Worldwide: Overview Focus: Trademark Registration In Asian Countries

Last Updated: 9 July 2018
Article by STA Law Firm
Most Read Contributor in United Arab Emirates, November 2018
Country and Applicable Legislation Length of Trademark (in years) Trademark Definition Eligible Applicants Documentation Requirement Language Requirement and Procedures Treaty/ Classification Treaty/Classification Benefits
Afghanistan The Trademark Law Number effective from 1 September 2009 (as amended) repealing Trademark Regulations issued on 20 September 1960. 10 Article 2 of the Afghanistan Trademark

Law defines 'Trademark' to include:

 

Trademarks consist of (one or more)

names, words, signatures, letters,

figures, drawings, symbols, titles, seals,

pictures, inscriptions, advertisements or

packs or any other mark or a combination 



  1. Person(s)  desiring to have the exclusive use of a trademark for distinguishing goods for their own production, manufacture,

    selection or in respect of which he issued a

    certificate (Article 4);

  2. Goods in which applicant trades or intends to trade (Article 4);

  3. The owners of a commercial, industrial,

    telecommunications, agricultural, professional or service organization in Afghanistan (whether domestic or foreign) provided that marks are registered in Afghanistan (Article 5); and

  4. owners of well-known marks (Article 7).

1. The trademark application with relevant application date is to be presented before Afghanistan Intellectual Property office (Ministry of Commerce);

2. name, address, the occupation of the applicant

3. a copy of a legalized power of attorney for any representative

4. name, description, and nature of goods, products and/or services for which trademark registration is sought;

5. representation of mark with at least 10 copies along with explanation of symbols and expressions used in the trademark with the definition of the component;

6. The registration fees payable to IP office in Afghanistan; and

7. The particulars of earlier registration in the home country or country having reciprocal arrangements with Afghanistan, if any (Article 10 of the Afghanistan Trademark Law also sets out the trademark application process).

Note: Alcoholic beverages are not

1. Application can be submitted in English or Persian. The

Afghanistan Intellectual Property Office (Central Registration

Office) is responsible for registration (including preliminary

search) in the UAE.

2. In the event of rejection, the Central Registration Office is obligated to notify the applicant as to reasons for rejection.

3. Trademarks are transferable and the transfer shall be valid if recorded

separately with the Central Registration Office (Trademarks Registration

Section)

1. Economic Cooperation Organization Trade Agreement seeking the cooperation of intellectual property rights protection under article 19.

Note: UAE is not a member of the

Madrid Convention or the Madrid Protocol.

Note: Nice Classification (9th Edition).

1. Paris Convention, WIPO or any other international treaty for the Protection of Industrial Property; are NOT signed by Afghanistan and hence an applicant cannot claim priority based on their home applications/ registrations. However reciprocal arrangements are considered.
Bangladesh. - Trademarks Act, 2009 Act No. XIX of 2009 and - Trademarks (Amendment) Act, 2015 - Trade Marks Rules, 1963 and; - Tradem 10 Section 2 of Bangladesh Trademark Law defines mark as "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, symbol, numeral, figurative elements, the combination of colors or any combination thereof;" and Trademark is defined as "a registered trademark or a mark used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and the person having the right as proprietor to use the mark;" or "a mark used in relation to a service so that it may be indicated that the person has the right as proprietor to use the mark in the course of trade". Section 15(1) of the 2009 Act states that if the proprietor of a trademark used or proposed to be used desires to register it shall apply in the prescribed manner to the Registrar. Accordingly, the following persons can apply for an application:-

1. Natural or juristic persons of Bangladeshi nationality;

2. persons regularly residing in Bangladesh and are permitted to engage in commercial or vocational activities;

3. foreigners who are nationals of countries that extend reciprocal treatment to Bangladesh;

4. Public agencies. and owners of well-known marks.

1. Application stating the name of the legal entity, individual, or firm, addresses, the nationality of applicant/s represented in a special or particular manner along with the signature of the applicant;

2. legalized Power of attorney in cases where the application is being submitted by a representative;

3. application along with mark representation must be submitted with supporting documents and should be lithographed or in the English language in large and legible characters with deep permanent ink on strong paper;

4. in relation to affidavits, prints should be on only one side of approximately 13 inches by 8 inches, and the left-hand part to a margin of not less than one inch a half;

5. every application for the registration of a trademark shall be in respect of goods in one class and the separate application for each class shall be made for the same trademark; and

6. statement of use, if used, the registrar may require the applicant to file an affidavit testifying

1. As per the rules of 1963 with amendments all applications, notices, statements or other except trademarks authorized or required by the Act or the rules submitted to the Trade Mark Registry or left with or sent to the Registrar or the Central Government shall be written, lithographed or in the English language.

