Registering trademark in southeast asia – some key points to take note (part 2)

Registering trademark in southeast asia – some key points to take note (part 2)

4. Some key notes when registering trademark in Thailand (continue)

Categories of Trademark in Thailand: Apart from the certification mark and collective mark as other countries, the trademark act (no. 3) B.E 2559 of Thailand has separated the definition of mark used for product and service as follow:

  • Trade mark: is a mark symbolizing or involved with a product:
  • Service mark: is a mark symbolizing or involved with a service;

The trademark registration renewal: the same almost all other Asian countries, the registered trademark shall be protected for 10 years of the registration date. The protection can be renewed 10 years each time. The applicant wishing for the protection renewal shall submit the application to the registrar not less than 3 months prior to the expiration date or within 6 months of the expiration date. If the applicant fails to submit all additional documents within the specific period of time, it shall be deemed that the applicant dismisses the renewal application. 

5. Some key notes when registering trademark in Philippine

Entitled registration entities: Generally, in other countries, when receiving a registration application of the trademark, the IP Office only examines the protection abilities of such trademark within the registered and protected mark in the territory of the country. When there’s appeal/claim from other third party which proves that the registration is made with bad faith and have clear evidences to prove, the IP office will reject the registration or cancel the granted title. However, in Philippine, The Jurisprudence of February 1983 states in Unno Commercial enterprises VS. General Milling Corporation case that “The right to register trademark is based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same.”

From such legal basis, the IP office of Philippine can have the right to refuse the registration application of mark if they have basis to consider that the owner of the mark is different with the applicant, regardless such mark is registered to be protected in Philippine by the actual owners or not. 

However, in practice, the IP office of the Philippines still accepts the registration application in case the applicant can provide the IP office with a notarized letter of consent signed by the actual owner of the mark, which allow the applicant to register the mark in Philippines. Besides, a co-existence agreement is also an acceptable alternative, but in fact the Intellectual Property Office of Philippines (IPO) has not always accepted such document.  The reason for this is that the examiners sometimes see that there is still potential confusion on the part of the public or that the public will still be potentially misled, if the parties involved are not related and merely agree on co-existence.

Opposition duration: If the trademark is approved, it will be published in the Intellectual Property Office of the Philippines (IPOPHL) Gazette, and the public will be given 30 days to take action. If no opposition is received and verified by the Director of the Bureau of Legal Affairs, the Intellectual Property Office will now issue the Certificate of Registration.

Declaration of Actual Use: The IP Code of Philippines also requires the filing of a Declaration of Actual Use (DAU), together with proof of such use, must be filed with the IPOPHL according to the following schedule:

  • DAU filed within three (3) years from the filing date of the trademark application;
  • DAU filed within one (1) year from the fifth anniversary of the registration / within one (1) year from the fifth anniversary of the renewal of registration; and
  • DAU to be filed within one (1) year from the date of renewal of registration (*This additional requirement applies to all marks due for renewal on 1 January 2017 and onwards, regardless of the filing date of the request for renewal).

This is a mandatory requirement, if the Declaration of Actual Use is not submitted, the application shall be refused, or the mark shall be removed from the Register. 

But, if a registrant has valid reasons which prohibit him from using the mark, a Declaration of Non-Use may be filed instead of the DAUs. However, the non-use of a mark may only be excused in the following circumstances:

  • the registered owner is prevented from using it as a requirement imposed by another government agency,
  • an existing restraining order or injunction issued by a court, the IPO or other quasi-judicial bodies prevents the use or,
  • the mark is the subject of an opposition or cancellation case.

6. Registering trademark in Laos:

Entitled registrars: In Laos, the applicant can submit the registration application for trademark to any of these departments: The Science and Technology of Laos, the Intellectual Property Office; Trademark and Original Body.

Dossiers of the authorized representative: The power of attorney has to be notarized and translated into English (if it was written in a language other than Lao and English).

The renewal of the effectiveness of protection titles: The owner of the mark has to pay renewal fees within 12 months before the expiration date, they can also pay later within 06 months from the expiration date if they have justifiable reasons.

The time limit for third parties to oppose the registration of marks: within 60 days from the publishing date in the Official Gazette.

The cancellation of protection titles due to non-used reason: the same to Vietnam, if a trademark has been issued protection titles in Laos but it has not been used for 05 consecutive years, other people will have the right to request the cancellation of the certificate of the registered mark.

7. Registering trademark in Myanmar:

The cancellation of protection titles due to non-used reason: if a trademark has been registered and issued protection titles in Myanmar, but it has not been used for 03 consecutive years, other people will have the right to request the cancellation of the certificate of the registered mark.

The time limit for third parties to oppose the registration of marks: within 60 days from the publishing date in the Official Gazette.

8. Registering trademark in Vietnam:

The time limit for third parties to oppose the registration of marks: From the date the registration application is published in the Official Gazette of Industrial Property to the date of issuance of protection titles.

The trademark registration renewal: The applicant can renew the trademark registration multiple times, 10 years for each renewal. However, they have to pay renewal fees not less than 06 months before the expiration date, or they can pay within 06 months from the expiration date. If the applicant chooses the latter, they have to pay an additional 10% of the renewal fee for each delayed month.

If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.

This article is for general information only and is not a substitute for legal advice.

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