Navigating Patent &Trademark Protection in

ASEAN
April 2016 | Nishimura & Asahi

Say SujintayaPartner, Baker & McKenzie, Bangkok
bakermckenzie.com

ASEAN Presentation | 1

Outline

What is ASEAN?



Patent Protection in ASEAN



Trademark Protection in ASEAN

Conclusion

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ASEAN Member Countries

10

Membersbakermckenzie.com

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ASEAN Market Strength$2.6 tr

ASEAN global exports by 2018 (est)$273 bn

Trade between Japan & ASEAN (2014)$128 bn

Global FDI into ASEAN (2014)

702 m

Cell phone subscribers

620 m

Population across 10 ASEAN nations

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What is ASEAN?

Est. in 1967

SocialCooperation

Political
Cooperation
Economic
Cooperation

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Major ASEAN PlayersIndonesia represents almost 40% of the region’s economic output
and is a member of the G20, while Myanmar, emerging from decadesof isolation, is still a frontier market working to build its institutions

GDP per capita in Singapore is more than 30 times higher than in Laosand more than 50 times higher than in Cambodia and Myanmar

Thailand was the world’s top rice exporter in 2014

Port of Singapore was the world's second-busiest port in 2014

A rich source of hydrocarbon resources, ASEAN produces 2 million
barrels of oil per day

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Singapore

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Kuala Lumpur(Malaysia)

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Yangon(Myanmar)bakermckenzie.com

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Phnom Penh

(Cambodia)

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ASEAN Economic Community (AEC)

ASEAN
Economic
Community

31 Dec 2015

The formal establishment of the AEC was announced on 22 November 2015 in alandmark declaration and signing ceremony in Malaysia’s capital, Kuala Lumpur.
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AEC’s Core Elements
Single Market &Production Base

Competitive
Economic Region

Equitable Economic
Development

Integration into
Global Economy

Elimination of tariffs
and non-tariffbarriers among
ASEAN members

Competitive Policy

SME Development
Initiatives for ASEAN
Integration

Coherent Approachto External
Economic Relations‘Freer’ Flow of:ConsumerProtection



Goods

Intellectual Property
Rights (IPRs)



Services

Infrastructure

Investment

Development

CapitalTaxation

Skilled Labor

E-commercebakermckenzie.com

Enhancedparticipation in
global supply
networks

ASEAN Presentation | 13‘Freer’ Flow of Skilled LabourGreater mobility of qualified
service professionals in theregion by accepting common
standards of some professionals
There are mutual recognition
agreements (MRAs) for thefollowing: Medical practitioners
 Dental practitioners
 Accountancy services
 Engineering services
 Nursing services

 Architectural services
 Surveying qualifications
 Tourism professionals

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ASEAN Challenges
High levels of inefficiencies and perceived corrution, particularly inthe frontier markets.

Uneven implementation and lack of regulatory changes.

Unclear or weak corporate governance standards.



Poor state of infrastructure.

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Comparison to EU

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Comparison to EU
European Union (EU)ASEAN Economic Community (AEC)

28 member states (Nov 2015)

10 members states

Established 1958 with aim of ending
frequent wars within Europe

Established 1967 with aim ofcooperation and non-interference

Promotes much deeper integration
than ASEAN

Still in early stages of regional economic
integration

Euro (€) as common currency

No plan for single currency

Supranational government with anelected parliament

No such ASEAN parliament

EU has a customs union

ASEAN Free Trade Area (AFTA); Common
Effective Preferential Tariff (CEPT) schemebakermckenzie.com

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Importance to Japan

ASEAN countries are increasingly important diplomatic, economic, andsecurity partners for Japan.

Japan and ASEAN are established economic partners.



For the past three consecutive years, Japan has been the second
biggest foreign investor in ASEAN, surpassed only by the EU.