2. In case of Mark containing characters other than Roman translation in English must be provided and in case of the mark containing words he The registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be enclosed and signed.

3. The application is made to the Trademark registry and as per section 15(2) separate applications must be made for each class of goods or services. The application shall be made on Form TM-1, if in respect of non-textile goods. Defensive trademark registration can be applied by TM-3 form.

4. The opposition can be made under section 18 of the act within two (2) months from the date of publication. The registrar shall serve the notice of opposition to the applicant within one (1) month.
1. Paris Convention for the Protection of Industrial Property;

2. Nice Classification;

3. Convention Establishing the World Intellectual Property Organisation (the WIPO); and

4. World Trade Organisation (the WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) (1994) (April 10, 1996)
1. Being signatory to Paris Convention, the priority claim can be made under the convention or by WTO members within 6(six) months after the date in which the application was made in Convention Country together with the complete particulars and the certified copy of the priority application, the trademark shall, if registered under section 120 of Act and be registered as of the date on which the application was made in the Convention Country and that the date shall be deemed to be the date of registration.
Brunei Darussalam The law providing for trademark registration is The Trade Marks Act (Cap 98) and Trade Marks Rules of 2000 (R 1, 1984 Ed. S 27/2000).

10 Under Part I of Brunei Darussalam Trademark Law: (Refer, section 4) Trademark is defined as "any visually perceptible sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trademark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging." As per section 33 of Brunei Trademark Law, the application can be made by "applicant" who has used the mark or has bona fide intention to use the mark. Accordingly following persons qualify as an applicant:-

1. Natural or juristic persons of Brunei

nationality;

2. persons regularly residing in Brunei and

are permitted to engage in commercial or vocational activities; 3. foreigners who are nationals of countries that extend reciprocal treatment to the Brunei;

4. public agencies; and

5. owners of well-known marks.
1. Request for registration of the trademark;

2. name and address of the applicant;

3. statement of goods and services in respect of which the trademark is sought to be registered;

4. representation of the mark;

5. statement in the application as to the use of Mark or Expression of bona fide intention to use the mark;

6. prescribed fee for each class of goods or services separately in respect of which registration is sought; and

7. Translations and/or transliterations if any required in English.
1. As stated under the rules a translation and /or transliteration, of each word in English to the satisfaction of the Registrar should be provided where a trademark contains or consists of a word/s in characters other than Roman or in a language other than English or Malay. 1. Paris Convention for the Protection of Industrial Property;

2. Nice Classification;

3. Convention Establishing the WIPO;

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

5. ASEAN Framework Agreement on Intellectual Property Cooperation sought to explore the vision of ASEAN trademark system by establishing ASEAN Trademark office. (treaty not in force);

6. Agreement between Japan and Brunei Darussalam for an Economic Partnership;

7. Trans-Pacific Strategic Economic Partnership Agreement; and

8. Agreement establishing
1. Priority Claim can be made under Paris Convention or WTO by nationals and body corporate residing or having permanent place of business in member states within 6 months from the first filing date.
2. Agreement between Japan and Brunei Darussalam for an Economic Partnership sought proper enforcement of intellectual rights including trademark and prevent infringements by cooperation in customs for prohibiting importation and exportation of goods suspected of infringing intellectual property rights.
Cambodia
Law Concerning Marks, Trade Names, and Acts of Unfair Competition of the Kingdom of Cambodia 2002, (Royal Decree NS/RKM/0202/006). Sub-Decree on the Implementation of trademark law (Sub- Decree No. 46 dated July 12, 2006). Prakas on the Procedures for the Registration and Protection of Marks of Goods which include a Geographical Indication.
10 Article 2 (a) of the Cambodian Trademark Law defines Trademark as 'mark' means "any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise" and trademark under 2(c) means the "name or/ and designation identifying and distinguishing an enterprise." The application can be filed by any person or body resident in the Kindom of Cambodia can be the applicant. When the State of permanent residence of the applicant is outside the Kingdom of Cambodia, then a Power of Attorney appointing an agent should be filed within 2 months of the filing of the application.

