Submitting Trademark Registrations Along The Belt & Road Initiative

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Op/Ed by Chris Devonshire-Ellis 

Over 130 countries have signed MoUs recognizing China’s Belt & Road Initiative, which as infrastructure projects now near completion, offer investment and trade opportunities for other foreign investors. These range from both exporting products from these nations to China, to taking advantage of the new opportunities the infrastructure build in the various Belt & Road countries will bring. But how can businesses protect their brands when investing in and selling to China and the Belt & Road countries?

The Madrid Agreement – Member States

The majority of international trademark applications are lodged under the Madrid Agreement, administered by the World Intellectual Property Organisation (WIPO), where trademark applicants can submit one application to protect their work within a coalition of 122 countries. These include China, the European Union and the United States among many others that recognize these international trademarks. They all follow similar application protocols and procedures to allow mutual recognition and operational filing standards. A full list of these countries can be viewed here.

However, while the Madrid Agreement should offer practical and easy assistance in both filing and protecting your brand, it is good business practice to ensure that this remains the case by filing in other countries as well, even if the target market is a signatory to the Madrid protocol. This is an inexpensive practice, however negates the ability for any other third party to register your brand, a situation that in theory should not happen but in practice does. Illegal trademark appropriation and infringements unfortunately occur far too often; and solving the problem is difficult, expensive, and disruptive. This makes it desirable to go the extra mile and get brands registered wherever you intend to develop a market.

China Trademark Registration

It is important to register your trademark especially when selling overseas, and this includes China. It should be noted that even with the Madrid Agreement in place, problems can occur if marks are not registered in other signatory countries. If this simple, inexpensive legal procedure is not carried out, the small cost involved can backfire if not completed by your business – as unscrupulous businesses could register your mark as belonging to them. That can create all sorts of legal problems, be extremely expensive to sort out, and lose you a complete market.

With China’s middle class alone reaching 550 million consumers and continuing to grow, a trademark problem is not an issue you want to have to deal with. China amended its Trademark laws last year, a subject we covered extensively in the article China’s 2019 Revised Trademark Law: What’s New? 

Fanny Zhang, in Dezan Shira & Associates Beijing office, regularly advises and files trademarks in China on behalf of international clients; for advise on the issue contact her at beijing@dezshira.com to ensure you are fully aware of the risks and can take appropriate measures to protect your business. We stress: trademark registration is not an expensive process, but it is absolutely necessary when selling branded products too, or conducting business in overseas markets.

Other International Trademark Protocols

The African Intellectual Property Organization (OAPI) & the Madrid Agreement
While OAPI as a bloc follows the Madrid protocols, it only includes the following African countries:  Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, the Comoros, the Congo, Côte d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, the Niger, Senegal, and Togo.

Non-Madrid Agreement Countries
However, this still leaves numerous nations who have signed up to China’s BRI but who are not part of the Madrid Agreement on International Trademarks. They may be members of WIPO however have not agreed to the Madrid international protection protocols. These include: Angola, Bangladesh, Burundi, Cape Verde, Chile, Cook Islands, Costa Rica, Djibouti, Dominica, Ecuador, El Salvador, Ethiopia, Fiji, Grenada, Guyana, Iraq, Jamaica, Kiribati, Kuwait, Lebanon, Libya, Maldives, Micronesia, Myanmar, Nepal, Nigeria, Niue, Pakistan, Panama, Papua New Guinea, Peru, Qatar, Saudi Arabia, Seychelles, Solomon Islands, South Africa, South Sudan, Sri Lanka, Suriname, Tanzania, Timor-Leste, Tonga, Trinidad, Uganda, UAE, Uruguay, Vanuatu, Venezuela & Yemen.

This means that significant countries and markets in Africa, the Middle East, Asia and Latin America require specific treatments when looking at protecting trademarks.

Africa 
African countries not part of the Madrid Agreement each require individual filing in their respective countries. This includes important markets such as Ethiopia, Nigeria, South Africa and Tanzania.   

Middle East 
Middle Eastern countries not part of the Madrid Agreement require individual trademark filings in their respective markets, including Iraq, Lebanon, Libya, Qatar (important for the upcoming 2022 World Cup Soccer Finals), Saudi Arabia, the UAE (although one registration covers all the seven emirates) and Yemen.

Asia 
Important emerging Asian markets such as Bangladesh, Myanmar, Pakistan, Sri Lanka and Nepal all require individual in-country filings.

Central & South America 
Costa Rica, Panama and many of the Caribbean Islands such as Jamaica require individual filings. Several South American countries also require individual filings including important markets such as Chile, Ecuador, Peru, Uruguay and Venezuela.

There can be significant differences between both the concept of marking and the protocols of doing so in these countries. We can look at these as follows:

The First To File Concept 
Many countries adopt a ‘first-to-file’ principle, whoever files the trademark application first acquires the ownership rights. This is in stark contrast to the USA approach. This means that it is essential to register well in advance of the effective start of business activity in order to ensure such use is protected.