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Importance to JapanThe ASEAN-Japan Comprehensive Economic Partnership (AJCEP),
signed in April 2008, has opened opportunities to further trade andcommercial ties.
Major provisions of AJCEP are as follows:Elimination of tariff rates on tariff lines and trade value forgoods in the Normal Track

Rules of Origin (ROO) which allows regional cumulation of inputs



Dispute settlement mechanismInvestment and trade in services agreements (currently being
negotiated)bakermckenzie.com

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Importance to Japan

Many Japanese corporations expect their trade and investment in
ASEAN to increase over the next five years

Top 4 ASEAN locations for business expansion by Japanese companies:

Indonesiabakermckenzie.com

Philippines

ThailandMyanmar
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ASEAN IPRs Action Plan
Intellectual Property Rights (IPRs) Action Plan
Goal – to transform ASEAN into a competitive region with the use of IP, and by
the protection and enforcement of IPRs.
Efforts led by the ASEAN Working Group on Intellectual Property Cooperation(AWGIPC).
With regard to Patents – improvement in the efficiency of the administration,
protection, and enforcement of IPRs


ASEAN Patent Search and Examination Cooperation (ASPEC) –commenced in 2009

Accession to the Patent Cooperation Treaty (PCT) by end 2015

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1

Patent Protection in ASEANASEAN’s Impact on Patent Rights
No regional ‘ASEAN patent office’Must file a patent application in each desired ASEAN country
No foreseeable plans for an ASEAN patent

No regional ‘ASEAN patent law or regulation’

All ASEAN countries have own patent laws and regulations
No foreseeable plans for an ASEAN patent law or regulation

No regional recognition of granted patents from ASEAN countries

All ASEAN countries still have their own policies and discretion in respect
to recognition of granted patents
In practice, ASEAN countries rarely recognize granted patents from other
ASEAN countries

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Filing of Patent Applications


Patent applications can be filed in most ASEAN countries in two ways:

1. PCT application
2. National patent application


Most patent applications filed in ASEAN countries are in-bound patentapplications originating from the U.S., Europe, Japan and China

Only a small percentage of the total number of patent applications ineach ASEAN country are inventions originating from other ASEAN
countries

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PCT Applications
ASEAN Country
ThailandIndonesia
Malaysia
Philippines
Singapore
Vietnam
Brunei Darussalam
Cambodia
Laos
Myanmarbakermckenzie.com

PCT Member?











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Applications Filed (2014)

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National Patent Applications
Invention
Patents

Utility Models(i.e. “petty patents” or “utility
innovations”)

Vietnam








Brunei Darussalam

Cambodia









ThailandIndonesia
Malaysia
Philippines

Singapore

Laos
Myanmarbakermckenzie.comUnder consideration

ASEAN Presentation | 27

Note on Myanmar
Myanmar currently lacks a law governing patents
Patent owners may receive some limited protection by filing a
Declaration of Ownership of a registered patent and thereafter
publish a cautionary notice in a local newspaper.

Cease-and-Desist letter may be sent in case of infringement.

Good news – Myanmar government has published a new draft
patent law which is expected to be passed next year after thegeneral election.



The new law aims to fully modernize the patent system
including having a registry, conducting substantive examination,
allowing for oppositions and protect registered patents.

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Patent Filings: Top 3 Fields of Technology
Transportation(7.5%)
Chemistry(50%)
Chemistry metallurgy(26%)
Medicines and solar
powered devices
Organic fine chemistry(10.8%)

Consumer goods(6.8%)
Mechanical engineering(32%)
Human necessities(19%)

Mechanical engineering(5.3%)
Electricity(18%)
Transportation
(16%)

-

-

Pharmaceutical(9.2%)

Biotechnology(8.1%)

Vietnam

Pharmaceutical--

Brunei Darussalam

Semiconductors(37%)

Electrical machinery(34%)

Mechanical engineering(6.2%)

Cambodia

Machines

-

-

Laos

Machines and electricaldevices--

MyanmarNot available

Not available

Not available

ThailandIndonesia
Malaysia
Philippines
Singaporebakermckenzie.com

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Filing of Patent Applications
Unique considerations in ASEAN countries

Thailand, Vietnam, Cambodia, Laos, Indonesia – require translation ofpatent specification into local language.

