Legislators in some of Asia’s biggest and most important markets have been busy over the past few years, updating their country’s trademark laws to make them friendlier to domestic businesses and to inward investors.
Speakers at today’s regional update will explain what changes they have made, and how they affect IP owners and their advisers.
China’s Trademark Law revisions one year on
In China, the long-awaited revision of the Trademark Law of the People’s Republic of China and its implementing regulations came into effect almost exactly one year ago, updating the last series of revisions made 13 years earlier. The changes are designed to bring the law closer in line with new market realities, says panelist Scott Palmer of Sheppard Mullin Richter & Hampton. “A lot has happened, much of which is positive”, Palmer says. “But there are still considerable challenges for trademark owners and practitioners, and some issues that will hopefully be addressed in legislative and judicial developments in the coming year.” He will be outlining some of the most significant changes in the country’s trademark regime, including the introduction of specialist IP courts, new opposition procedures and options for attacking trademark piracy.
He will also be explaining how the revisions affect rogue trademark agents—and the ability of the authorities to deal with them—and what IP owners can do if they discover another company has infringed their trademark by registering it as part of their business name.
Important changes in Japan
While the amendments to China’s trademark law have been wide-ranging, the planned changes to Japan’s trademark rules have been rather narrower. But the changes, which came into force last month, amount to an important modernization of the law. While IP owners have been able to protect a range of sound, color and motion marks in a growing number of jurisdictions around the world, they were unable to do so in Japan until these changes took effect on April 1. Now these non-traditional marks, along with holograms and position marks, will be afforded protection under the law, giving their owners the same rights as owners of three-dimensional marks, which have been registrable in Japan since 1997. Despite that concession to owners of non-traditional marks almost 20 years ago, the country’s path to acceptance of three-dimensional marks has not always been smooth. Coca-Cola registered the shape of its iconic bottle in 2008, for example, only to have its distinctiveness questioned by the Japan Patent Office and disputed in court. The IP High Court subsequently backed Coca-Cola, holding that the bottle had acquired distinctiveness.
The latest relaxation of the rules relating to what constitutes a trademark is due, in large part, to a demand from domestic companies as much as foreign ones for greater protection for non-traditional marks. Eight years ago the country’s Institute of Intellectual Property surveyed 500 Japanese companies. Of these, 60% said they used non-traditional trademarks, and 82% wanted to be able to protect them as trademark rights.
The Japan Patent Office clearly took note. Earlier this year its officials said that one of the reasons that the Office had advocated a change in the law was the increasing popularity of the marks, noting that Japanese companies have been filing for and receiving non-traditional marks in other jurisdictions.
INTA’s leadership delegation met with Commissioner of the JPO, Mr. Hitoshi Ito in March. The Commissioner shared with INTA the JPO’s recent and up-coming priorities, such as the inclusion of certain non-traditional marks for protection and changes to the treatment of GIs in Japan. Commissioner Ito also shared the JPOs international priorities, elaborating on the Office’s responsibilities within the TM5, for example heading the project on bad-faith registration.
Hitachi’s Nagomi Tsuchida will explain what these new changes mean for brand owners and how they can maximize their chances of securing protection for their non-traditional marks.
Harmonization in Korea
Alex H Cho of Kim & Chang will outline planned changes to Korea’s trademark law—the latest in a series of recent amendments that he says are designed to harmonize local practice with international trends and make the country better able to accommodate global businesses. Among the key proposed amendments to the Korean Trademark Act, which are pending review by the Korean National Assembly, is one that would see IP owners able to accept consent letters. “This is likely to be of great interest to brand owners in and outside of Korea”, he says, “considering that without the acceptance of a consent letter, brand owners would have to carry out the burdensome process of assignment or re-assignment of trademarks in cases where the owners of senior and junior marks agree to the co-existence of their marks.”
The session will be moderated by George Chan of Simmons & Simmons, who is based in Beijing.
RM20 Regional Update: China, Japan, and Korea—Revisions to Trademark Laws takes place today, 11:45 am to 1:00 pm.
