agreement on Intellectual Property Cooperation, the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC) was established in 1996. Comprising the respective IP offices of Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Myanmar, the Philippines, Singapore, Thailand, and Vietnam, the AWGIPC has hit the ground running. It is fully focused on propelling ASEAN to the forefront of IP on the global stage, and transforming the IP landscape in South East Asia in order to meet the aims set out in the ASEAN Economic Community Blueprint 2025 – to have an innovative, dynamic and competitive ASEAN community that is fully integrated with the global economy.
With the support of several subcommittees such as the Task Force on Trademarks and the ASEAN Task Force on Patent Examination Cooperation, the AWGIPC has been actively working to boost three key areas that form the matrix that surrounds the value of IP – creation, commercialisation and protection. Progress has been encouragingly steady, with several key advances made in the quest to establish valuable IP assets in the region. To this end, the AWGIPC has created the ASEAN IP Rights Action Plan 2016-2025, a roadmap comprising four strategic goals focused on creating economic wealth and transforming the region by leveraging IP. ASEAN has defined these goals as:
- Strategic Goal 1: A more robust ASEAN IP system is developed by strengthening IP offices and building IP infrastructure in the region;
- Strategic Goal 2: Regional IP platforms and infrastructure are developed to contribute to enhancing the ASEAN Economic Community;
- Strategic Goal 3: An expanded and inclusive ASEAN IP ecosystem is developed; and
- Strategic Goal 4: Regional mechanisms to promote asset creation and commercialisation, particularly geographical indications and traditional knowledge are enhanced.
IP harmonisation in the region and the Pan-ASEAN Trademark System
Establishing a common ASEAN system for trade marks was first proposed in the 1990s. Unfortunately at the time, the challenges, in the view of the member states, were both costly and not feasible. Diversity in languages, levels of development, policies, legislation and judicial fundamentals were among the many obstacles cited, and the idea of a harmonised system was shelved. Yet now, after the turn of the new millennium, a common trade mark platform has made its way back into the conversation on IP in ASEAN. The AWGIPC deserves credit for reviving the conversation. Through its efforts to harmonise the trade mark system across the member states, the AWGIPC has proposed a unified trade mark system in South East Asia, a Pan-ASEAN Trademark System that allows for the application and registration of trade marks through one platform that is connected to the IP offices in the respective ASEAN countries. ASEAN's quest to regionalise IP should come as no surprise to most observers, especially when one considers ASEAN's previous and ongoing initiatives to foster an integrated IP network in the region and to align IP rights among its member states.
One of the biggest achievements in terms of IP harmonisation in the region has been the implementation of the Common Guidelines for the Substantive Examination of Trademarks in the ASEAN member states. These Common Guidelines were created based on, among other factors, various IP legislation, policies, regulations, and judicial decisions, within the 10 member states, as well as global best practices. It is however important to note that the Common Guidelines are not meant to supplant the existing IP guidelines within the respective member states. Instead, they serve to complement current practices being applied by the various ASEAN IP offices.
Under the Pan-ASEAN Trademark System, the applicant must be a national of an ASEAN member state. The applicant need only make a single application in order to secure a trade mark registration covering all the ASEAN nations
In 2013, ASEAN took another giant step towards harmonising IP in the region. The ASEAN IP Portal was launched in conjunction with World IP Day 2013. This one-stop online IP centre serves as an information and resource treasure trove for all things related to IP in ASEAN. It provides a nexus linking ASEAN IP offices, applicants, and other stakeholders. It forms an information highway, making notices, regulations and procedures, data, internet links, and a multitude of IP-related information available. In particular, two features make the portal stand out. ASPEC, or ASEAN Patent Examination Co-operation is a programme developed to provide search and examination results that are highly accurate and high-quality, at faster-than-average times. It is accessible in nine of the 10 member states, and enables the various ASEAN IP offices to share search and examination results among themselves, thus improving efficiency by reducing duplication of work and results. Ultimately, it benefits applicants who are able to access more precise and refined results.
While ASPEC essentially functions as a work-sharing programme for patent reports, ASEAN TMview provides users with the means to search for trade mark applications and registrations with greater depth and precision. Essentially designed for users to conduct prior trade mark searches across ASEAN member states, this powerful tool gives a detailed breakdown of trade mark-related data in the participating national IP offices. By having access to information on more than 3.5 million pending or registered trade marks, brands and companies are able to strategise their filings, through a bird's-eye view of the IP terrain in ASEAN while being able to have a microscopic look at each individual country's trade mark registrations. Similarly, ASEAN Designview provides access to online data on the registration of industrial designs.
To address the plethora of working languages in the region, the ASEAN IP offices, with the support of their European Union counterpart, developed TMClass. This online programme offers a multilingual platform for users to access a database of terms for the classification of goods and services commonly accepted by the participating IP offices, and provides translation functions for those terms. There is no doubt that the ASEAN IP Portal will continue to provide more programmes and functions that harmonise and streamline the various IP registration processes, both through common application forms and ease-of-access to IP data throughout the participating member states.
