IP PROTECTION IN ASIA COUNTRIES

TRADEMARK REGISTRATION IN JAPAN

1.Subject of protection under the Trademark Act
Article 2 of the Trademark Act defines a "trademark" as among those which can be perceived by people, any character, figure, sign or three-dimensional shape or color, or any combination thereof; sounds, or anything else specified by Cabinet Order (hereinafter referred to as a "mark") which is:
(i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or
(ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item).
In addition, "Services" set forth in item (ii) above shall include retail services and wholesale services, namely, the provision of benefits for customers conducted in the course of retail and wholesale business.

2.Non-traditional trademark
In 2014, the Trademark Act was amended for the purpose of supporting the company with diversified brand strategies, which has enabled the registration of non-traditional trademarks, such as sound, color, motion, hologram and position, in addition to the letters, figures, etc.
In 2019, from the viewpoint of improving user convenience and clarifying the scope of the right, the JPO revised the method of making statements in the application when filing an application for a three-dimensional trademark (revision of the Regulation for Enforcement of the Trademark Act) so as to enable companies to protect the shapes of outer appearances and interiors of stores and complicated shapes of goods more appropriately.

3.Duration of a trademark right
The period of a trademark right is ten years from the date of registration of the trademark right. The period may be renewed every ten years.

4. First File Principle
According to Article 8 of the Trademark Act, when two or more applications are filed on different dates to register an identical or similar trademark used for identical or similar goods and services, only the applicant who filed the application first will be entitled to register that trademark.

5.Services
Our services include trademark research, registration, reply Trademark Office actions, cancellation, etc.

TRADEMARK REGISTRATION IN MALYSIA
1. Sings: any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, color, sound, scent, hologram, positioning, sequence of motion or any combination thereof.

2. Collective mark: A collective mark shall be a sign distinguishing the goods or services of members of the association which is the proprietor of the collective mark from those of other undertakings.

3. Certificate mark: A certification mark shall be a sign indicating that the goods or services in connection with which it shall be used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

4. Non-registerable trademark
   1)Prohibited marks: If the use of which is likely to confuse or deceive the public or contrary to law.
   2)Scandalous or Offensive Matter: If it contains or comprises any scandalous or offensive matter or would not otherwise be entitled to protection in any court of law.
   3)Prejudicial to Interest or security of the Nation: Registrar bears the responsibility of determining the trade mark, whether it might be prejudicial to the interest or security of the nation. It may be that a mark contains an inflammatory statement or words.

5. grounds for refusal of registration
   1)absolute grounds for refusal of registration
   2)relative grounds for refusal of registration

6. Our services include trademark research, registration, reply Trademark Office actions, cancellation, etc.

TRADEMARK REGISTRAITON IN THAILAND

1.What are the types of trademark that can be registered in Thailand?
Words, names, devices, slogans, trade dress, three-dimensional shapes, collective marks, certification marks, well-known marks, service marks.

2.The main process of registration
   1)Doing research
   2)Filing the registration
   3)Examination based on formalities, classification, descriptiveness, distinctiveness, deceptiveness and etc.
   4)Publication: mark, goods/services, name, address, state or country/ citizenship of application number, date; name and address of trademark agent, restrictions.
   5)Registration

3.Non-registerable trademark
   1)Generic terms
   2)Names, flags or symbols of states, nations, regions, or international organizations.
   3)Contrary to moral standards or public order
   4)Marks absent a showing of accuqired
   5)Functional marks as geographic location
   6)Marks that confuse or deceive the public as to the origin of goods
   7)A medal, certificate, diploma and etc.

4.Our services include trademark research, registration, reply Trademark Office actions, cancellation, etc.

TRADEMARK REGISTRATION IN VIETNAM
1.Signs: Signs eligible for being registered as trademarks must be visible ones in the form of letters, numerals, words, pictures, images, including three-dimensional images or their combinations, presented in one or several given colors.

