think positive: international intellectual property system

LAWPLUS 1

Think Positive:

International Intellectual Property System

Kowit Somwaiya Managing Partner, LawPlus Ltd.

Director, The Intellectual Property Association of Thailand (IPAT)

Pullman Bangkok Hotel G, Silom

21st January 2016

www.lawplusltd.com

LAWPLUS 2

Intellectual Property: A Tool for Development

• “In the age of the knowledge economy, the efficient and creative use of

knowledge is a key determinant of international competitiveness, wealth

creation and improved social welfare.”

• “An effective intellectual property (IP) system embedded within a national

strategy which anchors IP considerations firmly within the policy-making

process will help a nation to promote and protect its intellectual assets,

thereby driving economic growth and wealth creation”

Kamil Idris

Former WIPO Director General

LAWPLUS 3

Intellectual Property: New Model

Source: http://www.wipo.int/edocs/mdocs/sme/en/wipo_unido_smes_msk_07/wipo_unido_smes_msk_07_www_73614.ppt

LAWPLUS 4

International IP System: Overall Positive Impact

Creation of IP

Registration of IP

• Facilitates and supports creation of IP

globally

• Gives incentive to create more IP assets

since cost-effectiveness is higher

• Creates global value chain.

• Simplifies the process.

• Save time and costs.

• Makes it easier to manage registrations in many countries.

LAWPLUS 5

International IP System: Overall Positive Impact

Utilization of IP

Enforcement of IP

• Makes it easier to manage foreign IP

portfolios.

• Increases tradability of IP assets and the

development of markets.

• Helps protect and exploit IP assets in

multiple countries which ultimately helps companies to recoup their investment.

• Provides centralized database of IPRs

and thus infringers can be identified and

prosecuted more readily.

• Helps putt the world on notice that your

legal rights and intellectual property are being protected.

LAWPLUS 6

Source: http://www.jamesbranding.com/wp-content/uploads/2014/02/brands-of-the-world-fmcg-cpg.jpg

LAWPLUS 7

The World's Most Valuable Brands (Forbes 2015) Rank

Brand Brand Value

1-Yr Value

Change Brand

Revenue Company

Advertising Industry

#1 Apple $145.3 B 17% $182.3 B $1.2 B Technology

#2 Microsoft $69.3 B 10% $93.3 B $2.3 B Technology

#3 Google $65.5 B 16% $61.8 B $3 B Technology

#4 Coca-Cola $56 B 0% $23.1 B $3.5 B Beverages

#5 IBM $49.8 B 4% $92.8 B $1.3 B Technology

#6 McDonald’s $39.5 B -1% $87.8 B $808 M Restaurant

#7 Samsung $37.9 B 8% $187.8 B $3.8 B Technology

#8 Toyota $37.8 B 21% $171.1 B $3.8 B Automotive

#9 General Electronic

$37.5 B 1% $129.1 B - Diversified

#10 Facebook $36.5 B 54% $12.1 B $135 M Technology

http://www.forbes.com/powerful-brands/list/#tab:rank

LAWPLUS 8

The World's Most Valuable Brands (Forbes 2015) Rank

Brand Brand Value

1-Yr Value

Change Brand

Revenue Company

Advertising Industry

#1 Apple $145.3 B 17% $182.3 B $1.2 B Technology

#2 Microsoft $69.3 B 10% $93.3 B $2.3 B Technology

#3 Google $65.5 B 16% $61.8 B $3 B Technology

#4 Coca-Cola $56 B 0% $23.1 B $3.5 B Beverages

#5 IBM $49.8 B 4% $92.8 B $1.3 B Technology

#6 McDonald’s $39.5 B -1% $87.8 B $808 M Restaurant

#7 Samsung $37.9 B 8% $187.8 B $3.8 B Technology

#8 Toyota $37.8 B 21% $171.1 B $3.8 B Automotive

#9 General Electronic

$37.5 B 1% $129.1 B - Diversified

#10 Facebook $36.5 B 54% $12.1 B $135 M Technology

http://www.forbes.com/powerful-brands/list/#tab:rank

LAWPLUS 9

International IP System: Advantages of Madrid System

• Centralization and Simplified Management

– File one application, in one language, at one time to enjoy the benefits of

trademark protection in over 90 countries.

– Since this system is similar to a bundle of national registrations, managing

protection of marks will be simplified.

– Less paper work to be done.

– Simplifies and facilitates the subsequent management of your trademark

protection e.g. trademark assignments and registrant name changes.

LAWPLUS 10


• Flexibility

– Requests to extend protection beyond the initial member countries may be

made at any time and are effective when filed

• Cost Savings and Cost-Effectiveness

– The initial cost savings of the Madrid system stem from the central filing for

protection in multiple jurisdictions without the help of a representative in the

local country. Thus, there are no associate fees at the time of filing.

– If the application is not refused or opposed, the cost of foreign counsel could

be completely eliminated from the registration process.

LAWPLUS 11


• Speed / Time Savings

– The Madrid Protocol requires that review of the application, and rejection if

applicable, take place within 18 months after filing of the application.

– By providing simplified process, brings the possibility of time savings in

subsequent management of your trademark rights as well.

• Paris Convention Advantage

– Benefit from the advantages afforded by the Paris Convention in obtaining a

priority filing date.

LAWPLUS 12


• More Business Opportunities/ Expansion of Market

– By providing cheaper and simpler procedures, makes the possibility of

protecting trademarks in a large number of countries a reality for many

enterprises, especially SMEs.