1. Natives of the natural or legal entity, practicing any of the commercial, industrial, professional, or service business;

2. foreigners of the natural or legal entity, practicing any of the commercial, industrial, professional, business in Cambodia.

3. foreigners of natural or legal entity practicing any of the commercial, industrial, vocational or service business in any state having reciprocity of treatment with the State;

4. public legal persons; and

5. owners of well-known marks.
1. a request for registration;

2. name of applicant and address for communication bearing signatures of the applicant or representative;

3. reproduction of mark with 15 additional reproductions of the mark;

4. specification of goods or services based on Nice classification;

5. if priority is claimed the application a declaration claiming the priority of an earlier national or regional application filed by the applicant or his predecessor in title in any country member of the Paris Convention; and

6. Translations as per requirements, if any.
1. As per article 4 of the Rule, applications shall be in the Khmer or English language, and any document forming part of an application or submitted to the Registrar pursuant to the Law or this Sub-Decree and which is in a language other than Khmer or English shall be accompanied by a Khmer or English translation. 1. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;

2. ASEAN Framework Agreement on Intellectual Property Cooperation (Not in force);

3. Paris Convention for the Protection of Industrial Property (22 September 1998);

4. Convention Establishing the WIPO;

5. World Trade Organisation (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994) (April 10, 1996)

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

7. Agreement between the United States of America and the Kingdom of Cambodia on Trade Relations and Intellectual Property Rights Protection; and

8. Memorandum on IP Cooperation between Cambodia and Thailand.
1. Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 90 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).

2. The applicant can claim right to priority by attaching a declaration claiming priority of prior national or regional application in any country member of the Paris Convention.

3. Agreement between the United States of America and the Kingdom of Cambodia on Trade Relations and Intellectual Property Rights Protection – the Article XVI commits to co-operate on registration and recognization by harmonizing the requirements stating the meaning of marks, use as necessary criteria for maintaining the registration validity and adoption of the international classification.

4. Madrid protocol aids international registration of marks.
China
Trademark Law of the People's Republic of China amended for the third time according to the "Decision on the Revision of the Trademark Law of the People's Republic of China" adopted at the 4th Session of the Standing Committee of the Twelfth National People's' Congress on August 30, 2013)
10 Article 8 of Republic of China Trademark Law provides "an application may be made to register as a trademark any mark, including any word, device, any letter of the alphabet, any number, three-dimensional symbol, color combination, and sound, or any combination thereof, that identifies and distinguishes the goods of a natural person, legal person, or other organization  

Note: China allows registration of sound and color marks
Article 4 of the Chinese Trademark law provides:-

1. Natives of the natural or legal entity, practicing any of the commercial, industrial, professional, or service business;

2. foreigners of the natural or legal entity, practicing any of the commercial, industrial, professional, or service business in the State. 3. foreigners of the natural or legal entity practicing any of the commercial, industrial, vocational or service business in any state having reciprocity of treatment with the State;

4. public legal persons; and

5. owners of well-known marks.
1. Under rule 9 of implementing rules, applicant must file one application in respect of each class of goods according to the Classification of Goods stating name and address. The application must be in the Chinese language;

2. ten copies of the reproductions of Clear trademark and one copy of the black and white design with the size between minimum 5cm*5cm and maximum 10cm*10cm (the Soft copy should also be provided);

3. any application for the registration of a trademark in respect of pharmaceutic products for human use shall be accompanied by a certificate issued by the health administrative department. Any application for the registration of a trademark in respect of cigarettes, cigars or cut tobacco with packages shall be accompanied by a certificate of authorized manufacture issued by the competent authority of the State for tobacco products. Any application for the registration of a trademark in respect of any such other goods as prescribed by the State that must use a registered the trademark shall be accompanied by a certificate of authorization issued by the competent department concerned;

4. details of goods and service;

5. power of attorney duly executed by the applicant in favor of the agent;

6. copy of ID card or Passport (for the natural person); and

7. any document in a foreign language shall be accompanied by a Chinese translation thereof.

