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Trademark Registration in Asia

Published on : June 2018
Author(s):Several

Trademark Registration in Asian Countries

Trademark Registration

Country and Applicable Legislation Length of Trademark (in years) Trademark Definition Eligible Applicants Documentation Requirement Language Requirement and Procedures Treaty/ Classification Treaty/Classification Benefits

Kazakhstan 

Law of the Republic of Kazakhstan No.456 of July 26, 1999, on Trademarks, Service Marks and Appellations of Origin (2012) Law on Trademarks, Service Marks and Appellations of Origin of the Republic of Kazakhstan No. 237-III of March 2, 2007 (the Act) amending Law No. 456-I of July 26, 1999

 

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Trademark is defined under article 1(12) of the Act as “sign, registered under this Law or protected without registration in virtue of international treaties to which the Republic of Kazakhstan is party, serving to distinguish the goods (services) of one legal entity or natural person from goods and services of the same type of other legal entities or natural persons.”And signs registered under the Act are stated under article 5 as “Figurative, verbal, in letters, digital, three-dimensional and other signs or combinations thereof serving to distinguish goods and services of one person from similar goods and services of other persons may be registered as trademarks. A trademark may be registered in any color or combination of colors.

Applicant is defined as “ a legal entity or a natural person who has filed an application for registration of the trademark or for registration and grant of the right to use the appellation of origin” under article 1(4) and the protection under article 4 (2) can be granted to any person or entity engaged in business activity.

1. Application stating details such as name, address, country of incorporation/ nationality of the applicant.

2. a request for registration of a sign as a trademark, in which the name of the applicant and his headquarters or residence shall be specified;

3. the sign in respect of which the application is filed

4. the list of goods and services along with classifications

5. receipt of payment for registration.

6.The application and any annexed documents shall be drawn in the Kazakh or Russian language.

7.If the priority is claimed the documents evidencing the first application must be filed within two months following the date of receipt of the application by Kazpatent.

The application and any annexed documents shall be drawn in the Kazakh or Russian language as per article 9(4) of the Act.

1. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

2. Trademark Law Treaty

3. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

4. Convention Establishing the World Intellectual Property Organization

5. Madrid Agreement Concerning the International Registration of Marks

6. Paris Convention for the Protection of Industrial Property

7. World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)

1. Treaty on the Eurasian Economic Union sought to create Eurasian Economic Union trademark registration system. It seeks to protect trademark rights under part III and IV of the treaty. Part IV states about registration of Trademarks of the Eurasian Economic Union and simultaneous legal protection in all member states.

2. Madrid protocol provides the gateway for international registration of marks

3. Under Paris convention priority right can be made by member state if application made

Korea

Trademark Act (Act No. 71 of November 28, 1949, wholly amended up to Act No. 4210 on Jan 13, 1990) the act is amended several times thereafter the recent amendment being by Act no. 11113,Dec 2,2011.

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The term "trademark" under Article 2. 1 means any of the following which is referred to as “mark” in the Act that is used by a person who produces, processes or sells goods as a business, in order to distinguish the goods related to his/her business from those of another person:

(a) Any sign, letter, figure, three-dimensional shape or the combination thereof or the combination of them and colors;

(b) Any color that is not combined with others, the combination of colors, any hologram, movement or other items that can be visually recognized;

(c) Any sound, odor or others that expressed realistically with a sign, letter, figure, or by any other visual means among sounds, odors and others that cannot be recognized visually.

Article 3 any person who uses or intends to use a trademark in the Republic of Korea, may be entitled to have his/ her trademark registered. Administrator for Non-residents must be appointed under article 5.3 for person/ legal body who does not have address/residence or place of business in Korea.

1. Application including name and address of the applicant, trademark representation, designated goods and classes, date of submission, country and

2. filing date of priority application (if the right to priority has been claimed)

3. Ten specimens of the trademark (8cm*8cm or smaller dimensions)

4. Priority document (if the right to priority has been claimed)

5. Power of attorney (if needed) it is compulsory for foreign applicants to appoint one attorney /representative

Application and all other accompanying documents such as priority claim first application and such other documents must be submitted along with Korean translations.

1. Paris Convention for the Protection of Industrial Property

2. Trademark Law Treaty

3. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

4. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

5. Convention Establishing the World Intellectual Property Organization

6. Comprehensive Economic Partnership Agreement between the Republic of Korea and the Republic of India sought co-operation in intellectual property rights including trademarks under chapter 12

7. Free Trade Agreement

1. Free Trade Agreement between the Republic of Korea and the United States of America recognizes trademark rights and agrees with cooperation by considering well-known trademarks of member countries and seeks to ensure

convention adopting nice classification for the uniform classification system. The treaty further lays down benefits of reasoning on the rejection of the application to the applicants and opposing rights.

