Balance the Speed of Intellectual Property Development in ASEAN Countries

Xenia Li, China IP,[Patent]

The BIP Asia Forum held in Hong Kong on December 5-6 kicked off with the first breakout session, themed "The Future is Here: IP Development in Asia". Asia has been the fastest-growing region in terms of the number of IP applications. In recent years, perceptions regarding IP exploitation have been changing, with more and more companies recognising the benefit of utilising overseas IP, resulting in accelerated growth in intra-regional and inter-regional IP transactions. In this session, Dan Plane, committee member of INTA Anticounterfeiting Asia Committee, Sor Kar Liang, president of ASEAN Intellectual Property Association, Hirohito Katsunuma, president of Asian Patent Attorneys Association, Sotoshi Konno, managing director of innovation division of IP Bridge Inc, shared their insights on the latest development on IP protection among different sectors.
China IP had the honor to interview Mr Soh Kar Liang, president of ASEAN intellectual property Association at the BIP Asia Forum. He graduated from the National University of Singapore and had been working on intellectual property law for more than 20 years. He was the first Singaporean to be appointed as a domain name expert by the World Intellectual Property Organization and had regularly adjudicated domain name disputes in accordance with the unified dispute resolution policy.
Strengthen exchanges and cooperation among ASEAN countries
As the newly appointed president of ASEAN IPA in 2019, Soh Kar Liang introduced the relevant development of ASEAN intellectual property rights. Since the 1990s, the ASEAN region had conceived an economic blueprint that required the establishment of a private body to coordinate public activities, and to strengthen links among intellectual property offices in ASEAN countries. The ASEAN IPA arose at the historic moment and had assisted ASEAN governments in implementing ideas, meeting challenges and providing assistance.
In 2016, the ASEAN IPA issued the Intellectual Property Action Plan (2016-2025), which was the third work plan of the Association since founded in 1995. Primary goals such as transparency, public awareness or accession to international treaties remained unchanged, but the plan itself was more detailed, including the development of regional intellectual property platforms, such as the online trademark application system. The new IP Action Plan also focused on the construction of IP offices, with particular attention to Cambodia, Laos and Myanmar, taking into account the different levels of national development. Another important objective of the new Plan was to strengthen links with stakeholders and external partners through various intellectual property associations and private sectors.
Soh Kar Liang said, "the five-year Work Plan issued in 1995 was extremely ambitious. For example, there was an idea at that time to set up an ASEAN trademark and patent registration institution, but then gradually found that it would not work. Each ASEAN country had its own corresponding laws, systems and currencies, so it had slowed down and adjusted the Work Plan accordingly and revised some goals. After all, it took the European Union 40 to 50 years to establish a sound trademark registration system. For ASEAN countries, a cooperation platform or application model could better achieve our expected goals. "
In addition, the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC) also holds four consultation meetings a year, with the participation of intellectual property offices and responsible persons of ASEAN countries, and announces corresponding work plans. However, because the ten ASEAN countries have different ideas and speed of development, not all plans can be realized, which should be a process of continuous development. "In the works done by ASEAN, under the leadership of the AWGIPC and the ASEAN IPA, some cooperation has been realized and some plans have been improved.
Among them is regional cooperation in patent examination, that is, the examination of patents in one country can speed up their examination in other countries. In addition, the ASEAN Trademark Application Form also provides a standard template for trademark applications of various countries. " Soh Kar Liang introduced that the ASEAN IPA also provided a platform for trademark applications across the ASEAN region and provided relevant advice to enterprises. "We hope that these measures will be effective in the next decade, but it does take time because the ten ASEAN countries do not have the same degree of cooperation."
When it came to the goals as the newly appointed president of ASEAN IPA, Soh Kar Liang clarified two points. The first is to strengthen cooperation and exchanges with the AWGIPC, to primarily further develop the ASEAN trademark application platform. "At present, the development of this platform depends very much on the improvement of soft power, and we have done a lot of preparatory work for now. I hope at least a preliminary prototype can be released." The second is to improve the quality of intellectual property agents. "Because each ASEAN country has different development level, for example, intellectual property agents in Singapore are highly capable of their job, and Thailand, Malaysia and the Philippines are gradually catching up, but Cambodia, Laos and Myanmar are still lagging behind. Myanmar already has a trademark law but has not yet implemented it, and should start accepting trademark applications in the near future. "