Under the Pan-ASEAN Trademark System, the applicant must be a national of an ASEAN member state. The applicant need only make a single application in order to secure a trade mark registration covering all the ASEAN nations. This would entail a common application platform in all participating member states, a platform designed to ensure ease-of-use. There is also a proposal for a four-step trade mark registration process that is streamlined and simplified, from the application stage up to the point where registration is granted and issued. Admittedly, there still remains a good deal of work to be carried out in order to bring to life a unified system. While there are a host of other factors to take into consideration, including fees, administration and governance of the Pan-ASEAN Trademark System, it is clear that such a system would be a monumental boost for the development of IP in the region.
Current situation, challenges and the future
Admittedly, the Pan-ASEAN Trademark System is labelled as being "in the near future" and we will only be able to appreciate the system fully once it comes into fruition. Great strides have been made towards realising a common trade mark registration and application system. However, there still remain challenges. Although available for some time, some of the IP offices have been slow to adopt and implement the ASEAN Common Form for Trade Marks in their respective jurisdictions. IP policies, legislation, enforcement and practices still remain very varied among the different countries. While ASEAN collectively has launched and implemented a host of initiatives in order to bridge the differences, member states have been slow to keep up with the pace possibly due to a cautious wait and see approach. One of the aims of the ASEAN IP Rights Action Plan 2016-2025 is to gently, yet firmly, nudge all member states into the fold of the Madrid Protocol. At this point, we are waiting for Malaysia and Myanmar to accede. While the two countries have displayed positive signs about eventually joining the group, their delay is reflective of the challenge of moving ahead with a common regional system. A seemingly bigger challenge lies in trade mark dispute matters, and how they are to be resolved. The Pan-ASEAN Trademark System may provide a common platform for IP registration across the region, but it is not meant to take on a judicial role, hence the challenge of ensuring that court rulings are consistent across the countries, not subject to different legal treatment in each different member state. With only two countries left to join the Madrid Protocol, and Malaysia anticipated to do so within the next one year, the question remains whether there is a need for a Pan-ASEAN Trademark System.
ASEAN, since its inception in 1967, has come a long way in fostering a spirit of community among its countries which are diverse and distinctive in almost every aspect, from ethnicity and culture to socio-economic development and politics. The ASEAN Framework Agreement and subsequently the AWGIPC have accelerated the development of IP infrastructure in the region. Assisted by a growing public awareness, the ASEAN IP Rights Action Plans, the ASEAN IP Portal, and common practice guidelines, it is evident that all efforts on a regional level are being geared towards establishing a common trade mark application and registration system among the 10 ASEAN nations. The impact of having a common system for trade, investment, revenue, and human and national development, is just too great to be merely kept in view or put on the backburner. Judging by the sentiment among the various IP stakeholders in the region, it is now a question of when, not maybe.
||Karen Abraham heads the intellectual property and technology and communications departments of Shearn Delamore & Co. Karen has broad experience in contentious IP work, IP litigation, enforcement and licensing programmes, anti-counterfeiting, exploitation of IP rights, competition law and broadcasting. She frequently appears in the High Court, Court of Appeal and the Federal Court representing local and global companies. She negotiates and advises on the exploitation and enforcement of IP rights for leading multinational companies around the world. Karen has also designed and crafted anti-piracy and anti-counterfeiting programmes as well as brand management schemes for a range of businesses from small to leading local and global companies. She further provides legal counsel on IP rights relating to matters such as food and drugs, domain name disputes, licensing, agency franchising, merchandising, commercial sales contracts, sponsorship, advertising and entertainment, and media broadcasting laws. Karen is also experienced in all aspects of information technology (IT), e-commerce, and telecommunications as well as cyberlaw.
|Ameet Kaur Purba|
||Ameet Kaur Purba provides legal advice on trade mark prosecution, trade mark clearance searches, trade mark registrability and trade mark opposition and rectification proceedings as well as protection and maintenance of copyright, industrial designs and geographical indications. She advises clients on matters related to advertising, consumer protection, copyright, domain names, gaming, e-commerce, entertainment, merchandising, optical disks, anti-counterfeiting, parallel importation, medical device regulations, information technology (IT) and telecommunications issues as well as regulatory approvals for food and drugs, and other regulatory laws. She also advises clients on IP-related agreements associated with commercial contracts, and licensing and franchising arrangements, as well as privacy concerns relating to the collection and use of personal data. Ameet conducts data protection audits for clients to ensure compliance with data protection laws with respect to the collection, storage and use of customers’ personal data. She also negotiates and advises on the exploitation and enforcement of IP rights, and manages IP due diligence work for leading multinational companies that have a worldwide presence.