1. Under rule 14 of Implementing Rules - where a foreigner or a foreign enterprise applies for the registration of a trademark or for any other matters concerning a trademark, the Chinese language shall be used. Foreign language documents must be have Chinese translation.

2. Once an opposition is filed against the application the Trademark Office shall hear the facts and grounds submitted by the opposing party as well as the opposed, shall make a decision on whether or not to approve the application for registration within the twelve months from the date of publication after investigation and verification, and shall notify the opposing party and the opposed of its decision, in writing. If an extension is needed, upon the approval of the department of industry and commerce administration under the State Council, the time limit can be extended a further three month
1. Paris Convention for the Protection of Industrial Property;

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

3. Convention Establishing the World Intellectual Property Organisation (the WIPO);

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

5. Trademark Law Treaty;

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

7. Free Trade Agreement between the Government of New Zealand and the Government of the People's Republic of China;

8. Agreement between Japan and China with Regards to Protection of Trademarks;

9. Singapore Treaty on the Law of Trademarks
1. Any foreign person or enterprise applying for the trademark in China has to file the application in accordance with the agreement between two countries, or international treaties or on the basis of principles reciprocity. 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;

2. Free Trade Agreement between the Government of New Zealand and the Government of the People's Republic of China under chapter 12 seeks to keep rights transparent by notifications and thereby protect the intellectual property rights including trademarks.

3. Agreement between Japan and China with Regards to Protection of Trademarks grants parties from contracting states protection of the well-known trademark as per their determination of well-known trademark.

4. Special provisions relating to the protection of trademarks through international registration under the Madrid protocol are laid down under Chapter IVA of 2010 Act for the international application under Madrid protocol. Before becoming the member of this protocol individual application was required to be made by the applicants seeking international trademark protection.

Hong Kong
Trade Marks Ordinance as amended by L.N. 254 of 2009;   Trade Marks Rules (E.R. 3 of 2015); Trade Marks Ordinance Regulation.   Trade Marks Ordinance (Amendment of Schedule
1) Regulation 2013 (HK190)
10 Under section 3 of the Hong Kong Trade Marks Ordinance (as amended by L.N. 254 of 2009) trademark is defined as:

1. "trademark" means any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically;

2. Without affecting the generality of subsection (1), a trademark may consist of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, the shape of goods or their packaging and any combination of such signs.

3. A sign may constitute a trademark even though it is used in relation to a service ancillary to the trade or business of an undertaking and whether or not the service is provided for money or money's worth. (4) Unless the context otherwise requires, references in this Ordinance to a trademark shall be construed as including references to a certification mark, collective mark and defensive trademark..'
The Hong Kong Trademark Law does not specifically set out this information within its Acts or Rules. However, a bare reading of HK's IP Law implies that following persons are eligible:

1. Natives of the natural or legal entity, practicing any of the commercial, industrial, professional, or service business;

2. foreigners of natural or legal entity, practicing any of the commercial, industrial, professional, or service business in the State.

3. foreigners of the natural or legal entity practicing any of the commercial, industrial, vocational or service business in any state having reciprocity of treatment with the State;

4. public legal persons; and

5. owners of well-known marks.
1. Under section 38 of the Ordinance: An application for registration of a trade mark shall be filed with the Registrar in any of the official languages such as English and/or Chinese;

2. the application shall include (a) a request for registration of the trademark;(b) the name and address of the applicant; (c) a statement of the goods or services in relation to which it is sought to register the trademark; (d) a representation of the trademark; and (e) such other information, documents or matter as may be required by the rules;

3. classification of goods and services under Rule 5 of Rule 2015 and section 40 of the Ordinance is classified in accordance with the International - Nice Classification;

