UK: Protection Of Coloured Trademarks In Asia

Last Updated: 16 September 2016
Article by Jim Lim and Gretchen Su

Adopting a cost-effective strategy to maximise protection while controlling costs

It has now been more than a year since the Common Practice of the Scope of Protection of Black and White Marks came into effect in Europe.

The drastic change in practice sent many trademark owners scurrying to file new applications in the European Union to protect their marks in colour, as their existing trademark registrations in black and white are no longer sufficient protection for their business logos, which are more often used in colour than in black and white.

In re-examining their trademark portfolios, some trademark owners may find themselves questioning whether their existing trademark portfolio is sufficient to protect the use of their marks, and whether they should similarly register their marks in colour all over the world. While it would certainly be ideal to register a mark in both colour and black and white, registering two marks instead of one mark will effectively double costs and turn into an expensive exercise. With limited legal budgets, trademark owners will need to adopt a cost-effective strategy to maximise their protection while controlling costs.

Trademark protection strategy in Asia

Turning way from the European continent, how about Asia?

American investors have long had substantial business interests in Asia, but the region is full of pitfalls for the unwary trademark owner.

Not many countries have acceded to the Madrid Protocol, and foreign trademark owners have to navigate a myriad of domestic laws and inconsistent examination guidelines. Indeed, some countries such as Myanmar and Timor-Leste do not even have specific legislation on trademarks. Even among countries which have acceded to the Madrid Protocol, such as Cambodia and the Philippines, existing national laws impose requirements of filing Declarations of Actual Use to maintain a registration, deadlines for which are often missed by unsuspecting trademark owners.

In China and Taiwan, the national classification system for goods and services confuse foreign trademark owners, who find that similar or even identical marks belonging to different owners may co-exist in the same Nice class, simply because the claimed goods fall under different sub-classes. Trademark owners registering their marks in Indonesia, Taiwan or Thailand may find the official fees exceeding their expectations, as official fees increase with the number of goods and services claimed. An owner who has received a certificate of registration for Japan or Taiwan may be surprised to learn later that the registration is not the end of the matter, due to the post-registration opposition procedure.

Given the diverse legal landscape, it is also to be expected that there is no unified approach as to whether the registration of a mark in black and white grants protection over all colours.

Let's examine the top 12 territories[1] that have received the most number of trademark applications from American trademark owners from 2012 to 2014.

Designated Office (in order of number of trademark applications originating from the United States of America)
Are series marks accepted?
Does the mark registered in black and white protect use of the mark in colour?
Does use of the mark in colour constitute evidence of use of the mark registered in black and white?
1. China No Yes Yes
2. Japan No Yes Yes
3. Republic of Korea No Yes Yes
4. India Yes Yes Yes
5. Hong Kong SAR Yes Yes Yes
6. Malaysia Yes Yes Yes
7. Singapore Yes Yes Yes
8. Thailand No Yes Yes
9. Philippines No Yes Yes
10. Indonesia No No No
11. Vietnam No Yes Yes
12. Macao SAR No Yes Risk of dispute

Three different approaches can be identified from the above.

The first group comprises the territories where applications for a series of trademarks are accepted, namely India, Hong Kong SAR, Malaysia and Singapore. In these territories, the easy approach would be to register both the coloured and black and white versions of the same mark in a single application, which would grant the owner protection for any colour.

The second group comprises Indonesia and Macao SAR, where a trademark owner faces a real risk of not being able to enforce
his trademark rights if his mark is not used exactly in the same form (and colour) as it is registered. Trademark owners are recommended to err on the side of caution, and to file separate applications to register the coloured and black and white versions.

The third and final group comprises all the remaining territories, where the law is settled that registration of a mark in black and white grants protection over all colours. In these territories, trademark owners may rest assured that their trademark registrations in black and white would be sufficient protection.

Looking forward

While the current trademark laws in Asia appear to be generally in favour of black and white marks, the situation may change with new legislative developments.

With a new government set to take over in Myanmar, the long promised IP laws may finally be enacted. Member states of the Association of Southeast Asian Nations (ASEAN) had collectively agreed to accede to the Madrid Protocol, with Laos being the latest to become a contracting party. The remaining five countries are expected to review their existing IP legislation in their move towards accession within the next few years. It would be wise to keep an eye on the region in the meantime.

This article was originally published on Inside Counsel on January 22, 2016.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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