2.Registration procedure for trademarks
1)Minimum documents
- 02 Declaration for registration which are typed according to form No. 04-NH Appendix A of Circular No. 01/2007/TT-BKHCN
05 identical mark specimens that satisfy the following requirements: a mark specimen must be clearly presented with the dimensions of each element of the mark ranging between 8 mm and 80 mm, and the entire mark must be presented within a mark model of 80 mm x 80 mm in size in the written declaration; For a mark involving colors, the mark specimen must be presented with the colors sought to be protected.
- Fee and charge receipts.
For an application for registration of a collective mark or certification mark, in addition to the documents specified above, the application must also contain the following documents:
- Regulations on use of collective marks and certification marks;
- Explanation of particular characteristics and quality of the product bearing the mark (if the to-be-registered mark is a collective mark used for a product with unique characteristics or a mark for certification of the quality of a product or a mark for certification of geographical origin);
- Map showing the indicated territory (if the to-be-registered mark is a mark for certification of the geographical origin of a product);
- Document of the People's Committee of a province or city directly under the Central Government permitting the use of geographical names or signs indicating the geographical origin of local specialties to register a trademark (if the registered mark is a collective mark certification mark contains place names or signs indicating the geographical origin of local specialties).

2) Other documents (if any)
Power of attorney (in case the request is filed through a representative);
Documents certifying the permission to use special signs (if the trademark contains emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese state agencies/ organizations or international organizations, etc.);
 Paper on assignment of the right to file an application (if any);
Documents certifying the lawful right of registration (in case the applicant enjoys the right to file from another person);
- Documents evidencing the right of priority (if the patent application has a claim for priority right).

3)Fees and charges for trademark registration
4)- Official charges for filing application: VND 150,000/ 01 application;
5)- Fee for publication of application: VND 120,000/ 01 application;
6)- Fee for the trademark search for the substantive examination process: VND 180,000/ 01group of goods or services;
7)- Fee for the trademark search from the 7th good or service onwards: VND 30,000/ 01 good or service;
8)- Fee for formality examination: VND 550,000/ 01 group of goods or services;
9)- Fee for formality examination from the 7th good or service onwards: VND 120,000/ 01 good or service

4) Time limit for processing trademark registration applications
From the date on which the registration application is received by the IPVN, the registration application of a trademark shall be examined in the following order:
A trademark registration application shall have its formality examination within 01 month from the filing date.
Publication of trademark registration applications: A trademark registration application shall be published within 02 months after it is accepted as a valid application
An industrial property registration application shall be substantively examined within09 months from the date of application publication.

3.Our services include trademark research, registration, reply Trademark Office actions, cancellation, etc.

TRADEMARK REGISTRAITON IN INDONISIAL

1.Non registerable marks
  1)contrary to national ideology, legal regulations, morality, religion, decency, or public order
  2)the same as, related to, or only mentions the goods and/or services for which registration is applied for
  3)contains elements that can mislead the public about the origin, quality, type, size, type, purpose of use of goods and/or services for which registration is requested or is the name of a protected plant variety for similar goods and/or services
  4)contain information that does not match the quality, benefits, or properties of the goods and/or services produced
  5)has no distinguishing power; and/or
  6)is a common name and/or symbol of common property.

2.Objection
A mark registration application is rejected when the mark:
  1)has similarities in essence or in its entirety with marks owned by other parties that have been registered earlier for similar goods and/or services
  2)has a similarity in essence or in its entirety with a well-known mark owned by another party for similar goods and/or services
  3)have a similarity in essence or in its entirety with a well-known mark owned by another party for goods and/or services of a different kind as long as it meets certain requirements set further by government regulations
  4)have similarities in the main or the whole with known geographical indications
  5)is or resembles the name of a famous person, photo, or name of a legal entity owned by another person, except with the written consent of the right holder
  6)is an imitation or resembling the name or abbreviation of the name, flag, emblem or symbol or emblem of a country or a national or international institution, except with the written consent of the authority
  7)is an imitation or similar to an official sign or stamp used by the State or a government agency, except with the written consent of the authority.