2. An applicant whose application exists in a member

Malaysia

Trademark Act (Amendment) Act 2002: (Act 175 of 1976, as last amended by Act A1138 of 2002), Trade Marks (Amendment) Regulations 2011, 2007, 2001, so on and so forth

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Trademark and mark is defined under section 3 of 1976 Act as the following with no further amendments by Acts thereafter: “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof; “trademark” means, except in relation to Part XI, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and a person having the right either as proprietor or as registered user to use the mark whether with or without an indication of the identity of that person, and means, in relation to Part X I, a mark registrable or registered under the said Part XI..

Any person claiming to be the proprietor of the mark may apply for the registration provided he is using the mark or proposes to use the mark. Accordingly Persons including partnerships, Joint ventures, unincorporated bodies, government or other official bodies, nationals or other contracting states of Paris Convention. Further one exception to use or intend to use is the person applying to register for the body corporate about to be incorporated as stated under section 26 of Trademark Act,1976 with later amendments.

1. Five copies of completed TM-5 Forms with trademark affixed to each copy. If the mark is to be registered in more than one international class than the separate application with TM-% forms for each class – 5 copies each. Trademark (size: 10cm*10cm

2. One original copy of statutory declaration with trademark affixed to it.

3. Copy of Form 49/ Form D/ company details from company registrar if the registration is made under the company name.

4. To seek priority claim a copy of document stating priority date claim.

5. Where the language is other than Bahasa Malaysia or English, the applicant may be asked to furnish a Copy of certified translation or transliteration, under the power conferred by regulation 23 Registrar has the power to consider the validity of such copy.

If the mark contains any word in non-Roman characters o any language other than in Bahasa Malaysia or English, then a certified translation or transliteration should be provided-Regulation23(1).

 

1. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

2. Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks

3. Paris Convention for the Protection of Industrial Property

4. Agreement establishing the World Trade Organization (WTO)

5. World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994)

6. Agreement establishing the ASEAN Australia- New Zealand Free Trade Area seeks

1. Under section 14(f)(2) Article 6b is of the Paris Convention and Article 16 of the TRIPS Agreement shall apply for the purpose of determining whether a trademark is a well-known trademark. The proprietor can protect the well-known trademark which is entitled to protection under the Paris Convention or the TRIPS Agreement as a well-known trademark through the injunction.

2. Uniform international classification system is available due to Nice Classification.

Pakistan

Trademark Ordinance 2001 and Trademarks Rules 2004 succeding Trade Marks Ordinance, 2001 and The Trademarks Act,1940.

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Trademark Ordinance 2001 defines the mark and trademark as following: Section 2 under subsection (xxiv) "mark" includes, in particular, a device, brand, heading, label, ticket, name including person name, signature, word, letter, numeral, figurative elements, colour, sound or/and combination thereof; Section 2 under subsection (xlvii) "trademark" means any mark capable of being represented graphically  which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

As per Section 2 (k) of 1940 Act and Trademark Ordinance 2010 section (xxxviii) and (xlvii) Application for trademark registration can be made by person on basis of mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user who is Proprietor of goods or services. Two or more persons may also jointly apply for the trademark under section 22 and 24

The following documents are required:

1. Request for search facility (optional) under form TM – 5.

2. Request for registration under form TM – 1 in duplicate along with six additional representations affixed on a durable paper of 13x8 inch along with following details: (a) In case of individual: Full name, Description, and Nationality of the applicant.  (b) In case of firm: the Full Name and Nationality of every partner, full trade or business address of the applicant, domain name in respect of goods and services, if the mark is in color - the color can be claimed, the signature of the applicant such as individual, managing partner in case of partnership.

3. Form TM-48, duly stamped, must accompany the application if the same is made by the attorney holding power of attorney.

4. Classification of goods and services as provided under schedule IV of Trade Marks Rules,

When trademark contains a word or words in languages other than English and Urdu, t's translation and transliteration in the form of an affidavit from the applicant must accompany the application.

1. Paris Convention for the Protection of Industrial Property.

2. Free Trade Agreement between China and Pakistan

3. World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994)

4. Convention establishing the World Trade Organization (WTO)..

1. The right of priority under article 4 of Paris convention in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries. The periods of priority referred to above shall be twelve months.

2. Protection of trademarks in cross-border transactions by customs authorities under article 10 of Free Trade Agreement between China and Pakistan relating to Special Requirements Related to Border Measures.

