Southeast Asia & Hong Kong: Trade Mark Practice Updates

The intellectual property landscape in Southeast Asia and Hong Kong is continuously evolving, requiring businesses operating in the region to stay informed of the latest developments in trade mark practice. This article provides an essential overview of key updates and changes affecting trade mark registration and protection across jurisdictions such as Cambodia, Indonesia, Myanmar, Philippines, Thailand, Vietnam, and Hong Kong.

Cambodia

• To record an exclusive distributorship in Cambodia, the local distributor must submit a Power of Attorney (POA) authorizing a local agent to act on their behalf. The POA must be signed by the local company's board members or shareholders and notarized or legalized in Cambodia. A POA from the trade mark owner is not required because the owner has already authorized the local distributor through a separate notarized letter. This POA requirement does not apply to other trade mark filings, and the POA can be signed by any authorized company signatory.
• The International Registration Office of the Department of Intellectual Property Rights (DIPR) now requires a Recordal of Legal Agent Change when there is an existing agent on record. The new agent must take over responsibility for all relevant filings, but this does not affect national registrations. Clients are strongly advised to proceed with the Recordal of Legal Agent Change to maintain accurate records and enable prompt action.

Indonesia

• The TMO has transitioned to a fully online filing system. Submission of physical documents such as POA or evidence of fame is no longer required, as scanned copies of these documents are now sufficient. Additionally, office actions, notices of rejection and trade mark registration certificates are all issued digitally rather than in physical form.
• Complementing the online filing aspect, the TMO has also implemented a live chat service on their website. This allows applicants from around the world to submit questions directly to TMO staff through an online interface, without needing to physically visit the office.

Myanmar

• New Myanmar Trade Mark law in effect, with monthly publications starting from 1 May 2024. As of July 2024, there has been a total of over 1,800 published trade mark applications, more than double last month.
• Applications for Geographical Indication may be available in second half of 2024.

Philippines

• The proposed amendment to Trade Mark Regulations of 2023 will require applicants to pay issuance and publication fees for renewal applications at the time of filing. This change is intended to expedite the renewal process, as marks can proceed directly to renewal once the application is approved, without additional office actions. We expect the amendment to take effect in July or August 2024.
• The Madrid e-filing system will be unveiled at the inaugural IPOPHL Trade Mark Convention on 24 July 2024. This new digital platform will facilitate direct communication between applicants and the Office of Origin, as well as enable online payment of the requisite fees. The launch of the Madrid e-filing system is an exciting development that will streamline the trade mark registration process for businesses operating internationally.
• The proposed amendments to the Rules Implementing the Madrid Protocol aim to clarify the Declaration of Actual Use (DAU) requirements for International Registrations (IRs). Key points include: for subsequent designations - allowing a single DAU form to cover overlapping 3rd-year and renewal DAU filing periods, and requiring 3rd and 5th-year DAUs even before renewals; for transformations - maintaining DAU coverage when IRs transform to national registrations, and prescribing DAU filing deadlines relative to the transformation date, regardless of whether a DAU was previously filed for the IR.

Thailand

• Use of AI by TMO for trade mark searches for images. This has been in use for a few years now, and Rouse has also been using it. There are some drawbacks to the AI system, which TMO is aware of and TMO is looking into upgrading their AI software.
• Delays in Madrid examinations, with TMO issuing provisional refusals within the 18 month deadline, resulting in incomplete or erroneous refusals. If brand owners have an urgent need for registrations or enforcement, national filing, which is faster, is a recommended option.
• TMO frequently changes its guidelines on the specification of goods and services. Examiners use updated guidelines which may have been applicable months or years ago, but may not be applicable now. Therefore there has been a high rejection rates.

Vietnam

• The Intellectual Property Office of Vietnam (IP Vietnam) has recently launched a new e-filing system, but it's currently limited to patent applications only. We are closely following any updates from IP Vietnam and await further announcements regarding the availability of e-filing services for trade mark applications.
• While trade mark applications in Vietnam must still be submitted on paper, IP Vietnam has implemented a new practice to improve document delivery. Applicants can now receive electronic copies of official documents, in addition to traditional postal delivery. Applicants can also collect physical copies in person. This new electronic option aims to enhance IP Vietnam's efficiency and responsiveness in communicating with applicants, while the paper-based application process remains.

Hong Kong

• The Intellectual Property Department of Hong Kong (HK IPD) has started issuing electronic certificates of registration for trade marks, rather than paper certificates. Applicants will have the option to opt out of the new electronic certificate scheme and continue receiving paper certificates if they prefer. This change applies to trade mark applications that are published on or after March 15, 2024. This move to electronic certificates has been highly anticipated.
• We are pleased that we can now provide electronic certificates of registration for China, Hong Kong, Indonesia, Saudi Arabia and the United Arab Emirates. We eagerly await the same development in some of the remaining jurisdictions we cover, namely Thailand, Philippines and Vietnam.  

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.