4. under rule 9 of 2015 rules the applicant wishes to claim a right to priority under section 41 of the Ordinance, shall include the following particulars- (a) the name of each country, territory or area in respect of which a right to priority is claimed; (b) the date of filing of the application filed in, or in respect of, each such country, territory or area; and (c) the application number assigned to that application, if it is known to the applicant;

5. translations, if any, of any word, letter or character in a language other than English or Chinese, the Registrar may require the

applicant to file an exact translation of that word, letter or character into English or Chinese; and

6. Any other documents required to be verified by the Registrar.
The application form is submitted in French language. Once the marks have been published in the Official Gazette, there is a set term of sixty (60) post publication date to file for opposition claims relating to domestic registrations. In case of international applications, the term is set for two (2) months from the date mark is published in Gazette. opposition term cannot be extended. 1. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks ; 2. Madrid Agreement Concerning the International Registration of Marks; 3. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; 4. Paris Convention for the Protection of Industrial Property ; 5. Trademark Law Treaty ; 6. Convention Establishing the World Intellectual Property Organization ; 7. Paris Convention for the Protection of Industrial Property ; 8. World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) Morocco is a member of the Paris Convention. An applicant who has applied for a trade mark in another convention country is entitled to a priority right to be accorded the same date as the first filed application, provided the Moroccan application is filed within six months of such earlier filing date. Morocco is also a member of the Madrid Agreement and Protocol, so that registration of a trade mark may be obtained by way of an international application designating Morocco. Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 90 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs)
India

The Trademark Act, 1999 amended by The Trade Marks (Amendment) Act, 2010 and Trade Marks(Amendment) Rules, 2013
10 Per 1999 Act - section 2 (zb) "trademark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours in relation to Chapter XII (other than section 107), a registered trademark or mark 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, as the case may be, and some person having the right as proprietor to use the mark, and in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of the permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark." Section 2 m defines mark as " "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. section 18 (1) of India's Trademark Law authorizes following persons or entities to make the application:

i. Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trademark.

ii. section 36B (a) under chapter IVA as added after 2010 amendment states special provisions relating to the protection of trademark through the international registration under the madrid protocol wherein the application can be made by a person who is a citizen of, or is domiciled in, or has a real and effective industrial or commercial establishment in, that Contracting State or a State which is a member of that Contracting Organisation, as the case may be.

iii. A single application can be made by different classes of goods and services and fees in respect of each such class (application is examined by the Indian Trade Marks Office)
1. The application under form prescribed as per rules stated in the first schedule of the 1999 Act along with fee;

2. soft Copy of Mark;

3. date of first use of the mark;

4. name, address, and nationality of the applicant;

5. trademark class/classification based on international classification;

6. list and description of goods or services;

7. if the mark is a script not in English or Hindi, the English translation of the mark;

8. if the application is to claim priority from an earlier filed convention application, details stating number, date, country and goods/services of that application is required. A certified priority document or it's duly the notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is required; and

9. Power of attorney simply signed by the applicant in favor of the agent.

For Collective Marks:

1. The application shall be accompanied by regulations governing the use of such collective mark; and

2. the Regulations shall specify the persons authorized to use the mark, conditions of membership of association and conditions of use of the mark and sanctions against misuse of the mark.

For Certification Marks:

1. Application for Certification marks shall be accompanied by a draft of regulations. It shall include provisions regarding cases in which the proprietor is to certify goods or services and authorize the use of certification trademark; and

2. Any other provision which the registrar may require to be inserted. The application by applicant stated under section 18 shall be made in prescribed manner to the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India is situated. Where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application is situated.
1. The application under section 18 must be in English Section 67 B of Trademark amendment 2013 Rules amending 2002 rules states "An International application or any communication relating there too for transmission to the international bureau or any advice by way of notification of extension of protection to India resulting from international registration shall be in English".

2. A translation of non-English words into English is required in case of script is in language other than English or Hindi.

3. Any opposition must be made within four months from the date of the advertisement or re-advertisement (as amended by 2010 Act) of an application for registration or within such further period, not exceeding one month in the aggregate on payment of the prescribed fee and give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.

4. The Registrar shall serve a copy of opposition on the applicant within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application.

5. If the applicant sends such counterstatement, the Registrar shall serve a copy thereof on the person giving notice of opposition.