 

Singapore

Trade Marks Act as amended by Act No.3 of 2007 Trade Marks Act (Original Enactment: Act 46 of 1998) (Chapter 332) Revised Edition 2005 Trade Marks (Amendment) Rules 2013 Trade Marks (Amendment) Rules 2014 amending Trade Marks Rules 2008, Trade Marks (Composition of O_ences) Regulations G.N. No. S 229/2001 Revised Edition 2002 Trade Marks (International Registration) Rules (2002) Trade Marks (Border Enforcement Measures) Rules G.N

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Trademark is defined under section 2 of 2007 Act means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. As per the official website Intellectual property office of Singapore following can be registered as a trademark but a mark must be distinctive and capable of distinguishing your goods or services from similar ones of other traders: letters words names signatures labels devices tickets shapes colors or any combination of these.

Based on section 2,8, 9 of Trademark Act 2007 and 2008 Rules, it can be construed that application for Trademark registration can be made by the proprietor of the mark on basis of used as well known mark or proposed to be used. Earlier right in the mark is recognized as per definition of the earlier trademark under section 2 which is well known though not registered.

Documents required:

1. An application for registration of a trademark shall be made into the Registrar through form TM-4 stated in the second schedule: description of forms.

2. The application must contain must state the following details: (a) state the name and address of the applicant; (b)contain a clear representation of the trademark; (c) list the goods or services in relation to which the applicant seeks to register the trademark; and (d) state – (i) that the trademark is being used in the course of trade, by the applicant or with his consent, in relation to those goods or services; or (ii) that the applicant has a bona fide intention that the trademark should be so used. It must further state that the trademark is being used in the course of trade, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used. For marks comprising of a three-dimensional shape of the goods or packaging, line.

Under section 3A of Trade Marks Rules 2008 (2) Every document filed at the Registry shall (a)be in English; or (b) where the document is not in English, be accompanied by a certified English translation or transliteration of the document.

1. Nice Agreement -Geneva Act - (1977) establishing Nice Classification for the purpose of classification of goods and services.

2. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;

3. Paris Convention for the Protection of Industrial Property;

4. World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994)

5. Convention establishing the World Trade Organization (WTO)

6. ASEAN Framework Agreement on Intellectual Property Cooperation (TREATY NOT IN FORCE) seeks regional protection

1. The uniform classification system is available due to Nice Classification.

2. There is a priority claim procedure in place for applicants who have filed an earlier claim for the same mark in another Paris Convention country or a World Trade Organization member country. The Singapore application must be filed within six months from the date of the first filing.

3. One can also designate Singapore through the Madrid Protocol for an international registration marks

 

Thailand

Trademarks Act 2534 as amended by the Trademark Act (No. 2) Act 2543 (2000)

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Under section 4 of the Act the “mark” means a photograph, drawing, device, brand, name, word, letter, numeral, signature, combinations of colors, shape or configuration of an object or any one or combination thereof; and “trademark” means a mark used or proposed to be used on or in connection with goods to distinguish the goods with which the trademark of the owner of such trademark is used from goods under another person’s trademark

Under section 10 for a trademark to be registrable, the applicant or his agent shall have an office or address for communication by the Registrar in Thailand. Thailand also operates on ‘first to file’ system thereby creating urgency to register first as ‘bad faith’ registration may take place taking away the right of actual owner and user of the mark.;

 

The application form should be submitted along with an evidence or statement that shows the right to use the mark containing:

1.Copy of application for registration/1 electronic sample

2.Five photos of the mark in size 5cm*5cm

3. Copy of ID card or government card or certified copy of passport (for aliens)

4.Original certificate of Incorporation (in case of corporate bodies)

5. Description of the goods and services to be designated

6. Agent book or Power of Attorney (if applicable)

7. Full name, address, country, and occupation of the applicant

8. Filing fees

9. Copy of ID card or other government-issued cards (if applicable)

10. Copy of Passport or temporary residence (if agent or attorney is not a resident of Thailand)

11. Date of first use of the trademark (if any)

12. Certified copy of the priority

The Application must be filed in Thai language or companies by a Thai translation. The Registrar under section 12 may require the applicant to translate any document in a foreign language into Thai within a given period.

 

1. Paris Convention for the Protection of Industrial Property

2. Convention Establishing the World Intellectual Property Organization

3. Agreement establishing the World Trade Organization (WTO)

4. World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)

5. ASEAN Framework Agreement on Intellectual Property Cooperation (Treaty not yet in force)

6. Agreement establishing the ASEAN Australia- New Zealand Free Trade Area

7. Closer Economic Partnership Agreement between Thailand and New Zealand

1. An application with priority right should be filed within 6 months from the first filing date of application in another country, who is a member of Paris Convention. Priority claim can be sought if the applicant is a national of a country party to a convention or international agreement on trademark protection to which Thailand is also a party or having domiciled or having the industrial or commercial establishment in Thailand and such other conditions laid down under article 28

Thaiwan

Trademark Act 2011 Amended and Promulgated on July 13, 2015, by the Ministry of Economic A_airs Enforcement Rules of the Trademark Act

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Trademark or mark is not defined under the Act, however, provisions relating to distinctive signs, color, holograms, sound, three dimensional and motion trademarks is referred to in rules and Act.