3.Protection year: 10 years

4.Our services include trademark research, registration, reply Trademark Office actions, cancellation, etc.

Trademark registration in Singapore
1.Conventional trade marks
  1)Word mark: words or any characters that can be tryped
  2)Figurative mark: pictures, images, or graphics
  3)Composite mark: combination of words/characters and images/ graphics
2.Collective/ certification marks
  1)Collective mark: serves as a badge of origin to distinguish goods or services of members of a particular association from non-members.
  2)Certification mark: serves as a badge of quality to guarantee that goods or services have been certified to have a certain characteristic or quality.
3.Non-conventional trade marks
  1)3D shape: 3D shapes of goods/packaging represented by line drawings or actual photos showing different views.
  2)Color: colors with no pictures or words
  3)Sound, movement, hologram or others: graphical representation of these marks is required
  4)aspect of packaging: containers or packaging in which goods are sold.
4.Our services include trademark research, registration, reply Trademark Office actions, cancellation, etc.

TRADEMARK REGISTRATION IN HONG KONG
Pay attention
1.Is it distinctive? Does your trade mark stand out from the crowd? Does your trade mark, be it a logo, word, picture, etc. clearly set your goods and services apart from those of other traders? Trademark office will object to the mark if they do not think it does. They will consider invented words or everyday words that are in no way associated with your line of business as distinctive. For example the invented word “ZAPKOR” is distinctive for spectacles and the word “BLOSSOM” is distinctive for medical services.

2. Is it a description of your goods and services? If your trade mark describes the goods and services or shows the quality, purpose, quantity or value of them, then Trademark office are likely to object to the mark. Similarly they are likely to object to the use of geographical name in a mark. For example, they would for the above reasons object to the following marks: “QUALITY HANDBAGS”, “FRESH AND NEW” and “NEW YORK FASHION”.

3. Is it a well known term in your line of business? If your trade mark is a well known term or representation in your line of business trademark office would object to it. For example “V8” for vehicle engines.

4. Other people’s Trade Marks Has someone else already registered or applied to register the same or similar trade mark for the same or similar goods and services? If your trade mark looks or sounds the same or similar to another registered mark, or one that is being applied for, Trademark office will object to your mark.

5.Doing Trade Mark search: It is important to conduct a search of the trade mark register to see if your trade mark is already registered or has been applied for by another trader.

TRADEMARK REGISTRAITON IN TAINWAN

1.Signs: In the Republic of China, a trademark refers to a sign consisting of words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. In addition, the minimum requirement of the trademark laws of every country is that a trademark must be recognizable to the general consumers as a trademark and is indicative of the source of the goods or services. Most generic names or direct or obvious descriptions of goods do not possess the characteristics of a trademark. （§18, Trademark Act）

2.Three-dimensional trademark: A three-dimensional trademark is a sign consisting of a three-dimensional shape formed in three-dimensional space, whereby consumers are capable of distinguishing the sources of different goods or services.

3. Color trademark: A color trademark is a single color or combination of colors that is applied, in whole or in part, to the surface of goods or the container or to the place of business where services are provided. If a color itself can adequately identify the source of goods or services, not in combination with a word, figure or symbol, it may be registrable as a color trademark.

4. Sound trademark: A sound trademark is a sound that can adequately allow relevant consumers to identify the source of certain goods or services. For instance, a short advertising jingle, rhythm, human speech, peal, bell ringing, or the call of an animal can be registered as a sound trademark.

5. Collective trademark: is a brand commonly used by the members of a group. It could be a farmers' association, a fishermen's association, or other associations that are eligible for filing an application for registration of a collective trademark.

6. Certification mark is a sign that serves to certify a particular quality, accuracy, material, mode of manufacture, place of origin or other matters of another person’s goods or services by the proprietor of the certification mark and distinguish the goods or services from those that are not certified, e.g., the Taiwan fine product sign, UL electrical appliances safety sign, ST toy safety sign, and 100% wool sign, which are familiar to the average Taiwanese consumer.