• Offensive Advantage

– Because member countries will have a centralized database of trademarks,

infringers can be identified and prosecuted more readily.

– By simply registering your valuable mark within the database, your company

is putting the world on notice that your legal rights and intellectual property

are being protected.

LAWPLUS 13

International IP System: Probable Disadvantages of Madrid System

• Dependency and Vulnerability to Central Attack

HOWEVER, IP owners can minimize risk associated with 5-year dependency

period by

keeping your eyes closely on your base application

marking all the deadlines

being active in responding to any office action

using well-established, registered marks as the basis for international

application

for a new or unregistered trademark, an applicant should choose only a strong

mark that has little chance of facing meaningful opposition or encountering a

refusal

LAWPLUS 14


• Single Specification of Goods/Services

HOWEVER, this is not an unsolvable problem.

The classification and specifications of goods/services are likely to be less

different and more harmonious.

Nevertheless, if there is huge difference in goods/services in different countries,

you may consider using a combination of available filing options depending on

where you want protection and which foreign markets are most critical.

LAWPLUS 15


• Limitation in Assignment to Non-Member Countries

HOWEVER, this is expectable.

Comparing this to traditional/national filing in every targeted country, filing one

international application under Madrid Protocol for protection in member

countries and filing only a few national applications in non-member countries (or

may be none if all targeted markets are already covered under international

application) brings you less workload than traditional/national filing in

every targeted country.

LAWPLUS 16

What Users Say about the Madrid System

Source: http://www.wipo.int/multimedia-video/en/madrid/nestle.ogg

"I encourage all companies to

use the Madrid System as

much as they can"

– Jean-Pierre Maeder, Group

Head of Trademarks, Nestlé,

Switzerland

http://www.wipo.int/multimedia-video/en/madrid/nestle.ogg

LAWPLUS 17


Source: http://www.wipo.int/multimedia-video/en/madrid/shiseido.ogg

"It is a great tool for our

business!"

– Ichiro Morikawa, Senior

Manager of Trademark

Group, Shiseido, Japan

http://www.wipo.int/multimedia-video/en/madrid/shiseido.ogg

LAWPLUS 18


Source: http://www.wipo.int/multimedia-video/en/madrid/sony.ogg

"The most effective global

trademark system for the

borderless network era"

– Shinji Ina, General

Manager, IP Alliance &

Licensing, Sony, Japan

http://www.wipo.int/multimedia-video/en/madrid/sony.ogg

LAWPLUS 19


Source: http://www.wipo.int/multimedia-video/en/madrid/microsoft.ogg

"The Madrid Protocol has

been wonderful for the US“

– Russell Pangborn, Associate

General Counsel, Trademarks,

Microsoft , USA

http://www.wipo.int/multimedia-video/en/madrid/microsoft.ogg

LAWPLUS 20

International IP System: Advantages of Hague System

• Centralization and Simplified Management

• Cost Savings and Cost-Effectiveness

• Time Savings

• More Business Opportunities/ Expansion of Market

(Same concept as Madrid System)

LAWPLUS 21

International IP System: Probable disadvantages of Hague System

• Differences in Drawing Standards

HOWEVER, this is not detrimental.

Although more than one set of drawings may be required, the number

of drawings set will never be more than when an applicant files for the

design protection separately in each targeted country.

Overall, it brings you less workload than traditional/national filing route.

• Limitation in Assignment to Non-Member Countries

HOWEVER, this is expectable.

Nevertheless, it brings you less workload than traditional/national filing

route.

LAWPLUS 22

Other Interesting International/Regional IP Systems

• The Patent Cooperation Treaty (PCT)

• Community Trademark (CTM)

• Community Design (RCD)

LAWPLUS 23

Strategy Considerations

1. Identify the countries in which filing is desired and the

corresponding costs.

• There are many options of filing. You may

– (1) use international registration systems;

– (2) use national registration system;

– (3) use regional registration system; or

– (4) use a combination of above systems.

• For instance, (a) a CTM; (b) an international application for applicable

key market non-EU Madrid Protocol countries; and (c) national marks.

LAWPLUS 24


2. Confirm existing or anticipated corporate structure:

• Will several related entities own your same marks/design/patent

worldwide?

• Will an offshore holding company hold your marks/design/patent rights?

• Do you anticipate that you may sell your marks/design/patent?

LAWPLUS 25


3. For trademark protection, do you anticipate significant problems in

registering any of your local mark(s)?

• If yes, applicants should use well-established, registered marks as the

basis for international application.

• Otherwise, for a new or unregistered trademark, an applicant should

choose only a strong mark that has little chance of facing meaningful

opposition or encountering a refusal of registration based on

descriptiveness, confusion with others, etc.

LAWPLUS 26


4. Do you use the same mark (and goods and services description)

globally?

5. Closely monitor your trademark portfolios and mark all the

deadlines.

NOTE: Keep in mind that these international IP systems do not completely

replace local/national filing. National application still exists.

LAWPLUS 27

Q&A

LAWPLUS 28

Unit 1401, 14th Floor

990 Abdulrahim Place

Rama IV Road, Bangkok 10500

Tel. +66 (0)2 636 0662

Fax+66 (0)2 636 0663

Room 517, Yangon International Hotel

No. 330 Corner of Ahlone and Pyay Roads

Dagon Township, Yangon, Myanmar

Tel. +95 9 505 6667

Tel. +95 92 6111 7006

•www.lawplusltd.com

[email protected]

http://www.lawplusltd.com/