Singapore – requires applicant to obtain written authorization from theRegistrar of Patents before filing or causing to be filed outside Singapore.



Vietnam, Indonesia, Philippines, Malaysia, Cambodia – excess claim fees
payable (varies depending on country)

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Expediting Prosecution

Not all ASEAN countries perform own substantive examination



Most wait for grant of a recognized corresponding foreign patent,such as an U.S. patent, European patent, or Japanese patent
Perform own substantive
examination
Malaysia, Singapore, Indonesia,
Vietnam, Thailand, Philippines

Wait for issuance of corresponding
foreign patentLaos, Cambodia, Brunei

Note: Myanmar presently has a recordal process, but does not have a formal patent registration system.

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Expediting Prosecution
Patent Prosecution Highway (PPH) Some ASEAN countries have a formal PPH process in placewith other countries
PPH Agreements with other Patent Offices
Thailand

Japan

Indonesia



Japan

Malaysia

Japan

PhilippinesJapan, U.S., Korea

SingaporeEurope, China, IMPI, and Global PPH (GPPH)

Cambodia, Laos, Brunei, Vietnam



None

Note: There is no cost for using PPH in the above countries
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Expediting Prosecution
ASEAN Patent Examination Co-operation (ASPEC)

Established as a framework to encourage expediting ofprosecution of patent applications filed in ASEAN countries

Applicants may file an ASPEC request for its patent application



Sharing of examination results of corresponding patentapplications of ASEAN countries

No obligation or requirement to follow examination results ofother ASEAN countries

Applicants in Thailand and Singapore have been most active inusing ASPEC to date

No cost for using ASPEC

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Expediting Prosecution
ASEAN Patent Examination Co-operation (ASPEC)

As of July 2015, a total of 65 ASPEC requests have been submitted

Indonesia

VietnamPhilippines

Malaysia

ThailandSingapore

1

1

3

4

10

46

Source: IPOS Website
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Enforcing Patents
Legal System
Common Law
Malaysia, Singapore,
Brunei, Myanmar

Civil Law
Indonesia, Philippines*, Thailand,Laos, Cambodia, Vietnam



No jury system in ASEAN member countriesSpecialized IP courts or dedicated IP panel of judges – Indonesia,
Malaysia and Thailand*Primarily civil law, but judicial interpretation forms part of the law of the landbakermckenzie.com

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Enforcing Patents
Expertise of courts that hear patent cases
 In some ASEAN member countries – Judges generally do nothave technological/scientific training or background.
 Courts rely on testimony or opinions of experts – how expert

evidence is presented is very important.
 In some jurisdictions, IP and international trade cases are

decided by associate judges, who possess competentknowledge and are experienced in IP and international tradematters.

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Enforcing Patents
What are your options against patent infringement?

 Civil action – available in all ASEAN Member
Countries (except Myanmar).

✪ Criminal action – only in Indonesia, Brunei,


✪
✪
✪✪✜ ✜

 ✪


✪

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Cambodia, Laos and Thailand. Available in thePhilippines for repeat infringement.
Administrative proceeding – available and may✜ be advisable in the Philippines and Vietnam.

ASEAN Presentation | 37

Enforcing Patents
Duration of Patent Infringement Action
Indonesia

6 months

Malaysia

6 - 9 months

Vietnam

12 - 24 months

Singapore18 - 24 months

Thailand18 - 36 months

Philippines

36months36–to6060
monthsbakermckenzie.com

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Remedies Available
Prelim.
Injunction

Indonesia

Anton Piller
Order(or similar)

