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Trade mark applicants in Asia must consider variety of factors

Anna Mae Koo and Ann Xu of Vivien Chan & Co examine the different ways to file trade mark applications in Asia, filing requirements and the advantages and disadvantages of various filing methods

Madrid Protocol or national application?

International registration (IR) is at present available in many Asian countries, including China, Singapore, Japan, the Republic of Korea, Laos, Cambodia and Thailand. This gives brand owners the flexibility to file a single IR application in one of the member countries as the home country application and obtain protection for the mark in those Asian countries covered by the Madrid Protocol.

IR allows brand owners to save upfront costs. However, it is not suitable in countries with a unique system of standard terms and/or sub-classification. For example, in China, each class of goods and services is further divided into subclasses with a list of standard items of goods and services. For IR designating China, the translation of the specifications and the categorisation of specifications into subclasses lie with the China Trademark Office (CTMO), and there is a chance that the IR may not cover all the intended and essential subclasses as a result. However, IR may be preferable in China in certain circumstances. This will be discussed further below.

Hong Kong and Malaysia expected to join the Madrid Protocol soon

With Thailand and Indonesia recently joining the Madrid Protocol in 2017 and 2018 respectively, other Asian countries are expected to follow suit. Malaysia is in the process of amending the Trade Marks Act 1976 in order to accede to the Protocol, and Hong Kong is also expected to implement the Protocol in 2019.

In particular, for Hong Kong, it should be noted that even after the implementation of the Madrid Protocol, a Chinese national or corporation domiciled in Hong Kong cannot designate China in the IR, and vice versa. This is because Hong Kong is part of China and is not a stand-alone country.

Single class or multi-class applications?

Not all Asian countries allow multi-class applications. In countries where multi-class applications are allowed, such an arrangement often helps streamline the registration process. This is true for many Asian jurisdictions, for example, Hong Kong, Singapore, the Republic of Korea, Indonesia, the Philippines, Vietnam and Taiwan. However, there are exceptions.

For China and Thailand, even when multi-class applications are allowed, they are not recommended.

In China, single class applications are more advantageous

The main reason for not recommending multi-class applications in China is that a multi-class application can only be divided in the event of a partial refusal by the CTMO.

There is no voluntary divisional procedure in China, even in the event of deficiency or opposition against some but not all of the classes in the application. In the case of deficiency, under the present practice, the CTMO would only give the applicant one opportunity to amend the applied-for goods/services, and may refuse the application if the applicant fails to make amendments properly within the deadline. It is therefore risky to file multi-class trade mark applications, as applications with partially deficient goods/services may be rejected in their entirety despite containing acceptable specifications in other classes.

Furthermore, as the brand owner cannot divide the application voluntarily, it is impossible for the brand owner to only assign/abandon classes post registration.

In terms of costs, official fees payable for filing at the CTMO are charged per class and as such, there is no difference in the official fees between multiple single-class applications and a multi-class application in China. Maintaining a multi-class registration can even be more expensive at the renewal stage since, even if the brand owner is no longer using the mark in all classes, the renewal must be filed for all classes in the multi-class application.

Thailand: Multi-class applications recently allowed, but not recommended

Similarly, a major drawback to filing multi-class applications in Thailand is that it is not possible to divide a multi-class application after filing. This leads to significant delays in obtaining registration for the entire application even when the Thai Trademark Office only issues a notification relating to one or more classes covered by the multi-class application. Under the existing practice, the only available option to move the application forward is to delete the class(es) in question from the application.

Furthermore, the official fees for filing, registration, and renewal of trade marks with the Thai Trademark Office are based on the number of goods/services in each class. This means that the official fees will not be lower for a multiple-class application than a single-class application.

Standard terms and the subclass system

Many of the Asian countries, for example, China, Japan, the Republic of Korea, and Singapore, are parties to the Nice Agreement and adopt the Nice Classification. However, each Asian country may have its own unique standard terms and/or subclass system under the Nice Classification framework. We highlight a few countries with a unique system of classification below.

China: Standard terms and subclass system

Brand owners should be aware that under China's subclass system, some specifications are not as broad as they appear to be. For example, while clothing is a class heading covering everything in Class 25, the specification in fact only falls into the subclass 2501 in China. Other goods such as swimwear, shoes, hats and socks are considered dissimilar and therefore will not result in a higher chance of success at times of lodging oppositions and combating infringement. Therefore, if an applicant wishes to have a broader scope of protection, it is advisable to file a national application in China and include at least one specification from each subclass of the relevant class.

Furthermore, terms which are commonly used outside China may not be acceptable under local practice in China. An example of this is retail and wholesale services. These are generally accepted under Class 35 in other jurisdictions but are per se unacceptable in China. This is because the retailing and wholesaling of goods are considered to be covered by the specification for the good itself. As such, the closest alternative is sales promotion (for others) in Class 35. This is another reason why national applications are often more preferable in China.

However, if brand owners are more concerned with having an exact specification of goods and services rather than broad coverage, it may be preferable to file IR in China. This is because the CTMO will merely translate the specifications (even if non-standard terms) into Chinese and classify them in appropriate subclasses at its discretion. This route, from our experience, generally guarantees a higher chance of acceptance of non-standard items which would otherwise be rejected in national filing. A Madrid application will therefore allow brand owners to avoid a notice of correction in relation to specifications that are not accepted.

