Indonesia makes the Madrid System a '100 Club'

Last week Indonesia deposited its instrument of accession to the Madrid Protocol and brought the number of contracting parties into triple figures.

It follows hot on the heels of Thailand, which will be available for designation in International applications in less than a month.

The ASEAN (Association of Southeast Asian Nations) countries are committed to joining the Madrid Protocol and now eight out of the 10 countries are on board. Brunei, Cambodia and Laos joined up in the last two years leaving Malaysia and Myanmar as the only ASEAN countries not a part of Madrid. Malaysia has undergone consultations and appears to be in the process of taking steps to ready itself to accede.

In Myanmar, the IP world is still waiting for the country to adopt a formal trademark law. Currently, a deposit registration system with a Cautionary Notice publication supports Common Law rights in trademarks. After years of waiting, there are now indications that Myanmar will be opening a new IP Office to operate a formal trademark law. It appears the new law may be a stepping stone towards Madrid membership or, in other words, first of all there will only be a national system for registration but presumably once the Office is up to speed it can look to accede to the Madrid Protocol and have International Registrations designate Myanmar.

There are some concerns on how well Indonesia may manage meeting the strict timelines for examining International applications. It has made a declaration under Article 5(2)(b) of the Protocol to extend the refusal period to 18 months but it could be they still struggle to meet this given an expected increase of applications now it will be easier for foreign parties to simply tick a box to file in Indonesia in an International application. Could this therefore see a backlog in the examination of national applications?

It will be interesting to see how much Indonesian businesses use the Madrid system. Domestic applicants make a lot of trademark applications in their home market. Now they will have easier access to designate most of their ASEAN partners in an International application, Australia, just to the south may also be an attractive market, as well as the powerhouse economies of Asia, Europe and the United States.

Madrid membership moving on up

Madrid membership has increased recently with the accession of the Philippines on 25 April 2012. It will be in force from 25 July 2012.

How this will work in practice is not clear to this writer and it may remain to be seen what happens as and when designations of the Philippines start to be requested. The Philippines, somewhat uniquely, has a trade mark law akin to that of the United States; the US took control of the islands in the aftermath of the Spanish-American War.

The trade mark law therefore contains provisions relating to use and it will be interested to see how these will be adapted for Madrid Protocol designations, if at all - there is no indication there will be a need to file anything like a Form MM18 as you must do when designating the United States. I have not been able to locate any amendments to the Intellectual Property Code of the Philippines - and the Philippines is a Common Law country - that reflect its memberships and commitments under the Madrid Protocol. I must say that it seems the Philippines has "sneaked in" without much warning. I'm totally in favour of an increase in Madrid Protocol membership, but a country must be ready (in terms of both legislation and organisational capabilities) or the rights obtained through International Registration could be limited and a country's IP image could suffer.

Filipino accession is part of a commitment from ASEAN member states to accede to the Protocol by 2015. I'm not quite sure this is a realistic timetable. Of the 10 members, the Philippines joins Singapore and Vietnam as members whereas the others require national filings for now.

Indonesia, Malaysia and Thailand - which, along with the previous three countries mentioned, represent the most significant economies of the ASEAN block - will need to ensure they have backlogs of trade mark applications under control. There will be times when they will struggle to meet the 12 or 18-month examination timetable otherwise. Malaysia will require some updating of regulations to reflect its membership.

Brunei's law - drafted along the lines of Singapore - should be largely Madrid compliant with some small amendments. Laos, which pretty much operates a deposit system, should not have any difficulty adopting Madrid although the the internationalisation of the agreement does not meet so well with a country that has often chosen to remain somewhat isolated.

Isolation would be a word used quite freely with respect to Myanmar (Burma). This country is making steps to come out from the cold but Madrid membership by 2015 is likely to be too ambitious, in my view. Myanmar does not currently have a trade mark law and relies on the publication of Cautionary Notices. A new substantive - and Madrid compliant - law may not be a priority to a newly democratic government. On the other hand, if the junta remains in place then they have not previously buckled under international pressure so any leverage put on them to join the Madrid Protocol could have little impact.

Finally, Cambodia has Affidavit maintenance requirements on registrations. Perhaps these would not be requested for Madrid designations, but there is potential for an anomaly that they may wish to rectify before they can accede to the Madrid Protocol.

To go off on one of my typical tangents, I have just learnt that the Philippines have been less keen on accepting a previous Madrid Protocol from 1885.

Outside of ASEAN - much further to the south - noises from New Zealand suggest it is on course to join the Madrid party shortly. Colombia's membership could be in force as early as the end of this year - according to officials at the Colombian IPO, although local attorneys seem to feel Spring 2013 is a more realistic target.

Mexico has also got the ball rolling towards its eventual membership of the Madrid Protocol.

However, I had a discussion during the recent INTA conference with an agent from a smaller jurisdiction in the Americas (which shall remain nameless) and they were quite frank with me. They will fight their government tooth and nail for it not to join the Madrid Protocol. With local powerhouses like Mexico and possibly Brazil coming on board, coupled with pressure from the US and EU in particular, I wonder if they will be able to stop the Madrid juggernaut driving through their jurisdictions as it gathers more and more momentum. After a couple of years of stagnation with few new joiners, perhaps this momentum is about to build up.

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.