As the Asian Tiger economies continue rapid industrialisation and high percentage GDP growth, together with expanded demand for foreign products and services, their attractiveness for Australian exporters grows apace.
And while there may be strong temptation for Australian manufacturers and service providers to jump in ‘boots and all’ to capitalise on the demand, one area where no short cuts should be taken is protection of intellectual property.
It’s fair to say some Asian countries have had a relatively cavalier approach to respecting trade marks in the past. While genuine branded goods are considered desirable, huge numbers of fakes have been, and continue to be, acquired by tourists and locals alike.
And while this has been almost a game, with many unable to tell the difference between $15 Rolex, Louis Vuitton, Chanel, and the real thing, it is a costly headache for genuine brand owners. The sophisticated manufacturing processes in Asia allow easy and inexpensive copying of foreign products and packaging.
In a nutshell, the risk of brand piracy in Asia remains high. Even though all Asian countries have trade mark legislation and supporting legal systems for trade market protection and enforcement, it is a region of diverse countries and cultures, and trade mark protection and enforcement is different in each country.
For example, trade mark law in Singapore and Hong Kong is similar to our Australian Trade Marks Act. The enforcement of rights through the courts, allowing the trade mark owner active participation in the enforcement process, compares with our own court system for actions such as trade mark infringement.
However, in countries like China, the trade mark registration process is quite different and when it comes to trade mark enforcement, the process is largely handled by a government bureau, with the trade mark owner only having a minimal role in the process.
We are now starting to see a turning of the tide as Asian companies with global brands seek to protect their own IP. With their desire to register their trade marks in other countries, comes a growing respect for trade mark owners’ rights. As a result, Asian countries are now recognising and complying with the requirements of the international community for the protection of brands. Trade mark protection, in many Asian jurisdictions an arduous process, is becoming streamlined.
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A number of Asian countries, including Singapore, China, South Korea, Japan and Vietnam are now parties to the International Trade Mark Registration system, the Madrid Protocol, which has greatly simplified the trade mark registration processes in those countries.
If you are considering moving into the dens of the Asian tigers make sure you are prepared and have the right legal ‘equipment’. It’s well worthwhile seeking advice from a qualified trade mark advisor.
Here are some of the key issues an experienced professional will work through with you, once you decide which countries are of interest to you:
*Whether your proposed trade mark is likely to be a registrable trade mark in those countries;
*Whether your proposed trade mark has any derogatory meaning or connotation in those countries;
*Whether your proposed trade mark needs to be ‘localised’ to suit local branding requirements or to remove unintended linguistic challenges;
*Whether there is a need to protect the trade mark in both English and the local language.
Once these issues have been ironed out to suit the local conditions, your trade mark advisor can arrange for searches in the targeted export countries to ensure the trade mark will not infringe any prior trade mark registrations.
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The final step in the process is to file the trade mark application at the earliest opportunity, which in some countries may be relatively easy.
However, it usually pays to move as quickly as possible, since the timing of your application can be very important, given that some countries have ‘first-to-file’ systems. Others may also require documents such as powers of attorney or authorisation documents, which may need to be legalised or be translated, all of which adds to the length of the process.
Armed with the right advice to save time, frustration and the potential cost of compromised trade marks, the opportunities for Australian exporters are very promising as the Asian Tigers voracious demand for foreign products and services continues to grow.
Joanne Martin is partner at FB Rice & Co, Patent and Trade Mark Attorneys.