Japan and the Republic of Korea: The similar group code system

Both Japan and the Republic of Korea adopt the Nice Classification, but the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) have also worked towards compiling a List of Similar Group Codes to be used for trade mark examination in Japan and the Republic of Korea. Group codes are the codes assigned to goods and services that are presumed to be similar to each other. The Similar Group Code System crosses classes. Similar group codes may be found in different classes, for example, jewelry cases classified under Class 14 have the same group code, 20A01, as furniture classified under Class 20.

As examination of similarity of marks by the JPO and KIPO is usually based on the List of Similar Group Codes, brand owners can consider consulting the Similar Group Code System prior to filing to avoid citations.

Vietnam: Modification of specification with reference to the Nice Classification

Although Vietnam is not a member of the Nice Agreement, it has long used the international classification of goods and services as specified in the Nice Agreement for the purposes of trade mark registrations.

A practical tip to brand owners is that when filing an application with unconventional specifications about which examiners at the National Office of Intellectual Property of Vietnam (NOIP) may raise queries, corresponding items specified in the Nice Classification may be included in brackets after the items in question. The NOIP will tend to allow registration of such specifications in that way.

Taiwan: Calculation of the number of goods and services

The US specification of goods and services is generally long and specific. This may mean an additional number of goods and services for the purposes of calculating official fees in Taiwan. This is because in Taiwan, the number of goods will be calculated on the basis of their functions, purposes and shapes.

Brand owners should be aware that official fees may differ from what was expected. As the amount of goods included in an application is subject to finalisation by the Taiwan IP Office after the application is filed, it affects the finalised official fees which are calculated based on the number of goods and services. It is therefore prudent to have the specification reviewed and revised by a local agent prior to filing in order to avoid surprises.

Importance of registering marks in the local language

While some Asian countries are English-based, most use both English and their local language, and some countries such as China, Japan, Indonesia, Thailand, Vietnam and Cambodia only use their local language. Registration of a trade mark in English will not necessarily protect the mark against the use of a similar mark written in local scripts, such as Chinese, Thai, Lao, Burmese or Khmer, as the marks may not be considered similar.

A brand owner entering Asia should consider translating its word marks from the language of its home country to the local language and registering the translated trade marks. It is preferable to engage consultants in the local market when it comes to deciding whether to register a literal translation, a phonetic translation (transliteration), or a combination of a literal and phonetic translation of the mark. Different versions of translations may also be registered for defensive purposes in countries in which trade mark squatting is a serious problem.

We highlight below, regions where registration of marks in the local language is especially important.

The Greater China region – vital to register trade marks in Chinese characters

Many foreign brand owners, especially those that are well known internationally may assume that their brand will be recognisable, distinctive, and protected by one trade mark filing of the English mark. However, with the majority of consumers in the greater China region, foreign trade marks may not be used, and the delay in filing Chinese marks has repeatedly proved to be an expensive mistake.

This is especially true in China where the first-to-file system is combined with a persistent trade mark squatting problem. Brand owners who have suffered misfortunes in China include Michael Jordan who was caught up in the legal battle over Qiaodan, the Chinese transliteration of the word Jordan, and Hermès which was prevented from registering its brand name in Chinese 爱玛仕 (Ài mǎ shì) because of an existing Chinese mark 爱马仕 (also pronounced as Ài mǎ shì).

Brand owners should also note that simplified Chinese is used in mainland China while traditional Chinese is mainly used in Hong Kong, Taiwan and Macau, which are all separate trade mark jurisdictions. Filings should therefore cater for how the mark will be used in reality in the region. Furthermore, for Hong Kong, a maximum of four similar marks can be filed as a series in a single application. The traditional and simplified Chinese versions can therefore be filed as series of trade marks at no extra official fees.

Japan: Double-decker mark

The Japanese language uses four different characters, namely Hiragana, Katakana, traditional characters and the Latin alphabet.

Similar to the concept of a series of trade marks in Hong Kong, a double-decker mark, i.e. an English or traditional character word mark with the Japanese transliteration above specifying the pronunciation of the non-Japanese character mark below, can be registered in Japan. Use of either the upper version or lower version alone is deemed proper use of the registered mark.

Takeaways and other important points to note

Many of the Asian countries adopt the first-to-file system. It is therefore important to register your mark and in the case of a word mark, the translation and/or transliteration of the mark in the local language of the filing country as well.

Even when the international registration route is chosen, it is advisable to engage local attorneys to conduct a pre-filing search. Advice on the classification of the goods/services should be sought prior to filing to ensure that your rights can be adequately protected by the trade mark registration.

Brand owners should also look into whether or not to file nationally rather than under the Madrid Protocol more carefully. This is because national filings may result in greater cost-effectiveness.

Anna Mae Koo
Anna Mae Koo is a partner at Vivien Chan & Co and leads all areas of the intellectual property practice, including non-contentious, contentious and transactional IP law in the Hong Kong and China office. She regularly advises on all areas of intellectual property including licensing, franchising, IP due diligence, prosecution and unfair competition law in China and Hong Kong.

Ms Koo is a Techstars mentor, and is actively involved with the Litigation Committee of the International Bar Association and the Anti-Counterfeiting Committee of the International Trademark Association.

She is consistently named as an intellectual property Rising Star by various major legal publications. She was a Prince Philip scholar at the University of Cambridge, where she graduated with an MA in law.

Ann Xu
Ann Xu is a trade mark attorney at Vivien Chan & Co with more than 20 years’ experience in intellectual property cases in mainland China. She has trade mark, copyright and designs expertise. She regularly advises on prosecution and portfolio management.

Ann is consistently nominated as an International Who’s Who Trademark Lawyer.

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