The First To Use Principle 
This differs from the above as under this concept, the owner of a brand is the first to use it, not the first to register it. According to this principle, the bona fide use of an unregistered mark may be invoked against third-party holders of a subsequent registration, thereby vetoing any of the subsequent company’s rights.

Timescales 
Due to the lengthy waiting periods to obtain trademark protection (anywhere from 18 months to three years), and the fact that protection only subsists once registration has been obtained, it is advised that businesses wishing to register a mark allow plenty of time for protection to arise before entering the market.

Translations 
Many countries require a translation if the mark is in a foreign language. When doing so, it is strongly advised to register a corresponding version using a translation, both to avoid risks of counterfeit competitors and excluding your mark from a share of the market and therefore potential customers.

Numerous countries also use specific language scripts, such as Arabic, Brahmi, Characters and other stylized lettering and numerals. These may also require additional marking in specific territories to protect not just the global mark but also a regional one.

Separate Applications 
Many other countries also require that a separate application is made for each class of goods or services the trademark is to be registered with regards to. This requirement increases both the time (see above) and expenditure for registration of a mark.

Term Limitations 
The Madrid Protocol specifies that marks expire if not used after ten years, in other systems it can be far less. It makes sense to work out how to maintain your brand ownership in other non-Madrid Agreement markets.

Obligations Of Use 
Some countries (including the United States) require obligations to be fulfilled after the registration application is filed, with regards to the actual use of the trademark. Companies are under an obligation to maintain use of their mark if they intend to keep the brand active and avoid revocation. Ownership, therefore, does not rest merely upon registration, but hinges upon the actual use of the brand.

Unintentionally Offensive Or Deceptive Marks  
Due to the multitude of religions and beliefs present throughout certain areas (such as Asia), marks which are considered by the authorities to be contrary to public order or good morals, are deceptive or offensive are not capable of registration. This could be unintentional, however it is advisable that businesses wishing to register their brands in such territories carry out prior analysis in this vein. Use of the Buddha, Ganesh or certain symbols such as as a brand or mark in some countries for example could be problematic.

Handling International Trademark Registrations

Standard Filing Requirements
The following administration documents are typically required to file trademark applications:

  • Logo (.png or .jpg, minimum 250×250 pixels)
  • A specification of any Pantone colors
  • A full description of goods/services, usually but not always as per the Nice Classification 
  • The full name and address of the applicant
  • An International Power of Attorney legalized with Apostille
  • Companies must provide business registration certificates

Professional Trademark Filing Agents  
Dezan Shira & Associates are members of several international business advisory, legal and accounting networks, and although we as a practice do not have a global presence, have professional relationships with other firms in 136 countries and territories. For businesses requiring assistance with trademark or other IP issues across the Belt & Road Initiative, we will be happy to introduce our Partner firms for assistance. These include firms across the African continent, the Middle East, Central Asia, and Central and South America. Please contact us at silkroad@dezshira.com.

Dezan Shira & Associates does however provide services itself throughout Asia, including China, Hong Kong, Bangladesh, India, Russia, and the ASEAN region which includes Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam. We have IP professionals on hand in each who can assist with local filings.

The development of the Belt & Road Initiative as an international, interconnected series of trade corridors, and its subsequent maturing into a huge selection of countries now offers additional investment opportunities as a result of completed infrastructure builds. However, this presents a major business and administrative challenge in the 2020’s. Well organized and well known international business administration protocols do not cover the sheer scale of the BRI, meaning that business owners, lawyers and tax advisors need to spread their wings rather further than has until now been the norm in global engagement.

While national markets have tended to remain fairly static, stable and predictable the past twenty years, the impact of Covid-19, the advent of new IT solutions and the development of the Belt & Road infrastructure now offers potential in previously far off, neglected and undeveloped markets around the world. Many of these will be unfamiliar. Yet future growth projections are in exactly these areas. According to the EU Strategy & Policy Analysis System by 2030, by on a global scale, the global middle class will reach 4.9 billion people, literacy rates will be above 90 percent, and more than half of the world will have access to the internet. This will lead to an explosion of trade opportunities – and is already doing so. This will become more apparent post-Covid.

We can expect new strategic alliances to form, and for existing ones such as South America’s Mercosur, Central Asia’s Eurasian Economic Union and the Pan-African Free Trade Agreement to all develop or support administrative systems to better service and satisfy business protection needs. I would expect then further developments through these and similar trading blocs to tidy up the current large amounts of blank areas in global trademark registrations that the new emerging market opportunities are throwing up. Until now however, much remains to be done. Global businesses looking at the newly accessible regional markets the Belt & Road Initiative is ushering in will need to apply the first rule of business in novel markets – brand – meaning trademark – protection.

Other Useful Trademark Application Articles  
ASEANChinaIndiaRussiaSingapore, Thailand, Vietnam

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About Us

Silk Road Briefing is written by Dezan Shira & Associates. The firm has 28 offices throughout Asia, and assists foreign investors into the region. For strategic advisory and business intelligence issues please contact the firm at silkroad@dezshira.com or visit www.dezshira.com

 

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