INTA’s Asia-Pacific Global Advisory Council has noted a continued focus on the importance of intellectual property (IP) protection as one of the key components in the development of the region’s national economies, particularly in the case of developing countries. A common theme throughout the region is a drive to streamline the trademark registration process through refinement of systems and processes to assist trademark applicants in various jurisdictions.
New Resources for Brand Owners
In August 2023, the Association of Southeast Asian Nations (ASEAN), in collaboration with the World Intellectual Property Organization (WIPO), launched the ASEAN IP Register, a comprehensive one-stop information portal which integrates up-to-date IP data from all 10 ASEAN member states (Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, the Philippines, Singapore, Thailand, and Vietnam). The portal is maintained by WIPO and provides ASEAN businesses and innovators with access to world-class IP services. This was a long-awaited tool and will play an important part in encouraging and enhancing awareness and protection of IP rights in the ASEAN region.
Another important tool, the ASEAN IP Portal, is a single, streamlined portal for stakeholders in the IP community, providing access to the following:
- Complete sets of ASEAN IP data, including statistics on IP filings and case studies;
- IP utilization case studies, which demonstrate the effective use of IP for driving business growth and expansion;
- An ASEAN case law database of selected IP-related cases, summarized in English; and
- A search engine for conducting patent, trademark, and design searches.
It also provides a gateway to various ASEAN countries’ IP marketplaces, where brand owners can sell or license their IP, where potential buyers can search for IP rights to buy or license, and where potential stakeholders can connect with inventors in order to collaborate with them on innovation projects.
Recent Cases of Note
Recent trademark cases in Australia and New Zealand demonstrate the limitations a brand owner may face if it adopts and registers a somewhat descriptive trademark, while Australia’s highest court seems to expand the freedom with which one brand owner may be able to use a rival’s brand in advertising—shifting the boundaries of what constitutes use of a trademark “as a trademark.”
Australia’s High Court decided that the use of the phrase “instant Botox alternative” on product packaging was not use of the BOTOX trademark “as a trademark” and was therefore not an infringement of Allergan’s registrations of BOTOX. The word “Botox” was not being used as a trademark because it was not being used to indicate trade origin. That function was performed by the other trademarks used on the product, and use of the word “alternative” assisted in making it clear that the product being sold was something different from the BOTOX brand.
The problem with “weak” trademarks has been highlighted in cases in Australia and New Zealand. In Australia, the use of THE NORTH AGENCY did not infringe a registration for a stylized representation of THE AGENCY, with a significant factor being the common use and meaning of the word AGENCY.
A similar situation occurred in relation to a fight between the owners of rival retail brands BED BATH & BEYOND (BBB) and BED BATH ’N TABLE (BBT) in the High Court of New Zealand. In declining a request to declare the BBT trademark registration invalid, the court noted that any confusion arising from use of the BBT mark may be “the price to be paid for BBB’s choice of those words.” In a warning to those who adopt descriptive or “weak” trademarks, the court went on to note that, “The use in a trademark of descriptive/non-distinctive words lessens the risk of … fatal confusion …because … some confusion must be expected and tolerated as the price for using such words.”
In Malaysia, a recent high-profile battle of the air brands saw Malaysia Airlines Sdn Bhd and Firefly Sdn Bhd obtain an interim injunction against AirAsia Com Travel Sdn Bhd. The injunction prohibited AirAsia from using Malaysia Airlines’ trademarks or selling its tickets in AirAsia’s “SuperApp” until the case’s final resolution.
The Supreme Court of South Korea clarified an uncertain area of trademark law when it held that the use of trademarks on “free” promotional items can still constitute valid use and related infringement.
Administrative and Legislative Developments
In Japan, written consent from the owner of a prior mark will be sufficient to overcome citation of that prior mark as an obstacle to registration of a subsequent mark. Once enacted, this guideline will provide an alternative to the more complex “assign-back” practice that was previously required.
Former senior IP partner of TMI Associates, Mimi Miyagawa, has been called as the new Justice of the Supreme Court of Japan. This is very important news for the Japanese IP community as it is the first time that an IP lawyer has been appointed as a Justice of the Supreme Court of Japan. Ms. Miyagawa will be the third woman to serve as a Justice of the Supreme Court.
New Zealand will soon introduce comprehensive new guidelines in relation to Māori trademarks, including an Aratohu Mātauranga checklist to guide brand owners who are considering using or who are using a trademark that contains elements of Māori language or culture. This can impact foreign brand owners who may seek to use or register a trademark which unknowingly includes Māori language or culture.
New trademark laws are being rolled out in some of the region’s smaller jurisdictions, including Fiji, Myanmar, and Nauru.
The Thai Department of IP introduced fast-track examinations for trademark applications, so that applications will be examined within six months of the filing date.
In Vietnam, an amended version of the Law on Intellectual Property (Amended IP Law) took effect on January 1. The Amended IP Law does the following:
- Introduces some new exceptions to copyright and related rights infringement (e.g., for private study);
- Adds regimes for compensation for patent owners for the delayed marketing authorization of pharmaceutical products;
- Introduces protection of sound marks;
- Establishes bad faith as an independent legal ground for trademark opposition and invalidation;
- Institutes parallel procedures of opposition and third-party opinions; and
- Provides regimes for custom authorities to proactively apply control measures at borders for counterfeit goods.
The Vietnamese government also issued Decrees 17 and 65—taking immediate effect on April 26 and August 23, respectively—to provide necessary guidance for the implementation of the Amended IP Law with respect to copyrights, related rights, and industrial property rights. Vietnam is also working on a plan to set up a specialized IP court. If this plan comes to fruition, the IP court system will undoubtedly usher in a new era for IP enforcement.
This article was first published on the INTA Bulletin on November 8, 2023, Vol. 78 Issue 43