As the ASEAN region prepares to shift from a low-value export economy to a global manufacturing hub with a focus on research and development, applications for trade marks have seen a significant rise. This means the potential for waiting times between trade mark application stages, also known as pendency rates, to increase with the increasing volume. Following our earlier discussion on the increasing digitisation of Trade Mark Office procedures across the region, this time we outline and examine pendency rates in several ASEAN trade mark offices.
The Cambodia trade mark office has recently undergone administrative reform to clear backlogs and improve the timeframe for trade mark examination. So far, in the first quarter of 2021, the pending time for examination of new trade mark applications is two to three months less than that of previous years. In previous years, it took around nine to 12 months for a mark to reach registration. This improvement also applies to the issuance of office actions in straightforward applications. Despite this, complex applications still require longer timeframes.
Indonesia has historically suffered from significant delays in processing trade mark applications. The reason for the high pendency rates was due to the lack of a digitalised system. In 2019 alone, there were over 90,000 marks filed in Indonesia, with the number increasing year on year. Prior to the implementation of the trade mark e-filing system on 17 August 2019, most applications were submitted through physical copies and it took substantial time for the files to be distributed and processed by officials. There has also been a lack of examiners, who were allocated files based on the class included in the application leading to unequal distribution of work. There are currently 70 examiners, with around 20 of them being relatively new, so they tend to take more time to review applications. Most examiners are currently examining applications filed on August-September 2020, which is within the standard time-frame. However, there is still a backlog for several examiners that may be examining applications before August 2020.
Based on current practice, the average trade mark takes around one to one and a half years to registration, assuming that the process goes smoothly. Upon completion of the examination, there is also a delay of four to six months after examination in issuing the electronic certificate of registration. It should be noted, however, that there is no time difference between different types of trade mark applications, including international applications designating Indonesia.
We can expect faster turn-around in the near future given the recent Omnibus Law that was passed in November 2020, where the period for substantive examination was shortened from 150 days to 90 days. The Trade Mark Office has also implemented various measures to reduce pendency rates for applications. This most notably includes the implementation of the e-filing system on 17 August 2019 and the adoption of a new method of examining applications. The e-filing system requires the applicant to select goods/services only available in the system and applicants are also required to submit supporting documents at the time of filing, therefore reducing objections due to incorrect formalities. Certificates of registration and recordal notifications are also now only issued in electronic form, reducing the previous backlog in issuing hardcopy certificates.
The Philippines previously had a high pendency rate due to backlogs and the lack of a digitised system. However, pendency times have been successfully reduced in the last two years with the period for the registration process reducing from 12-18 months to four to six months for trade mark applications without issue and six to eight months for trade mark applications with office actions. Examination now takes two to four months.
The swifter handling of applications is due to automation services now offered by the Intellectual Property Office, which include online filings, and electronic payment system and electronic gazette publication replacing hard copy publications. The measures are also in compliance with the Ease of Doing Business and Efficient Government Service Delivery Act of 2018 that seeks to increase efficiency by reducing processing time, eliminating red tape, and curbing corrupt practices across government agencies. Specific measures include additional manpower and implementation of the Joint Examination Track Procedure. This is not yet fully implemented but examination now involves several examiners handling one application. The first examination is conducted by one examiner and any further examination will be conducted by a different examiner.
In 2015, the Thai Trade Mark Office issued a guideline aiming to streamline its examination process and set a timeframe for each step. This guideline effectively reduced the pendency rate to about 12-15 months. This was before Thailand joined Madrid system at the end of 2017. Thailand received roughly 9,000 international registration (“IR”) applications per year and the total number of new filings increased from 42,000 in 2017 (before entrance to the Madrid system) to 50,000 in 2019. Due to the increase in new filings, pendency rates have increased. For IR applications, the examiner usually takes almost 18 months to examine each mark. Thai examiners are notoriously strict when examining the specification of goods/services and most IR applications will receive an objection to the specification of goods/services. Due to the huge backlog, responses to specification objections are usually kept pending for another 6-12 months before anything further is heard from the examiner. Overall, most IR applications will take about 24-36 months to register.
The increase in applications filed via IRs as seen the national applications delayed as well, with examiners needing to divert their focus to IR applications. The current pendency rate for national applications is about 18-24 months.
In Vietnam, pendency rates vary depending on the type of trade mark matter because different procedures are handled by different departments, which have their own way of working. In general, there is still a notable gap between the regulatory time limit and the actual time for each procedure to be processed and completed.
Dispute cases, including cancellation, invalidation and appeal, that take place before the Board of Appeal (BOA) are still one of the slowest proceedings without significant change, as the timeframe could be four to five years or even longer. However, for straightforward cases such as non-use cancellation without a response from the owner of the cancelled mark, the timeframe could be shorter, such as from one and a half to two years.
The situation in the IR Examination Centre is comparatively better as they must strictly follow examination deadlines governed by the Madrid Agreement and Protocol. However, the increasing workload and lack of human resources remain as the two main factors that lengthen the pendency time in these two departments.
On the bright side, some positive changes have been seen in filing and post-registration procedures. The de facto time for formality examinations in the Trade Mark Department has recently been consistent with statutory deadlines, within one month from the date of receipt of all required documents. The pendency rates for the substantive examination of a straightforward case have decreased from more than 24 months to 20 – 22 months. In addition, the efficiency of the Post-Registration Department, where the renewal or assignment of registrations are recorded, has also enhanced. The pendency for the straightforward post-registration cases has been shortened by one to two months. Even though these are not significant improvements in comparison with the regulatory timeline, the recent trend shows IP Vietnam’s effort to reduce serious delays. In fact, IP Vietnam has adopted some solutions to try to curb the issue such as recruiting new examiners and setting a KPI per month for each examiner to boost their efficiency. However, in the long term, there should be more creative and feasible solutions to cope with long pendency rates to catch up with international standards.