Cambodia and Thailand have made modifications to the rules and regulations related to their trademark application filing procedures as part of the ongoing South East Asia region-wide trend towards electronic intellectual property processes.
From 25 May 2017, applications for registration of marks in Cambodia can be filed using a new online filing (e-filing) platform.
Access to the online filing platform is available by making a written request to the Department of Intellectual Property Rights (DIPR) for a user name and password. Access is only available for applicants with permanent residence or commercial establishments in Cambodia; and trademark agents residing and practicing in Cambodia. Foreign applicants without residences or commercial establishments in Cambodia cannot file trademark applications in their own name under the paper-based system, and thus access to the e-filing platform is also not granted to such entities, but to their legal agents instead.
At this stage the e-filing platform can only be used to file new trademark applications, allowing users to upload application forms and related documents directly onto the system. However, where original documents are required, such as a notarized power of attorney or priority documents, it is not possible to upload scanned copies of the relevant documents, and the originals are still required to be filed in hard copy within 2 months of the (online) Filing Date. All post-application-filing correspondence with the DIPR, such as office action responses, are also still required to be submitted in hard copy, in person. Communications issued by the DIPR, such as notices of provisional refusal or of acceptance and original registration certificates, will remain paper-based. Application fee payments for applications filed online are made online via electronic payment services of 3 cooperating banks: ACLEDA, Canadia and Foreign Trade Bank).
Importantly, the DIPR’s new online trademark services also include a new searchable database of prior trademark registrations and applications accessible to the public. Prior to the platform’s launch in May, searches for prior identical or similar marks in Cambodia were undertaken exclusively by the DIPR, and the only channel to conduct such searches was to submit a search request to the DIPR directly. Now, the public, including professional trademark agents, can conduct searches in the online database themselves, reducing turnaround time and increasing efficiencies.
Online filing has been available in relation to trademark applications in Thailand since 2005, and the Department of Intellectual property (DIP) is constantly making improvements to its online filing platform. Currently, trademark applications, as well as communications with the DIP, e.g. office action responses, can be filed through the online platform, while relevant office fee payments must be made within 24 hours and submission of hard copies of documents as filed online must be effected within 15 days of the online document filing date.
On 23 June the DIP, in its Notification on Trademark, Service Mark, Certification Mark and Collective Mark Application and Other Official Forms, announced the replacement of all trademark official forms with new versions designed to be conducive to the electronic filing process. Although the short notice of this change has created some challenges for trademark practioners, the new forms, effective from 3 July 2017 in relation to paper filings, are in a format that allows faster information extraction by the DIP, bypassing the time-consuming outsourced data-entering function, resulting in reduced prosecution time. The same new forms will also be applicable in relation to online filings in the near future, allowing a more efficient interface.
The changes that Cambodia and Thailand have implemented are aligned with the general IP field trend of moving towards electronic processes for IP in the countries of South East Asia. In March 2017, Vietnam launched an online filing platform for industrial property applications, which has facilitated over 700 applications since the launch date. In addition, WIPO’s involvement in Cambodia’s new online trademark platform signifies international acknowledgement and positive cooperation in the region’s systems modernization efforts. Finally, the further enhancements in the Thai electronic filing processes are a positive step in increasing IP efficiencies. Such efforts offer increased efficiencies to domestic and international business operators in terms of intellectual property registration, maintenance, protection and enhancement.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.