INTA Daily News

Asian countries are more willing than ever to protect well-known marks, but IP owners still have a lot to do if they want to guarantee protection, according to speakers at a session on "Protecting Your Well-Known Marks in Asia" on May 3, 2004.

“Well-known trademarks – that magic phrase – can become a really powerful weapon in certain jurisdictions,” said Annie Tsoi of Deacons in Hong Kong. 

Ai Ming Lee of Rodyk & Davidson said that proposed changes to Singapore’s trademark laws, expected to come into force by the end of the year, mean that well-known marks in Singapore will be protected in much the same way as they are in the United States. The new law will introduce the concept of dilution as well as clarify what qualifies as a well-known mark. 

But she advised IP owners to keep good records of advertising campaigns and promotions that could help prove that a mark is well-known in Singapore, and to consider taking out defensive registrations to strengthen brand name protection. In Singapore, owners of well-known marks will lose their rights if they fail to tackle infringement problems within five years of being made aware of them. 

John Tessensohn of Shusaku Yamamoto urged IP owners to follow the rules when presenting evidence that their mark is well-known in Japan: “Trademark officials all over the world are essentially still bureaucrats, and bureaucrats like to follow guidelines. IP owners should make sure they can give them what they want.” 

Finally, the panelists stressed the importance of registering in local scripts. “Always give your mark a Chinese language version. Otherwise Chinese consumers will give your product a nickname in Chinese and if someone else registers that, it can be very hard to stop them,” said Tsoi.


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