6. The Registrar shall decide the matter based on the evidence produced after hearing the parties grant or reject the application or grant with any limitations.

7. Once accepted the Registrar issues a certificate, sealed with the seal of the Trademarks Registry.
1. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;

2. Paris Convention for the Protection of Industrial Property.

3. Nairobi Treaty on the Protection of the Olympic Symbol;

4. Comprehensive Economic Partnership Agreement between Japan and the Republic of India including inter alia protection of trademark under Article 106 of the Treaty.

5. Memorandum of Understanding between Switzerland and India for fostering protection and promotion of IP related rights including trademarks.

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

7. Agreement establishing the World Trade Organization (WTO)

1. Comprehensive Economic Partnership Agreement between Japan and the Republic of India grant parties from contracting states Article 106 protection of the well-known trademark as per their determination of well-known trademark. A request by the applicant for considering its application for registration of a trademark be examined in preference to other applications shall be considered.

2. Special provisions relating to the protection of trademarks through international registration under the Madrid protocol are laid down under Chapter IVA of 2010 Act for the international application under Madrid protocol. Before becoming the member of this protocol individual application were required to be made by the applicants seeking international trademark protection.

Indonesia

Trademark Law Number 15 of 2001   Indonesian Government Regulation No. 7 of 2005 on Organizational Structure, Duties and Functions Trademark Appeal Commission to implement Article 34 of Law No. 15 of 2001.

10 Article 1 of Indonesia's Trademark Act (15 of 2001) defines Mark under article 1.1 as "Mark shall mean a sign in the form of a picture, name, word, letters, figures, the composition of colors, or a combination of said elements, having distinguishing features and used in the activities of trade in goods or services.

Trademark is defined under Article 1.2 as "Trade Mark shall mean a mark that is used on goods traded by a person or by several persons jointly or a legal the entity to distinguish the goods from other goods of the same kind.
As per the definition of the applicant under article 1.6 applicant/s can be any party that files an application. Indonesia recognizes 'first-to–file' system. As also understood from article 3 anybody whether an owner/user or not if applies first for registration can become the registered owner of the mark which is finally accepted after completing due process.

Under article 10 if an applicant resides or permanently domiciles outside the territory of the Republic of Indonesia the application must be filed through a proxy in Indonesia.

A written and the signed application shall be filed in the Indonesian language under article 7 stating:

1. Date, month and year

2. Complete name, nationality, and address of the applicant

3. Complete name and address of proxy (if applicable)

4. Colors (if the mark uses color elements)

5. Country and filing date of original application (if the application is filed for

priority right).

6. The application shall be signed by the applicant or his proxy.

7. Receipt of the payment.

8. If the application filed by more than one person who is jointly entitled to the mark the application shall be signed by one of the applicants entitled to the mark and be furnished with a written consent from them.
1. Applications have to be filed in the Indonesian language;

2. 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.

3. ASEAN Framework Agreement on Intellectual Property Cooperation sought to create co-operation on the protection of intellectual property rights and seeks to create ASEAN trademark registration system and is applicable to Indonesia.

4. Trademark law treaty aimed at harmonization of procedures which has been achieved to the certain extent.
1. Trademark Law Treaty

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) (1994)

5. ASEAN Framework Agreement on Intellectual

Property Cooperation.

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.

2. ASEAN Framework Agreement on Intellectual Property Cooperation sought to create co-operation on the protection of intellectual property rights and seeks to create ASEAN trademark registration system.

3. Trademark law treaty aimed at harmonization of procedures which has been achieved to certain extent.

Japan

Trademark Act (Act No. 127 of April 13, 1959, as amended up to Act No. 36 of May 14, 2014)

10 Japanese Trademark Law defines "Trademark" (Article 2 of Law) to include among those recognizable by human perception, any character(s), figure(s), sign(s) or three - dimensional shape(s) or colors, or any combination thereof, sounds, etc. provided by Cabinet Order (hereinafter referred to as a "mark") which is: (i) used in connection with the goods of a person who produces certifies or assigns the goods as a business; or (ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in article 4: unregistrable trademark) Any person or legal entity can register the trademark. Japan also adopts the first-to-file the system in which the registration is granted to a person who has first filed an application when an application for similar or identical trademark is filed, regardless of whether the trademark has been used previously. 1. Name and the domicile or residence of the applicant for trademark registration;