Balance the development speed of ASAN countries
In the course of this interview, Soh Kar Liang most frequently mentioned that "the development speed among ASEAN countries is different." At present, among the major international treaties on intellectual property rights, all the ten ASEAN countries have joined the WIPO Convention and TRIPS Agreement. In addition, all ASEAN countries except Myanmar have acceded to the Paris Convention, the Universal Copyright Convention and the PCT Treaty. Eight countries except Cambodia and Myanmar have acceded to the Berne Convention, and eight countries except Malaysia and Myanmar have acceded to the Madrid Agreement.
When asked whether the ASEAN IPA had taken corresponding measures to coordinate the balance of development speed among countries, Soh Kar Liang explained the current situation: there are some countries that stand at the leading position. Singapore is one of the more advanced countries, so the development of intellectual property rights is also relatively faster. Other IP offices are slowly starting to keep up with the international pace, including Thailand, the Philippines and Malaysia. Secondly, there is a lot of cooperation, training, information sharing and results reviewing among IP offices.
He explained using Myanmar as an example. He had mentioned earlier that Myanmar already had a trademark law but had not yet implemented it, and should begin to accept trademark applications in the near future. There was no trademark law in Myanmar before, and many trademark owners wanted their rights to be protected it who had to declare their trademarks in public in the old way. The newly-implemented Myanmar's trademark law had provided a database for trademark registration, but the ASEAN IPA also had to consider how to assist Myanmar in the real introduction of trademarks, how to take care of the interests of trademark owners, and how to resolve conflicts that might arise, which would take time to solve.
Soh Kar Liang believed that, on the whole, the development of intellectual property rights in ASEAN countries is relatively lagging behind, but from another point of view, the conditions needed for development are relatively inexpensive, and enterprise investment can operate in the vanguard. "If a company can successfully set up a platform in the ASEAN region, it will have an advantage over later enterprises. Although ASEAN countries are relatively backward, they are also developing more actively, attaching importance to how to make its development more prosperous and progressive, and they are very willing to accept assistance from other countries, so there are a lot of business opportunities, especially for foreign investment. "
Understand the market to achieve win-win cooperation
Since the cooperation between China and ASEAN started, the two sides had successively signed the Framework Agreement on Comprehensive Economic Co-Operation Between ASEAN and the People's Republic of China, and the subsequent agreements on trade in goods and services under the Agreement, and established the China-ASEAN Free Trade Area (CAFTA). The number of investment cooperation between Chinese and ASEAN enterprises had been increasing.
Soh Kar Liang also provided suggestions for the development of Chinese enterprises in ASEAN countries. First of all, enterprises need to recognize what kind of market they need to target. In terms of patents, some Chinese enterprises would apply for patents in Singapore first, get a good examination result, and then take it as a starting point, and gradually apply in other ASEAN countries. In addition, because Singapore's patent application is in English, if a preliminary registration application can be made in Singapore, it will also be more convenient to apply in other countries that accept applications in English. In terms of trademarks, because China's Trademark Law is relatively strict in the product description, the approved scope of protection will be relatively narrow, so it may be disadvantageous to use Chinese trademark applications as the starting point for the Madrid Convention, because the coverage of the Madrid Convention will be tightened accordingly. Therefore, many Chinese enterprises will choose Singapore as the starting point since Singapore has a relatively loose restriction on product descriptions. If Singapore is used as a preliminary application starting point and then apply under the Madrid Convention, the scope of registration will be widened accordingly. From this point of view, it may be more advantageous to then apply to other ASEAN countries.
For Chinese enterprises, they should make full use of the ASEAN intellectual property websites and other various channels to have an in-depth understanding of the intellectual property system and the intellectual property development of ASEAN enterprises, and do a good job in intellectual property retrieval and due diligence before investing in ASEAN to reduce the risk of intellectual property infringement. It can also be beneficial for finding advanced technology with commercial value or enterprises with investment needs, so as to achieve win-win cooperation.

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