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Dealing with diversity in Asia

Peter Ollier looks at the challenge of coordinating INTA’s work in an area as diverse as the Asia-Pacific region.

The first challenge facing any global organization that wants to work in the Asia-Pacific region is one of definition: which countries are in the Asia-Pacific region and which are not?

The region usually includes East Asia (Greater China, Korea and Japan), Oceania (Australasia and the Pacific Islands) and Southeast Asia (the countries in between). But opinion is divided on how far west the region should go—what about Russia, most of whose land mass is in Asia, the former Soviet republics of Central Asia, and the Indian subcontinent? INTA takes a pragmatic view, with the countries included depending on the need and context. India is sometimes included in the Middle East, sometimes in Asia-Pacific, while Canada makes an appearance in the Asia-Pacific amicus committee.

Once you have defined the region, the next challenge for brand owners to deal with the dauntingly diverse legal regimes—from common law to civil and from advanced to counterfeiting hotspot. “It’s definitely fluid—it’s a dynamic region,” says Seth Hays, INTA’s Asia-Pacific external relations manager.

Using the members

The size and diversity of INTA’s membership is crucial to its ability to keep up with the region. They are particularly important in bringing important cases to the attention of the International Amicus Committee. While that Committee has traditionally focused a lot of its attention on North American and European decisions, it has submitted comments on Asia-Pacific cases in the past, including in IKEA Inter Systems Inc. vs. Beijing Cinet Co. Ltd—a case in which China’s Supreme People’s Court ruled that registering a domain name can constitute unfair competition and trademark infringement. “We are eager to get more cases in China,” says Hays.

Laws in the region are frequently updated, which keeps the Asia-Pacific subcommittee of the Legislation and Regulation Committee busy. This was seen most recently in Australia, where INTA has commented on the Federal Government’s 102-page Intellectual Property Laws Amendment (Raising the Bar) Bill 201. Important proposed changes to Australia’s Trade Marks Act 1995 include expediting opposition proceedings, eliminating unnecessary cases and tightening border control.

Elsewhere in the region brand owners are closely watching China’s long-running attempt to amend its Trademark Act. The latest draft for comment appeared last year and INTA was able to use the expertise of the Famous and Well-Known Marks, Anticounterfeiting and Nontraditional Trademark Committees and its Shanghai branch office to submit bilingual comments to the government.

Working with trademark offices

Also contributing to that discussion was Li Yongbo, a partner of Unitalen and chair of INTA’s recently founded China Trademark Office Practice Subcommittee. The China Trademark Office (CTMO) is the world’s busiest. Over 1 million trademark applications were filed in 2010 and this is likely to increase again in 2011. The country had 4,885 million registered trademarks by the end of March.

The deal with this rise the CTMO and the Trademark Review and Adjudication Board (TRAB) recruited 400 more examiners in 2008. Of those, 300 went to the CTMO, which enabled the office to slash trademark pendency from an average of 30 to 36 months to between 12 and 18 months today.

Although practitioners have praised the increase in speed, given the number of applications being processed, controversial decisions do occur. This is where the subcommittee can establish dialogue with the CTMO and obtain more information, especially when the explanation given is inadequate. “Our job is to connect with them, to talk about examination decisions, oppositions and disputes,” says Li.

Educating trademark examiners is an important part of INTA’s work throughout the region. Peter Dernbach has been leading efforts to encourage examiners to be clearer about the evidence needed to successfully register a nontraditional trademark in the region (see box). Roundtables are also regularly organized with government officials to raise awareness of brand owners’ concerns and encourage countries to amend and improve their trademark laws.

Counterfeiting—the next stage

Another topic likely to be discussed at any roundtable in the region is counterfeiting. The problem is not restricted to China, but is also affecting countries in Southeast Asia, such as Thailand, Vietnam, Malaysia, Indonesia and the Philippines. Candice Li, INTA’s Anticounterfeiting external relations manager, helped to organize a successful conference in Hong Kong this year, which looked at what options brand owners have to try and combat this problem in the region.

At the same time as dealing with real world sellers of counterfeits, Li now has to focus on online sellers. In March this year the USTR singled out China’s Baidu and Taobao as online IP infringers. While Baidu has caused most offense for linking to pirated music files, Taobao was singled out for not doing enough to address the sale of fake goods. Going after these sites is not easy, says Li: “A large part of the problem is how you gather the evidence to show that counterfeits are on the site.”

Making theory into reality

Asia-Pacific is a challenging region for brand owners wanting to register non-traditional trademarks. “In many countries the law allows it, but in practice very few nontraditional marks are registered,” says Peter Dernbach, a partner of Winkler Partners in Taipei and chair of the Asia-Pacific Subcommittee of INTA’s Nontraditional Marks Committee.

For example, Japan has a highly advanced trademark system, but examiners at the JPO remain reluctant to grant three-dimensional trademarks. The IP High Court has repeatedly overturned decisions by the JPO not to grant trademarks. The success of Coca-Cola in 2008 in obtaining a registration for its bottle shape has been followed by two more court successes within the past six months: Japanese drink maker Yakult and French perfume maker Jean Paul Gaultier have both obtained registrations.

Dernbach is helping to answer three key questions about nontraditional marks: how brand owners can obtain evidence, what kinds of evidence are needed to prove distinctiveness and how you can conduct a search to check the availability of a mark. INTA has also organized roundtables in Seoul, Taipei and Bangkok that have looked at this issue. As part of a training session in Malaysia foreign examiners were brought in to pass on their experience of dealing with these applications.

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