Any individual or legal entity may apply to the Taiwan Intellectual Property Office (TIPO) to register a trademark in Taiwan. Foreign applicants may apply to register a mark in Taiwan if the foreign applicant is from a WTO member country or a jurisdiction that protects trademarks on a reciprocal basis with Taiwan. Those not domiciled or business established in Taiwan must appoint a trademark agent in Taiwan to register a mark.

 

1. Application stating name, address, nationality and seal affixed of legal entity or signature.

2. Document of proof for any claim made such as priority claim

3. The translation in Chinese of all the documents

4. Power of Attorney authorizing the trademark agent to file the application

5. specimen of the trademark

6. description of goods or services and classification

7. In case of motion, three dimensional, color, hologram or such other trademarks electronic data can be requested and any explanation as to the motion or view of the trademark can be sought.

Under rule 3 of the Act the applications and documents submitted in relation to trademark matters shall be in Chinese. When the documents of proof are in foreign languages, the Registrar Office may give the notice to furnish a full or excerpted Chinese translation thereof if it deems necessary..

1. Agreement establishing the World Trade Organization(WTO)

1. Priority can be claimed based on an application first filed in any WTO member state within six months from the day following the date of filing of the first such application.

2. The Nice Classification (10th edition) is adopted in the schedule 1 of the Rules which comprises of 45 classes.

Vietnam

Law No. 36/2009/QH12 of June 19, 2009, amending and supplementing a Number of Articles of the Law on Intellectual Property. Intellectual Property Law (No. 50/2005/QH11 of 29 November 2005)

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Under section 4.16 of Intellectual Property Law, the Mark is defined as “any sign used to distinguish goods and/or services of different organizations or individuals.” Further trademark under article 4.21 means “a designation of an organization or individual in business activities, capable of distinguishing the business entity bearing it from another entity in the same business domain and area.”

Under section 89 (1) Vietnamese organizations and individuals, foreign individuals permanently residing in Vietnam And foreign organizations or individuals having production or business establishments in Vietnam shall file applications

either directly or through their lawful representatives in Vietnam. However, under 89 (2) Foreign individuals not permanently residing in Vietnam, foreign organizations or individuals having no production or business establishments

The mark application shall consist of the following documents:

1. A request made in the prescribed form (as prescribed in the Circular No. 01/2007/TT-BKHCN);

2. Documents, samples, information identifying the mark as provided for in Articles 105 of the Law as follows: a. the sample of the mark must be described in order to clarify elements of the mark and the comprehensive meaning of the mark if any; b. where the mark consists of words or phrases of hieroglyphic languages, such words or phrases must be transcribed; c. where the mark consists of words or phrases in foreign languages, such words or phrases must be translated into Vietnamese;

3. Goods or services listed in a mark registration application must be classified in accordance with the Nice Agreement – Classification.

4. Power of attorneys (if the application is filed through a representative)

Applications and documents for the transaction between the applicants and the state management agency shall be made in Vietnamese.  However, the documents stated from point 4 to 6 (in documents required section) can be made in another language but shall be translated into Vietnamese at the request of the state management agency in charge of industrial property rights. Further, where the mark consists of words or phrases in foreign languages, such words or phrases must be translated into Vietnamese.

1. Protocol relating to Madrid Agreement Concerning International Registration of Marks

2. Agreement on Trade-related aspects of Intellectual Property Rights under the World Trade Organization (TRIPS)

3. Paris Convention on Protection of Industrial Property

4. ASEAN Framework Agreement on intellectual property cooperation

5. Geneva Act of Hague Agreement concerning the international registration of industrial designs.

6. Agreement establishing the World Trade Organization (WTO)

7. Agreement establishing the ASEAN Australia- New Zealand Free Trade Area

8. Agreement between Japan and the Socialist

1. Agreement establishing the ASEAN-Australia- New Zealand Free Trade Area – To create the system for harmonization of the registration process, improved prevention of intellectual property rights and transparency.

2. Agreement between Japan and the Socialist Republic of Viet Nam for an Economic Partnership sought to abolish the requirement of the authentication of signatures or other means of self-identification on documents to be submitted to the competent authority of the Party

 

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