2. samples of trademark (between 8cm*8cm and 15cm*15cm);

3. the description of goods and services and class of goods or services provided by Cabinet Order as provided for in Article 6(2);

4. the application shall contain thereof a statement indicating a the trademark consists of the following as listed herein; a. any character(s), figure(s), sign(s) or three dimensional shape(s) or colors, or any combination thereof, where the said character(s), figure(s), sign(s) or three- dimensional shape(s) or colors in connection with the said trademark changed;

b. consists of the three-dimensional shape(s) (including the combination with any character(s), figure(s), sign(s) or three-dimensional shape(s) or colors, or any combination thereof) (excluding those listed in the preceding item);

c. consists solely  the of colors (excluding those listed in item (a);

d. consists solely of sounds; or

e. in addition to those listed in each of the preceding items, trademarks provided by Cabinet Order of the Ministry of Economy, Trade and Industry;

5. the indication of the trademark being "standard character trademark"

after trademark is sought for registration with item be above.

6. Power of attorney duly made.

7. certified copy of priority claim to seek claim under article 8 within six months from the date of application filed in member country.

1. The application and the mark are preferred in Japanese language. In a case where transliteration translation of mark is described, the examiner can use it as a reference for examination. Since the popular naming or concept of said trademark must be determined by considering the degree of recognition by Japanese consumers, the use of such description will be left to the judgment of the examiner.
  1. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
  2. Trademark Law Treaty
  3. Nice Agreement Concerning the InternationalClassification of Goods and Services for the Purposes of the Registration of Marks
  4. Paris Convention for the Protection of Industrial Property
  5. Convention Establishing the World Intellectual Property Organization
  6. Agreement establishing the World Trade Organization (WTO)
  7. World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
  8. Agreement between Japan and China with Regards to Protection of Trademarks
  9. Comprehensive Economic Partnership Agreement between Japan and the Republic of India including inter alia protection of trademark under Article 106 of the Treaty.
  10. Agreement between the Government of Japan and the Government of Malaysia for an Economic Partnership.
  11. Agreement between the Government of Japan and the Government of Malaysia for an Economic Partnership for streamlining and Harmonization of Procedural Matters in Intellectual property including trademark under article 121.
  12. Agreement between Japan and the Kingdom of Thailand for an Economic Partnership for harmonizing and streamlining the procedure and mutual co-operation for trademark protections.
  13. Agreement between Japan and the Socialist Republic of Viet Nam for an Economic Partnership
  14. Agreement between Japan and Brunei Darussalam for an Economic Partnership
  1. Japanese national or foreign national residing or domiciled in Japan (or juristic person) can file an application for international registration of trademark, by Madrid Protocol, where requirements provided by Ordinance of the Ministry of Economy, Trade and Industry are applicable.
  2. Japanese Patent Office has released the 'International Classification of Goods and Services, 10th Edition, Version 2015 in Japanese translation with similar group code'. Hence uniform classification is applicable to all applications.
  3. Comprehensive Economic Partnership Agreement between Japan and the Republic of India grant parties from contracting states Article 106 protection of the well-known trademark as per their determination of well-known trademark. A request by the applicant for considering its application for registration of a trademark is examined in preference to other applications shall be considered.
  4. Agreement between the Government of Japan and the The government of Malaysia for an Economic Partnership for streamlining and Harmonization of Procedural Matters in Intellectual property including trademark under article 126 protection of trademarks to the registered owner under article 132.
  5. Agreement between Japan and the Socialist Republic of VietNam 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, including applications, translations into a language accepted by such authority of any earlier application whose priority is claimed, powers of attorney, and certifications of assignment, in the course of application procedure. Further, protection of the trademark.
  6. Agreement between Japan and Brunei Darussalam for an Economic Partnership sought proper enforcement of intellectual rights including trademark and prevent infringements by co-operation in customs for prohibiting importation and exportation of goods suspected of infringing intellectual property rights.

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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