N/A - can not
be obtainedThailand

Vietnam

Malaysia

Philippines

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Freezing
Order





Damages

Other Comments Preliminary Injunction: Implementing regulations
were enacted but in practice, still not applicable.
 Damages – TRO: Difficult to calculate damages Other interim orders available Search and seizure (raid); condemnation anddestruction of infringing articles
 Other provisional remedies available, including
preliminary attachment
 Administrative penalties such as fines, issuanceof a cease and desist order, condemnation of
infringing products; forfeiture of infringing
paraphernalia; censure, etc.
 Forfeiture of goods
 In crim. cases: fine, imprisonment.
 Mareva injunction - difficult to obtain Seizure Attachment
 sealing/prohibiting change of status or displacing
restriction on ownership transfer
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Remedies Available (ctd.)
Prelim.
Injunction

Singapore

Brunei
Laos

Cambodiabakermckenzie.com

Anton Piller Freezing
Order
Order
(or similar)

Damages

Other Comments A court may award damages (or an account of
profits), statutory damages, an injunction anddisposal of infringing goods.







 Customs seizures









 A court order to the effect that the infringer
ceases with the infringing acts.
 A suspension of customs clearance goods.
 A judgment of infringement.
 Damages – compensation for infringement andlegal fees.
 The destruction/disposal of infringing goods.
 The disposal of tools, etc., used to create/commit
the infringement.
 A court may award monetary damages and/or
specific relief.

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2

Trademark Protection in ASEANASEAN IPRs Action Plan
Intellectual Property Rights (IPRs) Action Plan
With regard to Trademarks – improvement in the efficiency of the administration,
protection, and enforcement of trademarks.


All ASEAN member states agree to accede to the Madrid ProtocolHarmonization of trademark filing requirements



ASEAN Regional Filing Form for Trademarks recently finalized*



ASEAN TMview – a common online trademark platform aimed at making
ASEAN trademark data more easily accessible** Not yet implemented

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First to File vs. First to Use (ASEAN)

bakermckenzie.com

First to File
CambodiaFirst to Use
Brunei DarussalamIndonesia
Lao PDR
Philippines
Singapore
Thailand
Vietnam

Malaysia
MyanmarBaker & McKenzie | 43

Use Requirements
Country

Requirements

Brunei Darussalam

An application may be filed on the basis of actual use OR intent to use

Cambodia

An Affidavit of Use and proof of ownership are required to be submitted.

Indonesia

Statement of Ownership, stating that the mark applied for is the applicant’s property
and it's not an imitation of another person's mark, either in its entirety or in principle isrequired to be submitted.

Lao PDR

No intent to use or actual use is required.

Malaysia

Applications can be filed based on intent to use.

MyanmarNo intent to use or actual use is required.

Philippines

A declaration of Actual Use must be filed within 3 years from the filing date of theapplication.

Singapore

The Applicant is required to confirm that the trade mark is used by the applicant, withthe goods or services stated, or that there is a bona fide intention to do so. The Registry,
however, does not, at the time of filing, require any Statutory Declaration to such effect.

ThailandApplications can be filed based on intent to use.

VietnamIntent to use or actual use is not required.

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Baker & McKenzie | 44

Online Applications
Applications may be filed online in the following jurisdictions:Cambodia
Malaysia
Philippines
Singaporebakermckenzie.com

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Registering a Mark: Timeframe
Estimated No. of Months
Brunei
Cambodia
Indonesia
Laos
Malaysia
MyanmarPhilippines
Singapore
Thailand
Vietnam0bakermckenzie.com

5

10

15

20

25

30
Baker & McKenzie | 46

Registration PeriodInitial registration period is 10 years from filing date or registration date.
Renewable every 10 years.

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Update: Accession to the Madrid Protocol
Country

Yes

No

Brunei Darussalam

CambodiaIndonesia

Lao PDR

MalaysiaMyanmar

PhilippinesSingapore

Thailand

Vietnambakermckenzie.com

Comments

Likely by the end of 2015.

Within the next 12 months

Thailand has committed itself to becoming a member of the
Madrid System by end of 2015. However, given recent politicalevents, this most likely will now be delayed.


