ASEAN intellectual property office

I was privileged to participate as panelist in one of the sessions of the ASEAN Intellectual Property Association (ASEAN-IPA) conference held in Singapore last week, March 1-3. The topic of the session was "Regional System, Regional Office: Revisited."

By way of background, the ASEAN-IPA was created following the adoption of an "ASEAN Framework Agreement on Intellectual Property Cooperation." The objective of the organization is, among others, "to foster ties of mutual friendship. Cooperation and understanding among those in the private sector who are concerned with intellectual property in the ASEAN countries…" The ASEAN Working Group on Intellectual Property Cooperation (AWGIPC) recently consulted the organization regarding the possible implementation of either an intellectual property regional system or a regional office in ASEAN.

During the said ASEAN-IPA conference, the moderator from Singapore defined regional system as referring to a system involving regionwide unified or highly harmonized intellectual property (IP) laws. The member States will continue to issue registration based on their local laws. There will be NO regional registration system in place.

On the other hand, a regional office contemplates a centralized intellectual property office that will process and examine applications for registration of IP rights. The Regional office can issue an ASEAN registration, similar to the concept of a community trademark system in Europe. Domestic registration issued by member States may continue and co-exist with the regional registration.

When asked to deliver my comments, I started by recalling the recent initiatives of the ASEAN heads of states to create a single market economy in the region. The idea of a single regional market prompted ASEAN members to revisit an ideal structure for protecting IP rights in the region.

I mentioned that a single regional market means that member states promote trade competition within the region and that restrictions preventing free movement of goods must be eliminated. In other words, a system must be developed to prevent distortions of competition. The idea of a single market may arise as a consequence of efforts to achieve economic integration, such as the European Common Market.

Notwithstanding the strong economic reasons underpinning the concept of a single regional market economy, I emphasized that a regional market will be a result of a political decision among all the member States. Consequently, it may have the following effects that member States have to observe:

1. Legal measures (laws and regulations) must be introduced to implement the desired regional or single market.

2. The absence of a political union or a region-wide government necessitates the creation of a regional office and a regional court of justice. These agencies will be responsible for regulating and interpreting the laws and regulations introduced by member States to achieve a single regional market.

The issue of whether it is feasible to arrive at a consensus among member states to agree to the establishment of a regional office could be the subject of a protracted discussion. However, the discussion should bear in mind the objective of this exercise: Economic integration through a single market economy.

In the case of IP rights, a regional office issuing a regional registration is more consistent with the objective of achieving economic integration. A regional IP registration will require from the member States a uniform standard of practice and set of requirements for the region.

Under this arrangement, the national system may still co-exist with the regional registration. While member States continue to issue national registration, their local IP system should at least be consistent with the principles behind the creation of a single market economy.

Without a regional office, it will be extremely difficult to achieve the economic integration desired by member States. To illustrate, IP rights are currently being used to prevent the free movement of goods from one ASEAN country to another. In a single market economy, these restrictions must be eliminated and a system must be developed to prevent distortions of competition.

We anticipate that a single market arrangement will challenge the long-standing national territoriality principle of IP protection. In a trademark law sense, a single market may limit the trademark owner’s right to divide the market or regulate the distribution of goods within the region. On the other hand, the use of a mark in any part of the region will be considered use in his home country for purposes of maintaining a trademark registration or determining a trademark reputation.

Hence, it has been said that a regional office with powers to grant registration, such as the community trademark system (in Europe), is more consistent with market integration.

Since I was asked to focus on a regional trademark registration, I suggested revisiting efforts to harmonize the following aspects of trademark law principles:

1. Use of the mark – The use in any part of the region should be considered use in the home country. However, an issue will arise if an icon, device or words is displayed in a website accessible in a country where similar mark is registered in the name of another party.

2. Definition of a "famous mark" – Each country may have its own interpretation of what would constitute a famous mark.

3. Scope of protection – The countries will decide whether a trademark owner can prevent the use of identical marks on unrelated or non-competing products.

4. Registration of color, sound and smell – The issue involving registration of these "marks" have yet to be clarified.

In this regard, it would be advisable to examine experiences in the European common market on how these issues were addressed.

By way of conclusion, I reiterated that we are past the debate whether we should have a single market. It can be said that the European common market may be difficult to follow. But it reminded me of a remark made by an acquaintance: "The European model continues to work because there is a common desire among its members to follow precedence. The system of its neighbors works; hence, it might work with us also."

We can strive to make the regional system work for us too. In a global economy, we need all the support we could get from our neighbors.

(Atty. Fider is a Partner of ACCRALAW. He obtained his LLM from Queen Mary College University of London and Bachelor of Laws from the University of the Philippines. He can be contacted at telephone number 8308000 or thru email [email protected].)