9 February 2012

Journey to the East

My blog now takes a look at trade mark protection across Asia, the world's largest continent that contains 60% of the world's population.

There is much cross over between Europe and Asia and so there will be some duplication from a previous blog on Europe.

The Madrid Protocol is not as extensive at protecting trade marks in Europe as it is in Asia, but it is nevertheless a useful tool and is more extensive than in Africa or the Americas.

India is hopefully not far away from joining as the Trademarks Amendment Bill, 2009 has been passed by both Houses of Parliament. It is now down to the Indian Government to accede to the Protocol.

Armenia, Azerbaijan, Bahrain, Bhutan, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam make up the current Madrid Protocol members in Asia.

Of these countries, Bhutan is a Common Law country but I cannot see any reflection of its Madrid Protocol membership within its Industrial Property Act of 2001. This puts the enforceability of a Bhutanese designation into question. Readers might be aware of similar issues faced in Africa.

Oman introduced legislation in 2008 to allow for the recognition of International Registrations.

The Democratic People's Republic of Korea ("DPRK") - or North Korea to most of us - is currently under UN sanctions and that of national governments. Banks in the UK, and I believe in the US and elsewhere, refuse to transfer funds to the DPRK. With respect to Madrid applications the official fees would be passed to the DPRK Government direct and I have enquired with WIPO whether they have put a stop to this (especially as it is a UN agency). Ironically, given WIPO is currently undertaking a survey on things such as customer service, a response to my query is still awaited! If you have any need to register in the DPRK - nationally or via Madrid - do be careful not to breach any sanctions that are in place. Provisional Refusals to Madrid designations can be issued willy-nilly which will require the appointment of a local agent.

The Cooperation Council for the Arab States of the Gulf has its own Patent Office, but this does not manage trade mark rights which continue to be handled nationally in the member states: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. (Bahrain and Oman can be included in a Madrid Protocol filing, however.)

The Association of Southeast Asian ("ASEAN") nations have commitments towards intellectual property rights but there is no regional registration possible. Therefore, separate applications are required in Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam. (Singapore and Vietnam can be included in a Madrid Protocol filing, however.)

Commitments towards IP harmonisation in the ASEAN are not exactly moving at a rapid pace and there are large differences between the developed law of Singapore with that of Laos, for example. Myanmar still operates a Cautionary Notice system.

The Maldives and Timor-Leste also represent Cautionary Notice jurisdictions within Asia.

National filings are the course of action in the remainder of the continent: Afghanistan, Bangladesh, India, Iraq, Jordan, Lebanon, Nepal, Pakistan, Sri Lanka and Yemen.

In Iraq, the autonomous Kurdistan Region operates its own Trade Marks Office and it is possible to "confirm" Federal registrations in the local Kurdistan Register. This seems desirable particularly whilst the Kurdistan Region enjoys greater stability than the rest of Iraq and the Trade Marks Office in Baghdad is not known for its excellent record keeping.

There are also a handful of partially recognised states within Asia. Abkhazia began operating its own Trade Marks Office quite recently. Also within the Caucasus region lie the de facto independent states of Nagorno-Karabakh Republic ("NKR") and South Ossetia. I am advised by the Ministry of Economy in NKR that they recognise Armenian registrations. Kindly note that de jure this territory is a part of Azerbaijan; even Armenia does not recognise it officially. As for South Ossetia, there is a "Committee for Patent and Trademark" which I believe is exploring the opening of an Intellectual Property Office as in Abkhazia, but the situation is unclear at the moment. With a small population and undoubtedly higher priorities, I would not anticipate any developments in this regard soon unless they are supported by Russia. Note that western governments, as is the case with Abkhazia, consider South Ossetia de jure a part of Georgia.

The northern third of the island of Cyprus is declared as the Turkish Republic of Northern Cyprus, recognised only by Turkey. It has its own Trade Marks Office. The island of Cyprus also contains two military bases of the United Kingdom, the Sovereign Base Areas of Akrotiri and Dhekelia. (Greek) Cypriot trade mark law is mirrored and, with respect to this article being specific to Asia, a Madrid Protocol designation of Cyprus should provide protection.

Palestine has two separate systems for registering trade marks reflecting its non-congruent territory, one being in the West Bank and the other in the Gaza Strip.

Taiwan is not recognised by many countries in official diplomatic circles, but "cultural offices" nurture bilateral relationships, for example, the British Trade & Cultural Office. Taiwan operates its own separate trade mark system from mainland China. The same is true for the two Special Administrative Regions of China, Hong Kong and Macao. Under the "One country, two systems" principle, Hong Kong and Macao maintained their separate Trade Marks Offices following their return to China by the United Kingdom and Portugal respectively.

Last but not least, there are some small territories in the Indian Ocean that constitute a part of Asia. Christmas Island and Cocos (Keeling) Islands form territories of Australia and Australian trade marks cover all Australian territories; there is specific mention of Christmas Island and Cocos (Keeling) Islands in the Australian Trade Marks Act 1995. It is possible to designate Australia in a Madrid Protocol application.

The British Indian Ocean Territory ("BIOT") provides protection automatically for UK trade marks in accordance with BIOT Ordinance No. 9 of 1984. I cannot locate this legislation on-line and so cannot see if it is anticipatory enough that it could be interpreted as allowing for protection of Community or International Trade Mark registrations. For the avoidance of doubt, a United Kingdom National registration would be required. This territory, despite being British, would be more of interest to American brand holders popular with US service personnel as the only inhabited island, Diego Garcia, is a military base. The islands have a controversial recent history in that the native inhabitants were involuntarily removed and there have been a number of court cases involving them in recent years.

The number of trade mark applications required to cover Asia is therefore 32 (plus some Cautionary Notices):

1. A Madrid Protocol application designating Armenia, Australia, Azerbaijan, Bahrain, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam
2. National trade mark applications: Abkhazia, Afghanistan, Bangladesh, Bhutan, Brunei, Cambodia, Gaza Strip, Hong Kong, India, Indonesia, Iraq, Jordan, Kurdistan Region, Kuwait, Laos, Lebanon, Macao, Malaysia, Nepal, Pakistan, Philippines, Qatar, Saudi Arabia, Sri Lanka, Taiwan, Thailand, Turkish Republic of Northern Cyprus, United Arab Emirates, United Kingdom (to cover British Indian Ocean Territory), West Bank and Yemen
3. Cautionary Notice publications in Maldives, Myanmar and Timor-Leste

Whilst considerable more than is required in Europe, it is the half the amount of Africa and North America combined, two continents which collectively have only 40% of Asia's population.