Baker & McKenzie | 48

Infringement: Remedies & Penalties
Brunei Darussalam

Criminal: Fine of up to approx. USD 3,500
Civil: Compensation for damages and account of profits and seizureof infringing goods.

Cambodiabakermckenzie.com

Criminal: Fine of up to approx. USD 5,000 or imprisonment from 1 to
5 years, or both.
Civil: Provisional measures.

Baker & McKenzie | 49

Infringement: Remedies & Penalties
IndonesiaCriminal: Maximum of 5 years imprisonment and/or a fine of approx.
USD 73,000 for forgery; USD 58,000 for imitation; and USD 15,000 for
trade in such goods.



Civil: Interim relief and injunctions.

Laosbakermckenzie.com

Criminal: Fine of up to 3 times the value of the property, plus
consideration of profits. Fines may be doubled for second infringement,with imprisonment of 3 months to 2 years.

Civil: Compensation for losses and expenses; injunctions, seizure anddestruction or disposal of goods.
Baker & McKenzie | 50

Infringement: Remedies & Penalties
Malaysia
Criminal: Under the Trade Descriptions Act 2011, applying a false tradedescription (eg. counterfeiting), supplying, offering to supply, or having inpossession counterfeit products is subject to a fine of up to approx. USD
1,200 for each item infringed; and imprisonment of up to 3 years.
Penalties increase for second offenses.

bakermckenzie.com

Civil: Preliminary remedies (Anton Piller Order, freezing order), final
injunction and damages.

Baker & McKenzie | 51

Infringement: Remedies & Penalties
Philippines

bakermckenzie.com

Criminal: Criminal: Penalty of 2 to 5 years imprisonment, and a fineranging from approx. USD 1,100 to USD 4,200.



Civil: Injunctive relief and monetary damages.

Administrative: Fine from approx. USD 100 up to USD 3,200, with anadditional fine of not more than approx. USD 20 for each day a violation
continues to be committed.

Baker & McKenzie | 52

Infringement: Remedies & Penalties
Singaporebakermckenzie.com

Criminal: Fine of up to approx. USD 7,000 for each infringing item,
and/or a prison term of up to 5 years.

Civil: Preliminary injunction; final injunction; and damages.
Maximum limits for statutory damages are approx. USD 71,000
up to USD 700,000 aggregate except where trademark owner isable to prove that actual loss exceeds this amount.

Baker & McKenzie | 53

Infringement: Remedies & Penalties
Thailand

Criminal: Criminal: Imprisonment not exceeding 1 year or fine notexceeding approx. USD 11,200, or both.



Civil: Temporary injunctive orders; Permanent injunctions and damages

Vietnambakermckenzie.com

Criminal: Fines ranging from approx. USD 2,200 to USD 45,000, and/or 3
years to life imprisonment, and even capital punishment.



Civil: Injunctive relief and monetary damages.

Administrative: Fines of up to approx. USD 11,200 for individual infringer, or
up to approx. USD 22,500 for infringing entity.
Baker & McKenzie | 54

Concluding Remarks
ASEAN – a huge and rapidly growing market


By 31 December 2015, the 10 ASEAN Economic Community (AEC)
members will form a single market and production base.

Will become the world's ninth largest economy at US$1.8 trillion.



Enormous opportunities for all sectors of business.

Home to 10% of the world’s population, ASEAN is a growing hub ofconsumer demand.



Patent and trademark protection becoming increasingly important.

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ASEAN Trademark Package
One-Stop Service
Allows for the coordinated filing oftrademark applications in each of the
10 ASEAN member states.
Cost-effective solution with all
instructions and filings coordinated outof one office.
Reduces administration time through asingle point of contact.

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ASEAN Presentation | 56

Thank You
Say SujintayaPartner
Baker & McKenzie Ltd.
25th Floor, Abdulrahim Place
990 Rama IV Road
Bangkok 10500, Thailand+66 2636 2000 ext. 4546
Say.Sujintaya@bakermckenzie.com© 2015 Baker & McKenzie Ltd.