By P. Kandiah
Businesses have started to multiply their corporate assets in the ASEAN countries by taking advantage of RCEP provisions.
The signing of the Regional Comprehensive Economic Partnership (RCEP) has injected new momentum for businesses to multiply their corporate asset value in the RCEP countries (Australia, Brunei, Cambodia, China, Indonesia, Japan, Laos, Malaysia, Myanmar, New Zealand, the Philippines, Singapore, South Korea, Thailand, and Vietnam). What is the RCEP? Well, simply put – it is a large free-trade zone.
As Intellectual Property (IP) rights such as patents, trademarks (brands), and industrial designs are becoming the new corporate wealth or valuable corporate assets in today’s business world, it is not surprising that IP had a chapter on its own in the RCEP provisions.
It is important for Malaysian businesses to take advantage of the RCEP provisions by acquiring IP rights in all the RCEP member countries, at least for a start in the ASEAN countries. Here are some FAQs on IP rights and RCEP that are frequently asked by our clients:
1. Is it necessary to register my IP right in each RCEP country?
Yes. IP rights are statutory rights granted under the national laws of each country. Each IP right has to be applied for in each country under the laws of that country. An IP right granted in a country is only enforceable in that country. However, the IP Laws of the RCEP countries are harmonised such that the laws are fairly uniform in all the RCEP member countries.
2. Is it necessary to apply to register the IP right in all the RCEP countries simultaneously?
No, it is not necessary. If an IP right is applied for in one country, then an identical application for the IP right can be applied for in all the other RCEP countries and one can claim priority right under the Paris Convention. For patents and trademark applications the maximum priority period allowed is 12 months from date of first filing while for industrial design right the priority period is 6 months from the date of first application.
3. If I appoint a trademark agent in one country, can the same agent apply to register the same trademark in another RCEP country?
Each country, under its national IP laws, will require that the IP right application must be handled by a trademark agent authorised to practise in that country. For example, an agent in Malaysia who handles your trademark application in Malaysia before the local IP Office (MyIPO) cannot by himself apply to register the same trademark in say, Thailand or Vietnam. He may, however, engage the services of a local trademark agent in that country to handle the application in that country. Similar provisions apply for the registration of patents and industrial designs.
4. I manufacture a food product in Malaysia under my own trademark. Can I export the same product to other RCEP countries using the same trademark?
There are two issues to be considered here.
First, your food product – before it is distributed for sale in another RCEP country, it must satisfy the requirements of the food and labelling laws of that country, which may be different from that in Malaysia. The food laws relate to nature of ingredients, colouring agents, preservatives and etc. included in the food product.
Secondly, your trademark for the food product should not infringe any other trademark for food products in that country.
So is advisable to clear both the potential hurdles first before you export the product. A quick check of the register of trademarks in that country would reveal whether your trademark for your food product is likely to infringe an earlier registered trademark. Further, you should obtain clearance from the regulatory authorities with regard to compliance to its food and labelling laws in that country.
5. Can I licence my IP right to another manufacturer and sell the product in another country?
Yes, the IP laws of each country do provide for grant of IP rights licences which licences may need to recorded in the IP Office of that country.
6. Can I prevent the import into Malaysia, of a similar product bearing an identical or confusingly similar trademark to my product from another RCEP country?
If you have registered your trademark in Malaysia, you can stop the import and distribution of a product of the same class of products bearing a trademark which is identical or confusingly similar to your trademark. On the other hand, if your trademark is not registered in Malaysia but you have been using the trademark for a product in the country for a long time, you may be able to stop the import and distribution of the product by initiating a passing off action in the IP court.
Note: This article is not to be taken as legal advice. It is merely for information purposes. If you have any specific questions on the issues discussed here, please contact us for a considered opinion. Established in 1999, with offices in Malaysia, Singapore, Indonesia, Thailand, Vietnam and Myanmar, KASS and its team will be able to advice and manage your IP rights in a cost beneficial manner in all these countries.